Complainant is Marriott International, Inc. of Bethesda, Maryland, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
Respondent is PJ Trujillo, Colorado Airport Transportation LLC of Denver, Colorado, United States, represented internally. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2015. On April 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 28, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on May 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2015. The Response was filed with the Center on May 25, 2015. Complainant filed an unsolicited Supplemental Filing on June 2, 2015. Respondent filed an unsolicited Supplemental Filing on June 2, 2015. In its discretion, the Panel has considered these supplemental filings.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 4, 2015. 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
Complainant, one of the world’s largest and most famous hotel chains, acquired in 2012 the hotel business of Gaylord Entertainment Company, which company had established five hotels under the GAYLORD family of trademarks including GAYLORD HOTELS. Other marks include GAYLORD NATIONAL (Washington, D.C. hotel), GAYLORD OPRYLAND (Nashville, Tennessee), GAYLORD PALMS (near Orlando, Florida), and GAYLORD TEXAN (near Dallas, Texas).
The GAYLORD HOTELS mark was registered with the United States Patent and Trademark Office (“USPTO”) in 1996.
In June 2011, Gaylord Entertainment announced that it would be building a hotel and entertainment complex in Aurora, Colorado, near Denver. The hotel complex was to be called “Gaylord Rockies.” This announcement received considerable media attention, including in the Denver Post. (Respondent resides in Denver.) Complainant has continued to use the GAYLORD marks in commerce since acquiring the business from Gaylord Entertainment. In July 2011, Complainant filed a trademark application with the USPTO for the GAYLORD ROCKIES mark.
Respondent Paul Trujillo registered the Domain Name on December 30, 2011. The Domain Name resolves to a parking page that states: “My Site. This is my site description.”
Respondent Paul Trujillo states that he “is the Co-founder of an established business named Colorado Airport Transportation LLC and Author Paul John located in Denver, Colorado.” Respondent states that Colorado Airport Transportation LLC was established in 2008 as a passenger transport business. Respondent also states that “Author Paul John has over 160 Thousand articles Published for the Travel and Tourism Industry reaching out to 11,806 viewers.” Respondent also asserts that the Trujillo family has a six-generation history in Colorado, and that his great grandfather had “helped to install the Cable Car tracks for the Denver City Tramway Company Project that ran through the Denver’s Gaylord Street Business District founded in 1924.”
Respondent also avers that author Paul John “has wrote [sic] articles using the Gaylord and Rockies term, word, and phrase to describe geographic locations in Colorado some articles dating back to 2009.”
Respondent claims that he registered the Domain Name in late 2011 “to launch a NEW Travel Blog and Fan Page under my Author name Paul John for the Colorado Travel and Tourism Industry.” He asserts that “Colorado Airport Transportation LLC is actively developing GAYLORDROCKIES.COM with a launch or going live date of January 1, 2017.” He states that this blog/fan page “has a monthly expense budget and start up cap,” and that the “Business Plan was constructed in the first quarter of business 2012.” The purported business plan was annexed as an exhibit to the Response.
On September 9, 2014, Lisa Fox (an employee of Complainant) sent Respondent Trujillo an email asking whether he was interested in selling the Domain Name. Ms. Fox did not disclose that she worked for Complainant. The next day, September 10, 2014, Respondent sent an email to Ms. Fox stating: “Yes I am interested in selling the domain G. At this time I am open to all reasonable offers and all offers will be considered.” Later that day, Ms. Fox offered USD 150.
Ms. Fox sent a chaser email on September 18, 2014, to which Respondent replied on September 22, 2014 as follows: “We are so vastly different in the estimated value of this domain that we have decided at this time we will maintain the G domain in our portfolio.” Later that day, Ms. Fox asked Respondent what dollar amount he had in mind for a price. Ms. Fox sent Respondent a chaser email on October 3, 2014, again asking for a price and saying “I’m sure I can meet it.”
On October 6, 2014, Respondent sent Ms. Fox an email stating that “we have an interest in selling G domain and are open to accepting offers at the present time.” Respondent added: “Please understand we will not give out any information until we find out more from the buyer and their true interest in purchasing the domain.”
On November 10, 2014, Ms. Fox offered USD 1,000 and asked Respondent to respond as soon as possible. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has satisfied the three elements required under the Policy for a transfer of the Domain Name.
