WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Marriott International, Inc. v. Thomas, Burstein and Miller
Case No. D2000-0610
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 Registrarís 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 ICANNís Uniform Domain Name Dispute Resolution Policy ("Policy"), ICANNís Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and WIPOís 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 Registrarís 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 Registrarís 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. Partiesí Contentions
The Complainant asserts that it is the owner of numerous trademarks worldwide for the famous mark MARRIOTT and that long prior to the Respondentís 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 Complainantís 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 Complainantís adoption and first use of its MARRIOTT marks and long after the marks became famous.
(ii) the Respondentís 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 entitiesí 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]
(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 Complainantís 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 Respondentís 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 Complainantís 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.
The Respondent did not submit a response to the Complaint or otherwise contest the Complainantís allegations. Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondentís default as it considers appropriate. Nevertheless, the Panel can only rule in the Complainantís 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 holderís 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 Complainantís 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 holderís rights to or legitimate interests in the domain name. These circumstances include:
(i) before any notice to the holder of the dispute, the holderís 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 holderís 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 holderí 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 holderís website or location.
It is hard to imagine that the Respondent was not well aware of the Complainantís marks MARRIOTT and MARRIOTT REWARDS when registering the domain name "marriottreward.com". Indeed, based upon the Complainantís 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 Complainantís 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 Complainantís 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.
The Panelist concludes: (i) that the domain name in issue is virtually identical and confusingly similar to the Complainantís 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.
Dated: September 14, 2000