The Complainant is Marriott International, Inc. of Bethesda, Maryland, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondents are Lamar Sapp of New York, New York, United States of America, and Edition Suites of New York, New York, United States of America. 2. The Domain Names and Registrars
The disputed domain name is registered with GoD, LLC.
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2014. On June 24, 2014, the Center transmitted by email to GoD, LLC and eNom requests for registrar verification in connection with the disputed domain names. On June 24, 2014, eNom transmitted by email to the Center its verification response, confirming that the Respondent Lamar Sapp is listed as the registrant of and providing the contact details. On June 25, 2014, GoD, LLC transmitted by email to the Center its verification response, identifying the registrant of and providing the contact information, which differed from the second respondent’s name and contact information contained in the Complaint. On July 4, 2014, the Center sent an email communication to the Complainant with the name of the registrant of and contact information as provided by GoD, LLC, and invited the Complainant to amend the Complaint. The Complainant filed an amended Complaint on July 9, 2014.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on July 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for the Response was July 31, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 1, 2014.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on August 7, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is in the hotel business worldwide. It registered the EDITION service mark with the United States Patent and Trademark Office, on February 22, 2011 (for “hotel services…”), and on March 15, 2011 (for “business management services in the field of hotels…”), among others. These registrations indicate “first use” of the mark on September 28, 2010.
According to the respective registrars: the Respondent Lamar Sapp registered on June 1, 2012; the Respondent Edition Suites registered on November 21, 2012. 5. Parties’ Contentions A. Complainant
The Complainant contends principally that: (i) the disputed domain names are identical or confusingly similar to a mark in which the Complainant has rights; (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domains name have been registered and are being used in bad faith.
In addition, the Complaint states, inter alia:
- “[T]he purported registrants are the same person or entity and/or are otherwise related to each other, and jointly control the Domain Names which resolve to the same website”;
- “Founded in 1927, Complainant …is one of the world’s largest and most well-known providers of commercial hotel, restaurant and hospitality services in the U.S. and internationally”;
- “In mid-2007, Complainant announced that it had entered into a partnership with Ian Schrager, a world-famous hotelier…to develop a new global line of boutique hotels that would target guests looking for a sophisticated and inspired experience in their hotel stay…. In January 2008, Complainant widely announced that this new line of hotels would be called EDITION”;
- “In 2010, Complainant opened its first EDITION hotel in Waikiki, Hawaii” and “the Istanbul EDITION hotel in mid-2011”; in between, “it was…announced that other EDITION hotels were in development in Mexico City, Barcelona, Bangkok and Miami Beach”;
- “Since acquiring the Domain Names in June and November 2012, Respondent has used the Domain Names to promote its own extended-stay residences and suites in New York, first under the trade name ‘EDITION’ and presently under the trade name ‘CRITERIA’”;
- “Presently, Respondent retains control of the Domain Names and is using them to redirect web traffic to its website at "", which promotes Respondent’s extended stay residences”; and
- When the Complainant “reiterat[ed] its request that Respondent cease all use of the EDITION Mark…and transfer the Domain Names to Complainant…, Respondent wrote to Complainant stating that ‘[i]f you would like for us to transfer our property to Marriott hotels then we would suggest that Marriott makes us an offer for our property. We will not be transferring our property to Marriott without due compensation.’” B. Respondent
The Respondents did not reply to the Complainant’s contentions.
Paragraphs 5(e) and 14(a) of the Rules permit the Panel to decide the dispute based on the Complaint. Under paragraph 14(b), the Panel may also draw appropriate inferences from the Respondents’ default. 6. Preliminary Procedural Issue: Consolidation of Multiple Respondents
While neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single proceeding, WIPO UDRP panels have articulated principles governing when such a consolidation is permissible under the UDRP. These principles are distilled in paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and include (i) whether the disputed domain names or the websites to which they resolve are subject to common control, and (ii) whether consolidation would be fair and equitable to all parties.
There are several indications that the disputed domain names and are under common control. First, according to the current WhoIs information, Respondent Edition Suites, the registrant of , has the following email address: […]@. The fact that the registrant of one of the disputed domain names has an email address at the other disputed domain name strongly suggests that both disputed domain names are under common control. Second, the Complainant has provided evidence that until relatively recently, both disputed domain names resolved to virtually identical websites.
Additionally, there is no evidence that consolidation would be inequitable to any party to this proceeding.
For the foregoing reasons, the Panel finds the consolidation of multiple respondents permissible in this proceeding. 7. Discussion and Findings
In order to prevail, the Complainant must prove that the three elements of paragraph 4(a) of the Policy are present. A. Identical or Confusingly Similar
The Panel concludes that the disputed domain names are identical or confusingly similar to a mark in which the Complainant has rights.
The Complainant has rights in the mark, EDITION. It has used the mark, and received formal registration. The disputed domain names and both incorporate the Complainant’s mark in full, followed by a generic term relating to lodging (“residential” or “suites”) and the generic Top-Level Domain (gTLD) “.com”.
The presence of the generic terms “residential” and “suites” in the disputed domain names does not succeed in distinguishing them from the Complainant’s EDITION mark. Rather, those terms enhance the connection between the disputed domain names and the Complainant.
The Complainant has satisfied the first element. B. Rights or Legitimate Interests
The Complainant contends that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The Complainant has met its initial burden of making a prima facie showing. The burden shifts to the Respondents to demonstrate any such rights or legitimate interests. The Respondents have defaulted. Given the case record in full, the Panel is unable to ascertain any evidence that would demonstrate the Respondents’ rights or legitimate interests in the disputed domain names, as described in paragraph 4(c) of the Policy, or otherwise.
The Complainant has satisfied the second element. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant must show that each disputed domain name “has been registered and is being used in bad faith.” Paragraph 4(b) provides a non-exhaustive list of circumstances that are evidence of bad faith in the registration and use of a domain name. The Panel concludes that bad faith is present under paragraph 4(b)(iv), in that the Respondents have “intentionally attempted to attract, for commercial gain, Internet users to [the Respondents’] website…, by creating a likelihood of confusion with the [C]omplainant’s mark as to the source, sponsorship, affiliation, or endorsement” of the Respondents’ website. Here, Internet users who resort to the disputed domain names are directed to a website whose content includes a reference to “corporate residences to the sophisticated traveler” and links to “SUITES” and “CHECK-IN”, which relate to the Complainant’s business operations.
The Complainant has satisfied the third element. 8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to the Complainant.
Ilhyung Lee
Sole Panelist
Date: August 21, 2014
Full & Egal Universal Law Academy