WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Montage Hotels & Resorts, LLC v. Daniel Kirchhof / Unister GmbH
Case No. D2011-1042
1. The Parties
The Complainant is Montage Hotels & Resorts, LLC of Laguna Beach, California, United States of America represented by SNR Denton US LLP, United States of America.
The Respondents are Daniel Kirchhof and Unister GmbH of Leipzig, Germany.
2. The Domain Names and Registrar
The disputed domain names <montage-beverly-hills.com> and <montage-laguna-beach.com> are registered with PSI-USA, Inc. d/b/a Domain Robot.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2011. On June 20, 2011, the Center transmitted by email to PSI-USA, Inc. d/b/a Domain Robot a request for registrar verification in connection with the disputed domain names. On June 21, 2011, PSI-USA, Inc. d/b/a Domain Robot (“the Registrar”) transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 25, 2011. The Center verified that the Complaint together with the amendment to 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 Respondents of the Complaint, and the proceedings commenced on June 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2011. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on July 21, 2011.
The Center appointed J. Nelson Landry, Mark Partridge and Dietrich Beier as panelists in this matter on August 12, 2011. The Panel finds that it was properly constituted. Each member of 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 operates luxury resorts and provides hotel, resort hotel, restaurant, catering and residential real estate services as well as spa and convention facilities under the trademark MONTAGE.
The Complainant is the owner of the trademark MONTAGE which is registered either as a word or a formative, hand written script, trademark. The United States trademark registration No. 3,256,835 for the trademark MONTAGE discloses February 22, 2003, as a date of first use, while other MONTAGE trademark registrations in evidence disclosed a subsequent date of first use (herein the “Trademark MONTAGE”).
The Complainant registered the domain names <montagebeverlyhills.com> and <montagelagunabeach.com> on June 17, 2002 and has operated websites located at these domain names. The said websites provide information about hotel reservations, availability, accommodations, amenities, rates, dining, hotel and resort locations, residences, contact information and guest services, in particular at the Montage Beverly Hills and Montage Laguna Beach hotels (herein the common law “Trademarks MONTAGE BEVERLY HILLS and MONTAGE LAGUNA BEACH” ).
On July 21, 2009, the two disputed domain names were registered by Daniel Kirchhof as a person and Unister GmbH as the organization according to the WhoIs records and the answer provided by the Registrar to the request from the Center. The said registrations, according to the evidence, were to expire on July 21, 2011. Pursuant to a communication and request from the Center to the Registrar, the Registrar confirmed that the disputed domain names are presently under a locked status.
The Complainant has no relationship with the Respondents, has not authorized the Respondents to promote its hotel and information services, has never granted a license under its Trademark MONTAGE, Trademarks MONTAGE BEVERLY HILLS and MONTAGE LAGUNA BEACH to the Respondents and never engaged in any business relationship with the Respondents nor authorized the Respondents to use its MONTAGE, MONTAGE BEVERLY HILLS or MONTAGE LAGUNA BEACH Trademarks or to register the disputed domain names or to book hotel reservations for its hotels, in particular MONTAGE Beverly Hills and MONTAGE Laguna Beach.
The websites operated by the Respondents at the address of the disputed domain names provide information about the Montage Beverly Hills and Montage Laguna Beach hotels and resorts of the Complainant as well as information about hotels of third parties and post links to said third parties as well as to a hotel reservation website at a domain name address registered by the Respondent Daniel Kirchhof.
The Respondents are the registered owners of the domain name <hotelreservation.com> which domain name was registered on February 2, 1996.
5. Parties’ Contentions
The Complainant submits that it has trademark rights in the MONTAGE Trademark and various MONTAGE formative Trademarks for which it owns various registrations as well as common law rights in the Trademarks MONTAGE BEVERLY HILLS and MONTAGE LAGUNA BEACH. The MONTAGE Trademark is registered in the European Community, Monaco, Switzerland, United Kingdom of Great Britain and Northern Ireland and United States of America.