Complainant contends that Respondent’s purported “business plan” is dubious for a variety of reasons. Among other things, Complainant notes that, even though Respondent states that it was created in the first quarter of 2012, there are various past-tense references to 2015 in the plan, and there is a reference to a company called Lyft which did not launch until May 30, 2012 – two months after the first quarter of 2012. There is nothing in the business plan that actually proves when it was first developed, even in draft form.
In any event, Complainant contends, Respondent’s registration of the Domain Name and the development of the purported business plan occurred after Gaylord Entertainment had announced the launch of the GAYLORD ROCKIES hotel complex. B. Respondent
Respondent argues, among other things, that the words “Gaylord” and “Rockies” are common terms in the Denver area. “Gaylord” refers to a business district in Denver, and “Rockies” refers to the mountain range just to the west of Denver. Respondent asserts that he registered the Domain Name in order to launch a blog/fan page for the Colorado transportation and tourism industry.
He also argues that Complainant is guilty of reverse domain name hijacking. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name at issue in this case:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
There is no question that Complainant holds rights in the registered trademark GAYLORD HOTELS. The dominant portion of the mark is “Gaylord.” The Domain Name lacks the descriptive word “hotels,” but adds to the dominant word “Gaylord” the geographically descriptive word “Rockies.” In the Panel’s view, the Domain Name is confusingly similar to the GAYLORD HOTELS mark, as it substitutes one descriptive term for another as a modifier of the dominant word “Gaylord.”
Given the foregoing finding, the Panel need not consider whether Complainant has acquired common law rights in the GAYLORD ROCKIES mark.
The Panel concludes that Policy paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel doubts Respondent’s account here. First, there is no evidence that the purported “business plan” was generated before or even around the time Respondent registered the Domain Name. Nor is there any contemporaneous evidence (affidavits, correspondence, receipts, etc.) tending to show that Respondent was actually paying vendors, lining up business partners, and the like in connection with his purported venture.
More importantly, during the 2014 email exchanges with Lisa Fox, Respondent never even hinted that he had actual plans to use the Domain Name in any manner, much less the manner he now claims. Rather, within one day of Ms. Fox’s initial solicitation, Respondent said in no uncertain terms that he was willing to sell the Domain Name and that “all offers will be considered.” Even when he rebuffed Ms. Fox’s initial USD 150 offer, Respondent stated that he would keep the Domain Name in his “portfolio” for the time being.
The Panel draws an adverse inference from Respondent’s failure to mention that he had actual plans to use the Domain Name in connection with some type of business or venture. On this record, the Panel does not find it plausible that Respondent would fail to mention his intentions, even in the broadest sense and without need to divulge details, if such intentions actually existed at the time.
In short, on this record, the Panel concludes that it is more likely than not that Respondent’s alleged plans were pretextual rather than genuine.
The Panel therefore concludes that Policy paragraph 4(a)(ii) has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent more likely than not was aware of the plans by Complainant’s predecessor to build a large hotel and entertainment complex in the Denver area, to be called “Gaylord Rockies,” at the time he registered the Domain Name. Respondent resides in Denver and is connected with the travel industry (including airport transportation). Moreover, the plan to develop the Gaylord Rockies resort was rather widely publicized in the Denver media, which reinforces the Panel’s conclusion that the registration of the Domain Name by Respondent within six months of the first announcement is not to be put down to coincidence.
The Panel also finds, on this record, it more likely than not that Respondent’s primary intent in registering the Domain Name was to sell it at a profit. First, as discussed in the previous section, the Panel does not believe Respondent’s explanation of his motives and finds his “business plan” pretextual.
Second, it is true (and it does not reflect well on Complainant) that the initial discussion of a sale occurred nearly three years after the registration of the Domain Name, but once Ms. Fox initiated the discussion in September 2014, Respondent was all ears. Without hesitation, Respondent expressed his willingness to part with the Domain Name and said that all offers would be considered. When he received a USD 150 offer, Respondent stated that the offer was “vastly different” from his own valuation of the Domain Name. This obviously suggests that Respondent sought considerably more than USD 150 for the Domain Name.
On the record presented, the Panel concludes it more likely than not that that Respondent registered the Domain Name with knowledge of the GAYLORD family of marks and of the plans to develop the Gaylord Rockies resort, and then waited for someone to come calling about the Domain Name, at which time a profit could be realized from its sale. Such conduct violates paragraph 4(b)(i) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: June 12, 2015
Full & Egal Universal Law Academy