DECISION

Marriott International, Inc. v. Hotel Partners

Claim Number:  FA0312000220006

PARTIES

Complainant is Marriott International, Inc. (“Complainant”), represented by Jason J. Mazur of Arent Fox Kintner Plotkin & Kahn, PLLC, 1050 Connecticut Ave. NW, Washington, DC 20036.  Respondent is Hotel Partners (“Respondent”), 2509 E. Broad St., Richmond, VA 23223.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <marriotthotelreservations.com>, registered with Bulkregister, LLC.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 12, 2003; the Forum received a hard copy of the Complaint on December 15, 2003.

On December 12, 2003, Bulkregister, LLC confirmed by e-mail to the Forum that the domain name <marriotthotelreservations.com> is registered with Bulkregister, LLC and that Respondent is the current registrant of the name. Bulkregister, LLC. has verified that Respondent is bound by the Bulkregister, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 16, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 5, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@marriotthotelreservations.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On January 13, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <marriotthotelreservations.com> domain name is confusingly similar to Complainant’s MARRIOTT marks.

2. Respondent does not have any rights or legitimate interests in the <marriotthotelreservations.com> domain name.

3. Respondent registered and used the <marriotthotelreservations.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Marriott International, Inc., operates one of the world’s most well-known and extensive hotel, restaurant and hospitality companies.  Each year millions of Complainant’s customers worldwide obtain products and services offered under the MARRIOTT marks.  In fact, sales of services under the MARRIOTT marks have amounted to billions of dollars.

Complainant holds numerous trademark registrations worldwide for the MARRIOTT marks.  Specifically, Complainant holds United States Patent and Trademark Office (“USPTO”) Reg. No. 899,900 (registered on September 29, 1970) for the MARRIOTT mark, Reg. No. 1,277,443 (registered on May 8, 1984) for the MARRIOTT HOTEL mark and Reg. No. 1,277,442 (registered on May 8, 1984) for the MARRIOTT HOTELS mark. 

Complainant uses its marks in its domain names, <marriott.com> and <marriotthotels.com>.  The domain names are used in connection with a website that promotes Complainant’s hotel services, including its own hotel reservation services.

Respondent registered the <marriotthotelreservations.com> domain name on March 5, 2003.  The website associated with Respondent’s domain name displays Complainant’s marks and purports to offer reservation services for Complainant’s hotels. 

In a telephone conversation with Complainant’s counsel, Respondent conceded that it was not licensed or authorized to use Complainant’s marks.  However, Respondent stated that it would not cease its use of the <marriotthotelreservations.com> domain name or Complainant’s marks, despite being advised of Complainant’s rights in its marks. 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The Panel finds that Complainant has established rights in the MARRIOTT marks through registration of the marks with the USPTO.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent’s addition of the generic words “hotel” and “reservations” as a suffix to the MARRIOTT marks is insufficient to protect against consumer confusion.  In fact, by using the words “hotel” and “reservations,” which are clearly connected with Complainant’s business, Respondent is creating an image of offering Complainant’s core services and is only furthering consumer confusion.  Consequently, the Panel finds that the <marriotthotelreservations.com> domain name is confusingly similar to Complainant’s MARRIOTT marks.  See Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent failed to provide the Panel with circumstances demonstrating that it has any rights or legitimate interests in the domain name.  Rather, the only evidence before the Panel indicates that Respondent lacks rights and legitimate interests in the domain name.  Thus, the Panel finds that Respondent lacks rights and legitimate interests in the domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a Response or provided the Panel with evidence to suggest otherwise).

There is no evidence before the Panel demonstrating that Complainant is commonly known by the <marriotthotelreservations.com> domain name.  Furthermore, Respondent admitted that it is not licensed or authorized to use Complainant’s marks.  Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

Respondent is using the <marriotthotelreservations.com> domain name to promote its hotel reservation services.  At its website, Respondent is purporting to offer hotel reservations for Complainant’s hotels despite the fact that it is not authorized or licensed to offer such services using Complainant’s marks.  Accordingly, the Panel finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or making a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding Respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)); see also Nike, Inc. v. Ben Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide” offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website, which offered both Complainant’s products and those of Complainant’s competitors).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is using the <marriotthotelreservations.com> domain name to attract Internet users, who are looking for Complainant’s hotel reservations services, to its own hotel reservation services website.  Since Respondent’s domain name has an obvious connection with Complainant’s marks and Respondent displays Complainant’s marks on its website and appears to offer hotel reservation services for Complainant’s hotels similar to services offered by Complainant, consumers are likely to believe that Respondent’s website is endorsed by, or affiliated with, Complainant.  Accordingly, the Panel finds that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

Furthermore, the Panel infers that Respondent registered the <marriotthotelreservations.com> domain name with actual knowledge of Complainant’s rights in the MARRIOTT marks due to the worldwide prominence of Complainant’s marks, Complainant’s registration of its marks with the USPTO and Respondent’s use of Complainant’s marks at its website to offer hotel reservation services for Complainant’s hotels.  Respondent’s bad faith use is compounded by the fact that it admitted in a conversation with Complainant’s counsel that it would not cease its use of the domain name or the MARRIOTT marks even though it was aware of Complainant’s rights in its marks.  As Respondent clearly has knowledge of Complainant’s rights in the MARRIOTT marks, the Panel finds that Respondent registered and used the domain name in bad faith.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith).  

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <marriotthotelreservations.com> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  January 26, 2004

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