The Complainant is Montage Hotels & Resorts, LLC, United States of America (“United States”), represented by Neal, Gerber & Eisenberg, LLP, United States.
The Respondent is Winston West, 21 West Inc., United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2020. On March 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 23, 2020, 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 April 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2020. The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 5, 2020. 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 a luxury hotel and resort company, established in 2002, that operates properties in the United States and Mexico with suites and rooms, spas, restaurants, and other facilities. The Complainant is organized as a Nevada limited liability company with its principal offices in Irvine, California, United States. Its flagship property is Montage Laguna Beach in Southern California, opened in 2003. The Complainant operates websites at “www.montage.com” and “www.montagehotels.com”, which advertise other “Montage” properties managed by the Complainant at resort destinations: Montage Residences Big Sky (Montana), Montage Beverly Hills (California), Montage Residences Deer Valley (Utah), Montage Residences Kapalua Bay (Hawaii), Montage Residences Palmetto Bluff (South Carolina), Montage Residences Healdsburg (California), and Montages Residences Los Cabos (Mexico). The Complainant has corresponding domain names for some of these: The Complainant holds numerous trademark registrations for MONTAGE in the United States and other countries, including United States Trademark Registration Number 2801152 (registered December 30, 2003) for MONTAGE as a standard character mark. According to the Registrar, the Domain Name In July 2018, more than a year before the Respondent registered the Domain Names, the Respondent created an Instagram social media account at “www.instagram.com/MontageResidences”. The Respondent used that site to advertise his real estate listings in the Laguna Beach area and displayed copyrighted images of the Complainant’s Laguna Beach Montage Residences property. Counsel for the Complainant sent cease-and-desist letters to the Respondent but received no response. The Complainant contacted Instagram to have the account removed. Nevertheless, in September and October 2019 the Respondent registered the Domain Names and parked them, as shown in screen shots attached to the Complaint. At the time of this Decision, the Domain Name The Complainant attempted to contact the Respondent about the Domain Names, by email, post, and telephone, with no response. This proceeding followed. 5. Parties’ Contentions A. Complainant The Complainant asserts that the Domain Names are all “virtually identical and confusingly similar” to its registered MONTAGE marks, which the Respondent is using without permission or other evident rights or legitimate interests. The Respondent is not known by a corresponding name and has not made commercial or noncommercial fair use of the Domain Names. The Complainant points out the Respondent’s actual knowledge of the MONTAGE marks from the earlier history with the Respondent’s Instagram account. The Complainant notes the Respondent’s failure to reply to correspondence in that case and in the present one. Finally, observing the Respondent’s failure to host a website or otherwise employ the Domain Names, the Complainant cites the long-standing “passive holding” doctrine articulated in Telstra Corp, Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003, concluding that maintaining a domain name based on a well-known mark, combined with other indicia of bad faith, may satisfy the third element of the Policy even when an active website has not been created). B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (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 in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. A. Identical or Confusingly Similar The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Domain Names all incorporate the Complainant’s registered MONTAGE mark in its entirety and add dictionary words (e.g. “residences” or “Laguna beach”) that do not avoid confusion. In fact, the word “residences” is used by the Complainant as well in labelling and advertising its properties and services. The generic Top-Level Domain (“gTLD”) “.com” “is viewed as a standard registration requirement” and as such is regularly disregarded under the first element of the Policy. Id., section 19.11.2. The Panel concludes, therefore, that the first element of the Complaint has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Names, 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 Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or (ii) that the Respondent has been commonly known by the Domain Names, 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 Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights and a lack of permission to use the Complainant’s mark in the Domain Names. The Respondent has not advanced rights or legitimate interests. Conceivably, a real estate agent could make nominative fair use of a mark associated with a property development to advertise the agent’s services in connection with listings in that development -- and only that development (see WIPO Overview 3.0, section 2.8). However, the record does not reflect such limited fair use by the Respondent in the past, with the Respondent’s Instagram account, or any demonstrable plans to make such fair use of the Domain Names in the future. Accordingly, the Panel concludes that the Complainant prevails on the second element of the Complaint. C. Registered and Used in Bad Faith The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name): “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” The Respondent was indisputably aware of the Complainant and its MONTAGE trademark when it registered the Domain Names. The Respondent is a real estate agent in Laguna Beach, California, where the Complainant’s flagship resort property is located. A little over a year before registering the Domain Names, the Respondent established an Instagram account with the name “MontageResidences”, displaying copyrighted photos of the Complainant’s Laguna Beach property on a site used for advertising the Respondent’s real estate services in the Laguna Beach area. The Complainant sent the Respondent cease-and-desist letters asserting trademark and copyright infringement and had the account removed. The Respondent seems not to have learned from that experience, subsequently registering the four Domain Names. They have not been used so far for websites developed by the Respondent. Instead, they have been used for PPC advertising, which entails misdirection of Internet users for commercial gain (even if the gain is not the Respondent’s), while soliciting offers to purchase the Domain Name. At some point, for the Domain Name The Panel concludes that the Complainant prevails on the third element of the Complaint, bad faith. 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 Names, W. Scott Blackmer
Sole Panelist
Date: May 15, 2020
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