The Complainants are Marriott International, Inc., Marriott Worldwide Corporation, and The Ritz-Carlton Hotel Company, LLC of Bethesda, Maryland, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondents are Van C Bethancourt Jr. of Mesa, Arizona, United States, and Andre Williams of West Kingston, Rhode Island, United States. 2. The Domain Names and Registrar
The disputed domain names and are registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2018. On October 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 26, 2018, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2018.
The Center appointed William R. Towns as the sole panelist in this matter on November 26, 2018. 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 Complainants are Marriott International, Inc. (“Marriott”) and its wholly owned subsidiaries, Marriott Worldwide Corporation and The Ritz-Carlton Hotel Company, LLC. Marriott, founded in Washington D.C. in 1927, is a well-known provider of hotel, restaurant and hospitality services in the United States and many other countries, including more than 6,700 lodging, timeshare, and residential properties.
The Complainants have obtained trademark registrations for their MARRIOTT, RITZ-CARLTON, and RITZ marks (collectively the “Complainants’ marks”) in the United States and numerous countries worldwide, including Switzerland. The earliest United States trademark registration for the MARRIOTT mark, registration No. 899,900, was obtained in 1970. The Complainants registered the domain names and on January 4, 1993 and July 15, 1997, respectively, and have used these domain name with websites promoting MARRIOTT and RITZ-CARLTON hotels and hospitality services for more than two decades. Consumers can book online hotel reservations on each of the respective websites.
The Complainants’ MARRIOTT and RITZ-CARLTON marks have been recognized as famous marks by UDRP panelists. See, e.g., Marriott International, Inc. v. Robert Waschenfelder,WIPO Case No. D2012-1588. The United States Patent and Trademark Office’s Trademark Trial and Appeal Board (T.T.A.B.) noted the fame of the Complainant’s RITZ-CARLTON mark in The Ritz-Carlton Hotel Company, L.L.C. v. Robert B. Wilcox, Opposition No. 91161969 (T.T.A.B. Jan. 15, 2008).
The disputed domain name was registered on November 18, 2017 in the name of the Respondent Bethancourt. The disputed domain name was registered on March 10, 2018 in the name of the Respondent Williams. The disputed domain name resolves to a website that appears to be a clone of the Complainants’ “www.M” website. The disputed domain name has been used as an email address to impersonate the director of operations of the Ritz-Carlton Hong Kong. These emails offered free access to the hotel’s spa services and discounted dining featuring “Special Chef” Aiya Osasu, purportedly a chef who transferred from “Marriott Hotel Swiss” to the “Ritz-Carlton Hotel Hong Kong.” The record suggests, however, that “Aiya Osasu” is a fictitious name used by the Respondents in attempts to defraud unsuspecting third parties of money or property. 5. Parties’ Contentions A. Complainant
The Complainants submits that the disputed domain name is identical or confusingly similar to the Complainants’ MARRIOTT mark, and that the disputed domain name is identical or confusingly similar to the Complainants’ RITZ-CARLTON and RITZ marks. The Complainants maintain that their marks are famous and well-known. The Complainants request that Marriott International, Inc. and its wholly owned subsidiaries be allowed to proceed with a single consolidated complaint, based on their shared common legal interests in the trademarks and a common grievance against the Respondents. The Complainants further contend that the disputed domain names are subject to common control and also should be consolidated into a single proceeding.
The Complainants assert that the Respondents have no legitimate rights or interests in the disputed domain names. The Complainants explain that the Respondents have not been authorized, licensed or otherwise permitted to register or use domain names incorporating the Complainants’ marks. According to the Complainants, the Respondents have used the disputed domain names to perpetrate a scam on unsuspecting third parties for commercial gain, trading on the goodwill and reputation of the Complainants’ marks, and misleading third parties in a methodical effort to steal money from them. The Complainants submit that the Respondents have neither used the disputed domain names in connection with a bona fide offering of goods or services nor made a legitimate noncommercial or fair use of the disputed domain names, contending that the Respondents’ sole intent is to derive financial benefit from their illicit activity.
The Complainants maintain that the Respondents registered and are using the disputed domain names in bad faith. The Complainants assert that the Respondents were aware of the Complainants when registering the disputed domain names. The Complainants submit that the Respondents have used the disputed domain names to mislead and confuse consumers as to an affiliation with the Complainants, including cloning Marriott’s website and sending emails impersonating the manager of Ritz-Carlton’s Hong Kong hotel, in furtherance of a fraudulent scheme. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Preliminary Issues A. Consolidation of Multiple Complainants
Neither the Policy nor the Rules expressly provide for the consolidation of multiple complainants, and generally speak in singular terms of a “complainant” when referring to proceedings under the Policy. See MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc.,WIPO Case No. D2009-0985. A number of previous WIPO UDRP panels nonetheless have concluded that consolidation of multiple complainants in a single complaint is permissible if the complainants have a truly common grievance against one or more respondents, and it would be equitable and procedurally efficient to do so. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1, and cases cited therein. See also Starwood Hotels & Resorts Worldwide Inc., et. al. v. Media Insight a/k/a Media Insights,WIPO Case No. D2010-0211.
