v.
Thomas, Burstein and Miller
[Indexed as: Marriott International
v. Thomas et al.]
[Indexed as: MARRIOTTREWARD.COM]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. WIPO D2000-0610
Commenced: 26 June, 2000
Judgment: 14 September, 2000
Presiding Panelist: Marylee Jenkins
Domain name - Domain name dispute resolution policy - U.S. service marks - Confusingly similar - Misspelling - Legitimate Interest - Bad faith registration - Bad faith use - Diversion of Internet users - Well known marks - Famous marks - False information.
Complainant owned the service marks MARRIOTT and MARRIOTT REWARDS. Complainant was also the registrant of the domain names marriott.com and marriottrewards.com, under which it operated websites, the latter in connection with an incentive award program used to promote Complainants hotel, airline, car rental and time share services. Respondent registered the domain name marriottreward.com, and upon notice of a dispute began operating a commercial Website that promoted other companies and requested visitors to join a mailing list.
Held, Name Transferred to Complainant.
The omission of the letter "s" from the domain name does not prevent the it from being considered virtually identical or confusingly similar to the Complainants mark. No evidence has been presented that Respondent is commonly known by the domain name or has been making any legitimate noncommercial or fair use of the domain name without the intent for commercial gain to misleadingly divert consumers or to tarnish the mark at issue. Therefore it is concluded that Respondent has no rights or legitimate interests in the domain name.
Based upon the Complainants marks being well known, and the fact that Respondent has registered many domain names that are misspellings of other well known marks, Respondent is found to have had actual knowledge at the time he registered the domain name of the Complainants rights in its marks, particularly in the mark MARRIOTT REWARDS. Further, the Complainant submitted evidence showing that the Respondent had provided false as well as incomplete contact information in its registration of the domain name and has made no attempt to correct this information in its registration. Respondent is also using the domain name to intentionally attract, for commercial gain, Internet users to its Website, by creating a likelihood of confusion with the Complainants mark, as to the source, sponsorship, affiliation or endorsement of its site or of a product or service on its site. Thus it is concluded that Respondent has registered and is using the domain name in bad faith.
Policies referred to
ICANN Rules for Uniform Domain Name
Dispute Resolution Policy
Supplemental Rules for Uniform Domain
Name Dispute Resolution Policy
Panel Decision referred to
--
Jenkins, Panelist: -
1. The Parties
Marriott International, Inc. ("Complainant"),
is a Delaware corporation with a principal place of business in Maryland
and with an address at 1 Marriott Drive, Washington, D.C., USA.
The Respondent, Thomas, Burstein
and Miller ("Respondent"), is the registrant of the domain name "marriottreward.com"
with a listed mailing address of Box 680, New York, NY, USA. Bill Thomas
Esq., is listed as the Administrative Contact for this domain name registration.
2. The Domain Name
The domain name in issue is "marriottreward.com".
3. The Registrar of the Domain
Name
The Registrar of the domain name
in issue is Network Solutions, Inc. ("the Registrar"), located at 505 Huntmar
Park Drive, Herndon, Virginia, USA.
4. Procedural History
On June 15, 2000, the Complainant
filed a Complaint with the WIPO Arbitration and Mediation Center ("Center")
concerning the domain name "marriottreward.com" and paid the required filing
fee for appointing a single member Panel. The Complainant named "Thomas,
Burstein and Miller" as the Respondent. On June 22, 2000, the Center sent
an "Acknowledgement of Receipt of Complaint" by e-mail to the Complainant
and a copy of the Acknowledgement to the Respondent.
On June 21, 2000, a "Request for
Verification" concerning the domain name was sent to the Registrar. On
June 25, 2000, the Registrar provided a Verification Response to the Center
confirming, in pertinent part: (i) that it received the Complaint from
the Complainant as required by the Policy; (ii) that it is the Registrar
of the domain name "marriottreward.com"; (iii) that "Thomas, Burstein and
Miller" is the current registrant of the domain name registration with
a listed address of Box 680, New York, NY, USA; (iv) that "Bill Thomas
Esq." is the administrative contact for the domain name; (v) that the Registrars
5.0 Service Agreement is in effect; and (vi) that the domain name is currently
in "active" status.
