The Complainants are Marriott International Inc. and Marriott Worldwide Corporation (for convenience, referred to as “the Complainant”) of Washington, D.C., United States of America and Maryland, United States of America respectively, represented by ALG India Law Offices, India.
The Respondent is Avalon Resorts Pvt. Ltd. of New Delhi, India, represented by Mason & Associates, India.
The disputed domain name <avalon-courtyard.com> is registered with Net 4 India Limited.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2010. On February 5, 2010, the Center transmitted by email to Net 4 India Limited a request for registrar verification in connection with the disputed domain name. On February 9, 2010, Net 4 India Limited 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2010. The Response was filed with the Center on February 27, 2010.
The Center appointed James A. Barker as the sole panelist in this matter on March 8, 2010. 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.
The Complainant operates well-known hotel, restaurant, hospitality and timesharing companies, employing over 151,000 people. The Complainant operates and franchises over 3,300 hotel and timeshare properties in the United States (“USA” or “U.S.”) and 66 other countries and territories. The Complainant conducts that business under various brands, including “Courtyard by Marriott”.
The Complainant has operated a website at “www.courtyard.com” since January 1997. The Complainant is the owner of a large number of other domain names that incorporate the mark COURTYARD.
The disputed domain name was registered in June 2005.
The Complainant refers to previous cases under the Policy relevant to its COURTYARD mark. Those cases include Marriott International, Inc. v. GBT - Domains For Sale and Lease, NAF Claim No. FA1153595 (concerning the domain name <courtyardberlin.com>, among others), in which the then respondent did not submit a Response. The other was Marriott International, Inc. v. PLUTO DOMAIN SERVICES PRIVATE LIMITED., NAF Claim No. FA1243378 (concerning the domain name <courtyardbymarriott.com>) in which a Response was neither submitted.
The Complainant is the owner of registered trademarks for, among others, COURTYARD, COURTYARD SUITES, and COURTYARD BY MARRIOTT. Those marks are registered in various jurisdictions, including in India where the Respondent has its address. In the United States, for example, the earliest mark was registered in 1985 (COURTYARD BY MARRIOTT), with the others being registered in 1989 (COURTYARD), 2003 (COURTYARD SUITES) and 2009 (COURTYARD MARRIOTT as a design mark).
The Complainant claims that, through long years of promotion, its COURTYARD mark has acquired distinctiveness as a trademark owned exclusively by the Complainant.
The Complainant claims that the disputed domain name is confusingly similar to its distinctive COURTYARD mark, because that mark is incorporated entirely in the disputed domain name. The addition of the prefix “Avalon” is insubstantial, because this is a dictionary word meaning “an island”. The addition of a dictionary term to a trademark does not make the disputed domain name substantially different to the mark. The hyphen is also irrelevant.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent, in all likelihood, was aware of the Complainant's mark because that mark is well-known, the Complainant has trademark registrations in India; and the Complainant operates or franchises seven COURTYARD brand hotels in India alone. The Respondent's only use of the disputed domain name is to redirect it to a page at “http://delhi.avalonhospitality.com”, which is hosted on the domain name <avalonhospitality.com>. The Complainant otherwise denies that the Respondent has rights or legitimate interests as described in paragraph 4(c) of the Policy.
Finally, the Complainant says that the Respondent has registered and used the disputed domain name in bad faith. The Respondent is in the hotel industry and it is impossible to conceive that the Respondent was unaware of the Complainant's mark. The inference should therefore be drawn that the Respondent hoped to capitalize on the reputation of the Complainant, which is indicative of bad faith. The Complainant refers to various past cases under the Policy to support its argument on this, and the other two grounds outlined above.
The Complainant sent letters of demand to the Respondent in March and August 2009. The Respondent did not comply with the transfer demands made in these letters, to which the Respondent did not otherwise reply.
The Respondent provides evidence of having a registered mark in India for AVALON.
The Respondent says this is not a case where the domain name incorporates a strong trademark and a generic expression. The Respondent has only used the word “courtyard” with its own registered mark for AVALON. The Respondent says that the term “courtyard” is used extensively as a composite mark in the hotel industry, and that there are a number of hotels using the word “courtyard”, of which the Respondent provides evidence by reference to the websites of hotels in the United States, People's Republic of China, and the United Arab Emirates. The Respondent says that the use of the term “Avalon” together with the term “courtyard” renders the domain name substantially different from the Complainant's mark.
The Respondent also says that it has a legitimate interest in the disputed domain name, arising from its use of the name “Avalon Courtyard – Residences & Suites” since January 2006. The Respondent says that it operates 52 luxury serviced apartments in New Delhi under that name, and this was the basis for it to register the disputed domain name. The Respondent says that it operates a bona fide business. In that connection, the Respondent provides copies of its website, guest invoices (dated in 2006), copies of lease agreements, promotional materials, and its letterhead and other printed material associated with its business.
The Respondent also denies that it registered and has used the disputed domain name in bad faith. The Respondent says it registered the disputed domain name in connection with its legitimate business. The word “courtyard” is defined as “an unroofed area that is completely or mostly enclosed by the walls of the large building.” The Respondent says that this is descriptive of its properties, which contain a courtyard in the center of the building, of which the Respondent provides some photographic evidence. The Respondent submits that its only reason for directing <avalon-courtyard.com> to <avalon-hospitality.com> was because of a business decision to consolidate the Respondent's websites.
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed as follows.
The Complainant has provided evidence that it “has rights” in a registered mark for COURTYARD, including a registration for a word mark on the principal register of the United States Patent and Trademark Office (“USPTO”). It is not in dispute that the corresponding term “courtyard” has a common dictionary meaning, as cited by the Respondent.