The Complainants in this case are affiliated companies, and the Complaint makes out a common grievance against the Respondents – namely, the Respondents attempt to perpetrate fraud on unsuspecting third parties by suggesting an affiliation or connection with the Complainants and their MARRIOTT, RITZ-CARLTON, and RITZ marks. In the attendant circumstances, the Panel finds it would be both equitable and procedurally efficient to allow the Complainants to proceed with a single consolidated complaint. B. Consolidation of Multiple Domain Names and Respondents
The Complainants have requested that the disputed domain names registered by the Respondents and identified in the Complaint be consolidated in a single administrative proceeding. Consolidation of multiple registrants as respondents in a single administrative proceeding is appropriate under the Policy and Rules where the domain names or the websites to which they resolve are subject to common control, and consolidation would be procedurally efficient and fair and equitable to all parties. Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281. See WIPO Overview 3.0, section 4.11.2, and cases cited therein.
The facts in the instant record strongly suggest that the disputed domain names are subject to common control. The Panel finds the Complainants have been the target of common conduct by the Respondents directly affecting the Complainants’ rights. Taking into account the Respondent’s use of the disputed domain names in a manner directly affecting the Complainants’ rights, and finding that common questions of law and fact are predominant, the Panel concludes that consolidation would be procedurally efficient, and fair and equitable to all parties. The Panel will proceed to a decision on the merits. 7. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainants’ MARRIOTT mark, and that the disputed domain name >is confusingly similar to the Complainants’ RITZ-CARLTON, and RITZ marks. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
The Complainants’ MARRIOTT mark is clearly recognizable in the disputed domain name .2 The inclusion of “hotel” and “swiss” in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark.
The Complainants’ RITZ and RITZ-CARLTON marks also are clearly recognizable in the disputed domain name . The inclusion of “hotel” in the disputed domain name does not dispel the confusing similarity of the disputed domain name to the Complainants’ marks. Further, the addition of letter “s” between “carlton” and “hotel” is evocative of typosquatting. Top-Level Domains (“TLDs”), in this case “.com”, generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy.3
Accordingly, the Panel finds the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondents have not been authorized to use the Complainants’ marks. The record reflects that the Respondents nonetheless have registered and used the disputed domain names, both of which are confusingly similar to one or more of the Complainants’ marks, for purposes of attempted fraud.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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 Respondents have not submitted any response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel further has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondents’ registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.
It is evident from the record that the Respondents were aware of the Complainants and the Complainants’ marks when registering the disputed domain names. In the absence of any explanation by the Respondents, the Panel considers in all likelihood that the Respondents registered the disputed domain names with the sole aim of exploiting and profiting from the Complainants’ marks through the perpetration of various fraudulent schemes.
Having regard to the relevant circumstances in this case, and in the absence of any explanation by the Respondents, the Panel concludes that the Respondents have not used or demonstrated preparations to use the disputed domain names in connection with a bona fide offering of goods or services, and that the Respondents are not making a legitimate noncommercial or fair use of the disputed domain names. Further, there is no indication that the Respondents have been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondents’ rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondents’ conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondents were aware of the Complainants and had the Complainants’ marks in mind when registering the disputed domain names. The record evinces that the Respondents’ motive in relation to the registration and use of the disputed domain names was to capitalize on the Complainants’ trademark rights by creating a likelihood of confusion with the Complainants’ marks, with the ultimate aim to profit illicitly therefrom. In light of the attendant circumstances, the Respondents’ registration and use of the disputed domain names (including typosquatting) smacks of opportunistic bad faith.
Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 Marriott International, Inc.4
William R. Towns
Sole Panelist
Date: December 6, 2018
1 See WIPO Overview 3.0, section 1.7.
2 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
3 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.
4 The Complaint did not designate which of the Complainants the disputed domain names should be transferred. Given that Marriott Worldwide Corporation and The Ritz-Carlton Hotel Company, L.L.C. are wholly-owned subsidiaries of Marriott International, Inc., the Panel has ordered that the disputed domain names be transferred to the parent company, Marriott International, Inc.
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