The Complainant is Marriott International, Inc. and Marriott Worldwide Corporation, United States of America (“U.S” or “United States”), represented by FairWinds Partners, LLC, United States.
The Respondent is Dmitriy Mess, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2020. On April 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the Respondent and contact information provided for in the Complaint. The Center sent an email communication to the Complainants on April 27, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 23, 2020, by Center. The Registrar confirmed that the language of the registration agreement is Russian, whereas the Complaint was submitted in English. On April 27, 2020, the Center sent the Parties a language of proceedings email in which they were invited to substantiate their arguments on the language of proceedings. The Complainant replied to this request on April 27, 2019, arguing in favor of English being the language of proceedings. No response was received from the Respondent. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2020. The Center appointed Piotr Nowaczyk as the sole panelist in this matter on June 2, 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 Complainants are Marriott International, Inc. (“Marriott”) and its wholly owned subsidiaries, Marriott Worldwide Corporation. 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 7,300 properties. Marriott owns inter alia the following trademark registrations: - the US registration for the MARRIOTT mark, No. 899900, registered on September 29, 1970, for products and services in class 42; - the US registration for the MARRIOTT mark, No. 3628880, registered on May 26, 2009, for products and services in classes 9 and 38; - the EU registration for the MARRIOTT mark, No. 000144360, registered on October 15, 1998, for products and services in classes 36, 41 and 42; - the EU registration for the MARRIOTT mark, No. 000148338, registered on November 30, 1998, for products and services in classes 3, 9, 14, 16, 18, 20, 21, 24, 25, 28, 29, 30, 32, 33, 35, 36, 37, 39, 41, and 42. The Respondent registered the disputed domain name on March 24, 2020. The disputed domain name resolves to a website which shows Marriott’s logo and mirror a website under a domain name “marriotthotels.marriott.com”. 5. Parties’ Contentions A. Complainant Firstly, the Complainants assert that the disputed domain name is identical to the MARRIOTT mark. Secondly, the Complainants content that the Respondent’s actions are not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, as the website that the disputed domain name resolves to attempts to impersonate the Complainants’ own website at ”/marriotthotels.marriott.com” and pass off the Respondent as the Complainants. They also claim that when a user clicks on any of the links at the Respondent’s site it is redirected to the Complainants’ own site presumably in an attempt to earn affiliate revenue for the Respondent. Moreover, the Complainants assert that they have not authorized the Respondent to use the MARRIOTT mark in any way and he is not commonly known under the disputed domain name. In the Complainants’ opinion, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, and so its actions do not fall within paragraph4(c)(iii) of the Policy Thirdly, the Complainants claim that that the disputed domain name was registered and is being used in bad faith. According to the Complainants, the Respondent should have had knowledge about their globally famous mark which is a rare family name with no generic nor descriptive meaning. Further, the Complainants assert that the Respondent’s creation of a website that seeks to impersonate the Complainants’ website alone constitutes bad faith under the Policy, as it disrupts their business and seeks to capitalize on confusion with the MARRIOTT mark. Finally, the Complainants contend that the Respondent has engaged in the pattern of bad faith registration of other obviously infringing domain names that target various well-known and hided his identity under the privacy shield which is further evidence of bad faith registration and use. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Preliminary Issues A. Language of the Proceedings The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Complaint was filed in English. The Complainants requested English to be the language of the administrative proceeding. The Complainants asserted that the disputed domain name uses the Latin alphabet and incorporates terms that are not native to the Russian language but which are native to the English language. Moreover, according to the Complainants, the Respondent’s website that resolves from the disputed domain name appears almost entirely in the English language. The Respondent was properly notified about the language of the proceeding in English and Russian, and the Respondent has not objected to the Complainants’ language request. Notification of the Compliant was also sent to the Respondent in English and in Russian, however, the Respondent has not participated in these proceedings in any way. In these circumstances, it appears to the Panel that using the English language in this proceeding will be fair and efficient and will not put either of the Parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. As the disputed domain name resolves to the website featuring content in English, it is probable that the Respondent can speak and understand English. Moreover, the Panel believes that it would be unduly burdensome to require the Complainants to invest money and time in translating the Complaint along with the annexes. In this light, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English per paragraph 11(a) of the Rules. At the same time, the Panel will take into account all evidence in the case file available in English or Russian languages. B. Consolidation of Multiple Complainants Neither the Policy nor the Rules expressly provide for the consolidation of multiple complainants, and generally read in singular terms of a “complainant” when referring to proceedings under the Policy. See MLB ADVANCED MEDIA, Padres L, The Phillies 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. As the Complainants in this case are affiliated companies, the Panel finds it would be both equitable and procedurally efficient to allow the Complainants to proceed with a single consolidated complaint. 7. Discussion and Findings Paragraph 4(a) of the Policy places a burden on the Complainants to prove the presence of three separate elements. The three elements can be summarized as follows: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants has rights; and (ii) the Respondent has no rights or legitimate interests in the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The requested remedy may only be granted if the above criteria are met. A. Identical or Confusingly Similar The disputed domain name fully incorporates the MARRIOTT mark and is identical with it. For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the generic Top-Level Domain (“gTLD”) suffix “.host” may be disregarded. Therefore, the Panel finds that the disputed domain name is identical the MARRIOTT mark and as a consequence, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The overall burden of proof on this element rests with the Complainants. However, it is well established by previous UDRP panels that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; see also WIPO Overview 3.0, section 2.1 and cases cited therein). The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) there is no evidence that the Respondent has been commonly known by the disputed domain name; (b) the Complainants have not authorized the Respondent to register the disputed domain name; (c) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. In particular, use of a domain name that includes a registered mark, for the purpose of creating a website mirroring the Complainants’ website cannot qualify as bona fide offering of goods and services. This conclusion is not altered by the fact that the links at the Respondent’s website resolve to pages at the Complainants’ legitimate site. See Docler IP S.à r.l., DuoDecad IT Services Luxembourg S.à r.l., WebMindLicenses Korlátolt Felelösségü Társaság v. Peter Williams,WIPO Case No. D2017-0953. Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainants’ unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires the Complainants to prove the registration as well as use in bad faith of the disputed domain name. Firstly, not only does the MARRIOTT mark predate the registration of the disputed domain name, but also the Complainants enjoy considerable renown in the hotels industry. In the light of these circumstances, the Panel concludes that the Respondent knew or should have known about the Complainants’ rights when registering the disputed domain name. Secondly, by using the MARRIOTT mark at the website under the disputed domain name creates the impression that it belongs to the Complainants. Creating such a website by the Respondent involves registration and use in bad faith (see The Swatch Group AG and Swatch AG v. Christopher Biedermann / Marcin Rulnicki,WIPO Case No. D2017-0388). Moreover, the Complainants evidenced that the Respondent has engaged in the bad faith registration pattern. In addition, the Respondent used a privacy shield for the registration of the disputed domain name. While the use of a privacy shield cannot be considered in itself as use of bad faith, once connected with additional elements, it may suggest a registration and use in bad faith (Jay Leno v. Moniker Online Services LLC / St. Kitts Registry, Domain Names Administration,WIPO Case No. D2009-0571). In the light of above, the Panel decides that paragraph 4(a)(iii) of the Policy is satisfied. 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 name Piotr Nowaczyk
Sole Panelist
Date: June 22, 2020
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