On June 22, 2000, the Center sent
a message to the Complainant notifying it of its deficiency to submit the
Complaint in electronic format as required by para. 3(b) of the Rules.
The Complainant corrected this deficiency and was found by the Center on
June 26, 2000 to be in compliance with the formal requirements of ICANNs
Uniform Domain Name Dispute Resolution Policy ("Policy"), ICANNs Rules
for Uniform Domain Name Dispute Resolution Policy ("Rules") and WIPOs
Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy
("Supplemental Rules").
On June 26, 2000, the Center sent
a "Notification of Complaint and Commencement of Administrative Proceeding"
to the Respondent. The Respondent failed to respond to the Complaint within
the twenty (20) day period provided for in paragraph 5(a) of the Rules.
On August 1, 2000, the Center sent a "Notification of Respondent Default"
by e-mail to the Respondent and a copy of the Notification to the Complainant.
On August 10, 2000, the Center sent
a "Notification of Appointment of Administrative Panel and Projected Decision
Date" by e-mail to the parties notifying them that an Administrative Panel
consisting of a single Panelist had been appointed in the proceeding.
5. Factual Background
The Complaint is based on the marks
MARRIOTT and MARRIOTT REWARDS registered with the U.S. Patent and Trademark
Office. In support of its Complaint, the Complainant relies on the following
U.S. service mark registrations:
MARRIOTT, Reg. No. 899,900 (first
use 01/57; issued 09/29/70) for hotel and restaurant services
MARRIOTT REWARDS, Reg. No. 2,170,870
(first use 05/06/97; issued 07/07/98) for promoting hotel, airline, car
rental and time share services by means of an incentive award program.
Copies of the printouts for each
of these registrations based on search results of the U.S. Patent and Trademark
Office online trademark database were attached as Annex C.
A search of the Registrars Whois
database shows that the Complainant is the registrant of the domain names
"marriott.com" and "marriottrewards.com". The Complainant is also the owner
and operator of the corresponding Websites accessible by using these domain
names and copies of the printouts of the home pages of these sites were
attached as Annex B.
A search result from a query of
the Registrars Whois database shows that the domain name in issue was
registered on May 1, 2000, to "Thomas, Burstein and Miller" with "Bill
Thomas, Esq." listed as the administrative contact.
6. Parties Contentions
Complainant
The Complainant asserts that it
is the owner of numerous trademarks worldwide for the famous mark MARRIOTT
and that long prior to the Respondents registration of "marriottreward.com",
and at least as early as 1957, the Complainant adopted and began using
its MARRIOTT marks in interstate and international commerce in connection
with its goods and services and that these marks have been used continuously
and extensively by the Complainant since that time. The Complainant asserts
that it has invested substantial sums of money in developing and marketing
its products and services and has been using its MARRIOTT marks in interstate
and international commerce in connection with its operation of one of the
world's most well-known and extensive hotel, restaurant and hospitality
companies. The Complainant further asserts that the MARRIOTT marks have
been and continue to be widely publicized through substantial advertising
throughout the United States and the world. Further, the Complainant asserts
that sales of services under the MARRIOTT marks have amounted to many billions
of dollars and as a result, the general public has come to associate the
name and its marks with services of a high and uniform quality. The Complainant
continues by asserting that because of the substantial advertising expenditures
and sales, the MARRIOTT marks have become well known and famous among members
of the purchasing public.