The question is whether the disputed domain name is confusingly similar to the Complainant's mark. The Complainant refers to a number of cases in support of the proposition that the entire incorporation of a distinctive mark in a domain name is enough to create confusing similarity for the purpose of paragraph 4(a) of the Policy. For example, the Complainant refers to EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047, in which the panel stated that: “When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar.” That case concerned a mark which was arguably generic, but the panel considered that there was a presumption of distinctiveness arising from the registration of the mark on the principal register of the USPTO (and especially for a finding of relevant rights under the first element of the Policy).
That case was different, at least to the extent that both parties were U.S. residents and the panel considered that it was therefore appropriate to apply U.S. law, and the associated presumption of acquired distinctiveness under Section 2(f) of the Lanham Act. In this case, the Respondent is based in India, and therefore there is a less compelling case to apply that presumption. Nevertheless, as regards a finding under the first element, a satisfaction of relevant trademark rights (in an identified jurisdiction, e.g., the USA) in respect of a term (the Complainant's trademark) that is identical or confusingly similar to the domain name is sufficient (for example by this Panel: see e.g. United Van Lines, LLC v. PRO MOVES, WIPO Case No. D2009-1761).
As such, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
Paragraph 4(c)(i) of the Policy provides that a respondent might demonstrate a right or legitimate interest, in circumstances where it uses a disputed domain name in connection with a bona fide offering of goods or services. The Panel finds that the Respondent has demonstrated such rights or legitimate interests, based on its use of the disputed domain name in connection with its business.
The Respondent provides significant and persuasive evidence, from at least as far back as 2006, that it operated accommodation services under the name “Avalon Courtyard”. In addition, it has a registered mark for AVALON which is incorporated in the disputed domain name.
The Complainant has not provided contrary evidence on the basis of which it might be found that the Respondent's offering is not bona fide. The crux of the Complainant's argument to the contrary is that its COURTYARD mark is so well-known that the Respondent must have been aware of it.
However, the Panel does not accept this argument. Firstly, the Panel considers that there is no strong inference that the Respondent was targeting (or necessarily aware of) the Complainant's mark when it registered the disputed domain name, as the Respondent directly uses the disputed domain name in connection with its legitimate business, and because the Complainant's mark is comprised of a common dictionary term which might have any number of associations not connected with the Complainant.
Secondly, even if the Respondent was aware of that mark (e.g. because it operates in the same field of business as the Complainant), whether the Respondent is making a bona fide offering is closely connected to the question of whether it relevantly acted in bad faith. The Panel finds that the Respondent did not act in bad faith for the reasons discussed below under that heading.
The Panel has taken into account the past cases (referred to above, under ‘Factual Background') involving the Complainant's COURTYARD mark. However, those cases are distinguishable to this. In those cases there was no Response submitted, and the panels did not otherwise find evidence of rights or legitimate interests. This case is strongly contested by the Respondent, which has provided substantial and persuasive evidence of its legitimate business.
For these reasons, the Panel finds that the Complainant has not established its case under paragraph 4(a)(ii) of the Policy.
Bad faith may be found where the Respondent registered and used the disputed domain name to take unfair advantage of the Complainant's rights in some way. See e.g. Your Golf Travel Limited v. Hardelot Holidays Limited, WIPO Case No. D2007-1058. In this case, there is however little evidence that the Respondent, by registering and using the disputed domain name, was motivated to exploit the value in the Complainant's mark.
The Complainant makes the argument that it should be inferred that this is what the Respondent has done. The Complainant argues that “it is not possible to conceive of a plausible circumstance” in which the Respondent could legitimately use the disputed domain name featuring the Complainant's COURTYARD mark. For support, the Complainant refers to a number of previous cases decided under the Policy. For example, the Complainant refers to Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574. However, such cases are easily distinguishable. In the Jupiters case the panel noted that “Respondent has offered no explanation as to why the domain names were chosen and no legitimate reason is apparent.” This is not the case here. Another difference is that the descriptive nature of the domain name (as it relates to the Respondent's bad faith offering of services) in this case means that the Panel cannot safely conclude that no legitimate use of the disputed domain name is conceivable, even if the Respondent may have been aware of the Complainant's mark: see e.g. Early Learning Centre Limited v. Kiansu Thoi, WIPO Case No. D2005-0692.
As outlined above, the Respondent has presented plausible evidence of a legitimate business use for the disputed domain name. In addition, the Respondent has argued and provided evidence that the term “courtyard” is used by various accommodation providers, and itself, in connection with its ordinary dictionary meaning. The inclusion of a dictionary word, which is also a mark, in a domain name may be legitimate as long as the registration was for its attraction as a dictionary word, rather than its attraction as a trademark. (See e.g. HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062, and the cases cited in that one.)
The Complainant further argues that bad faith is demonstrated because the Respondent did not use the disputed domain name in connection with an active website, but has “merely linked” it to another website at <avalonhospitality.com>. To this effect, the Complainant refers to various cases decided under the Policy which found bad faith in circumstances of inactive use of a domain name. However, this argument has little merit in these present circumstances. It is plain that the Respondent has been using the disputed domain name in connection with its business, and the Respondent's argument in this connection might have been anticipated by the Complainant. In the circumstances of this case, the disputed domain name, inter alia, cannot be properly characterized as being “inactive” merely because it reverted to another web address.
For these reasons, the Panel finds that the Complainant has not established its case under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Complaint is denied.
James A. Barker
Date: March 22, 2010