The Complainant asserts that the
address provided by the Respondent is false and/or incomplete based upon
a letter requesting that the domain name in issue be transferred to the
Complainant sent via Express Mail by the Complainants counsel on June
2, 2000 was returned by the U.S. Postal Service. (Annex F)
The Complainant asserts that the
Respondent is using the domain name in connection with a commercial Internet
site that promotes companies unrelated to the Complainant and requests
visitors to join a "Marketing Secrets" mailing list and has attached a
copy of the home page as Annex G.
The Complainant asserts that the
domain name "marriottreward.com" is nearly identical to the famous marks
MARRIOTT, MARRIOTT.COM and MARRIOTT REWARDS and is confusingly similar
to other MARRIOTT marks and domain names.
The Complainant asserts that the
Respondent registered and is using the domain name in issue in bad faith
and the Respondent has no rights or legitimate interests in respect of
the domain name based on the following:
(i) the Respondent registered the
domain name in bad faith on May 1, 2000, long after the Complainants adoption
and first use of its MARRIOTT marks and long after the marks became famous.
(ii) the Respondents bad faith
registration and use of the domain name is also evidenced by its pattern
of registering numerous other misspelled domain names that infringe upon
other entities famous marks. The following domain names have been registered
by the Respondent and are taken from a partial list included as Annex H.
Domain Name Mark
Being Infringed
<airborne-expres.com>
AIRBORNE EXPRESS
<odnavy.com>
OLD NAVY
<motortred.com>
MOTOR TREND
<eddebauer.com>
EDDIE BAUER
<mazdasa.com>
MAZDA [sic]
<uhul.com>
U-HAUL
<nissn.com>
NISSAN
(iii) the Respondent has used the
domain name in bad faith by routing Internet traffic to a commercial Website
that promotes other companies and requests consumers to join a mailing
list by providing their e-mail addresses. Such use dilutes the Complainants
famous mark MARRIOTT and is likely to lead consumers to believe falsely
that the Complainant endorses or is affiliated with the Respondent or the
companies that advertise at the "marriottreward.com" Website.
(iv) the Respondents bad faith
use of the domain name is further evidenced by the fact that it provided
a false and/or incomplete mailing address in the Whois directory.
(v) the Respondent cannot, in good
faith, claim that it had no knowledge of the Complainants rights in its
famous MARRIOTT marks or that the Respondent is commonly known by the name
Marriott or Marriott Reward or that it is making a legitimate noncommercial
or fair use of the domain name. In fact, the Respondent registered the
domain name solely to trade upon and profit from the goodwill the Complainant
has created in its MARRIOTT marks.
Based upon the above, the Complainant
requests that the Panelist transfer the domain name "marriottreward.com"
to it.
Respondent
The Respondent did not submit a
response to the Complaint or otherwise contest the Complainants allegations.
Under paragraph 14(b) of the Rules, the Panel shall draw such inferences
from the Respondents default as it considers appropriate. Nevertheless,
the Panel can only rule in the Complainants favor after it has proven
that the requisite three elements listed below are present.
7. Discussion and Findings
The Proceeding - Three Elements
Paragraph 4(a) of the Policy states
that the domain name holder is to submit to a mandatory administrative
proceeding in the event that a third party complainant asserts to an ICANN
approved dispute provider that:
(i) the domain name holders domain
name is identical or confusingly similar to a trademark or service mark
in which the complainant has rights ("Element (i)"); and
(ii) the domain name holder has
no rights or legitimate interests in respect of the domain name ("Element
(ii)"); and
(iii) the domain name of the domain
name holder has been registered and is being used in bad faith ("Element
(iii)").
Element (i) - Domain Name Identical
or Confusingly Similar to the Mark
The Complainant has provided evidence
showing that it is the owner of the above-identified service marks MARRIOTT
and MARRIOTT REWARDS. The domain name in issue "marriottreward.com" differs
from the mark MARRIOTT REWARDS merely by the omission of the letter "s"
from the domain name. Such omission does not prevent the domain name from
being considered virtually identical or confusingly similar to the Complainants
mark. The Panelist therefore finds that Element (i) has been satisfied
based upon the domain name being virtually identical and confusingly similar
to the mark MARRIOTT REWARDS.
Element (ii) - Rights or Legitimate
Interests in the Domain Name
Paragraph 4(c) of the Policy sets
out circumstances, in particular but without limitation, which, if found
by the Panelist to be proved based on its evaluation of all evidence presented,
can demonstrate the holders rights to or legitimate interests in the domain
name. These circumstances include:
(i) before any notice to the holder
of the dispute, the holders 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) the holder (as an individual,
business, or other organization) has been commonly known by the domain
name, even if the holder has acquired no trademark or service mark rights;
or
(iii) the domain name holder 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.
No evidence was presented that at
any time had the Complainant ever assigned, granted, licensed, sold, transferred
or in any way authorized the Respondent to register or use the marks MARRIOTT
REWARDS or MARRIOTT in any manner. Accordingly, the Panelist finds that
the Respondent, prior to any notice of this dispute, had not used the domain
name in connection with any type of bona fide offering of goods or services.
Additionally, no evidence has been presented that the Respondent is commonly
known by the domain name or has been making any legitimate noncommercial
or fair use of the domain name without the intent for commercial gain to
misleadingly divert consumers or to tarnish the mark at issue. The Panelist
therefore concludes that the Respondent has no rights or legitimate interests
in the domain name and that Element (ii) has been satisfied.
Element (iii) - Domain Name Registered
and Used in Bad Faith
Paragraph 4(b) of the Policy states
that evidence of registration and use in bad faith by the holder includes,
but is not limited to:
(i) circumstances indicating that
the holder has registered or has acquired the domain name primarily for
the purpose of selling, renting, or otherwise transferring the domain name
registration to the complainant who is the owner of the trademark or service
mark or to a competitor of that complainant, for valuable consideration
in excess of the holders documented out-of-pocket costs directly related
to the domain name; or
(ii) the holder 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
the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered
the domain name primarily for the purpose of disrupting the business of
a competitor; or
(iv) by using the domain name, the
holder has intentionally attempted to attract, for commercial gain, Internet
users to the holder s 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 your website or location or of a product
or service on the holders website or location.
It is hard to imagine that the Respondent
was not well aware of the Complainants marks MARRIOTT and MARRIOTT REWARDS
when registering the domain name "marriottreward.com". Indeed, based upon
the Complainants marks being well known and having a strong reputation,
the Panelist finds that the Respondent had actual knowledge at the time
he registered the domain name in issue of the Complainants rights in its
marks, particularly in the mark MARRIOTT REWARDS. This finding is further
strengthened by the evidence submitted by the Complainant of the many domain
names that the Respondent has registered that are misspellings of other
well known marks.
The Complainant also submitted evidence
of the home page of the Website accessible by using the domain name on
which the Respondent displayed multiple banner advertisements, mailing
lists and affiliate programs promoting companies unrelated to the Complainant.
Further, the Complainant submitted evidence showing that the Respondent
had provided false as well as incomplete contact information in its registration
of the domain name and has made no attempt to correct this information
in its registration.
Based upon this evidence, the Panelist
finds that the Respondent is using the domain name "marriottreward.com"
to intentionally attract, for commercial gain, Internet users to its Website,
by creating a likelihood of confusion with the Complainants mark, as to
the source, sponsorship, affiliation or endorsement of its site or of a
product or service on its site. The Panelist thus concludes that the Respondent
has registered and is using the domain name "marriottreward.com" in bad
faith. Element (iii) has therefore been satisfied.
8. Decision
The Panelist concludes: (i) that
the domain name in issue is virtually identical and confusingly similar
to the Complainants mark; (ii) that the Respondent has no rights or legitimate
interests in the domain name; and (iii) that the domain name of the Respondent
has been registered and is being used in bad faith. Accordingly, the Panelist
requires that the registration of the domain name "marriottreward.com"
be transferred to the Complainant.
Domain Name Transferred