According to the Complainant, by reason of their extensive use, the MONTAGE Trademark and MONTAGE formative Trademarks have acquired substantial goodwill and represent valuable assets to the Complainant.
The Complainant contends that the disputed domain names are identical to its registered MONTAGE Trademark and its common law MONTAGE BEVERLY HILLS and MONTAGE LAGUNA BEACH Trademarks with the sole difference of the addition of hyphens between the words in these last two Trademarks and the gTLD suffix “.com” to constitute the disputed domain names and relies on an earlier UDRP panel decision to further contend that the addition on hyphens is irrelevant in terms of finding identicality with the Trademarks. See Lowe Wild Dunes Investors, LP, Commonwealth Washington Operating, Inc., Spruce Peak Realty, LLC, Squaw Creek Associates, LLC, L-O Tempe Hotel, Inc., Long Point Development, LLC v. Daniel Kirchhof, Unister GmbH, WIPO Case No. D2010-0311.
The Complainant further contends that despite the addition of the geographic locations “Beverly Hills” and “Laguna Beach” to the Trademark MONTAGE in the disputed domain names, the said disputed domain names are nevertheless confusingly similar to the MONTAGE Trademark and relies on previous UDRP panel decisions; see Six Continents Hotels, Inc. v CredoNIC.com / Domain For Sale, WIPO Case No. 2005-0755; Six Continents Hotels, Inc. v. credoNIC.com / DOMAIN FOR SALE, WIPO Case No. D2004-0987; Six Continents Hotels, Inc. v. Dkal, WIPO Case No. D2003-0244 and Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615.
According to the Complainant, the Respondents, in the websites at the address of the disputed domain names, provide information such as hotel details, pictures, descriptions, offers, rates and availability in respect of the Complainant’s MONTAGE Beverly Hills and MONTAGE Laguna Beach hotels and the said websites purport to allow consumers to put reservations at these two hotels of the Complainant in using a third party booking engine. However, the Complainant states that it has not been asked to and states that it will not honor such reservations.
According to the Complainant, the Respondents are not known by the disputed domain names and do not operate any hotels under the said disputed domain names nor are they making any legitimate, noncommercial or fair use of the disputed domain names, but to the contrary, the Respondents improperly trade upon the substantial goodwill associated with the MONTAGE Trademark in using the disputed domain names for the purpose of creating a false indication of source, sponsorship, affiliation or endorsement by the Complainant in respect of the websites located at the addresses of the disputed domain names. The Complainant concludes that the Respondents have therefore no rights or legitimate interests in respect of the disputed domain names.
The Complainant represents that the disputed domain names were registered and used in bad faith.
According to the Complainant, there is, in this case, a deliberate registration and use of the disputed domain names to create confusion and mislead Internet visitors into falsely believing in a relationship of sponsorship or endorsement between the Complainant and the websites at the disputed domain names and in creating the false impression that the said websites are those of the Complainant and with the insertion in said websites of the hotel reservation website of the Respondent in the said disputed domain names websites, there is an attempt to induce the Internet visitors to visit links and consult information about other hotel facilities or locations that are, in fact, competitors of the Complainant.
According to the Complainant, the Respondents were aware of the Trademark MONTAGE by reason of the facts of detailed accurate information specific to the hotels of the Complainant located in Beverly Hills and Laguna Beach and thereby tried to cause the Internet visitors into believing that they had reached the corresponding websites of the Complainant. Such awareness is also based on the constructive notice arising from the United States registrations of several MONTAGE Trademarks. See Barry D. Sears, Ph.D. v. Texas International Property Associates, WIPO Case No. D2007-0284 and General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087.
The use of said disputed domain names websites is simply to misdirect and divert consumers to the Respondent’s hotel reservation website and third party hotels in competition with the Complainant and thereby generates a profit as the result of the “foreseeable effect of diverting traffic” from the Complainant’s website, this constituting further evidence of bad faith registration and use. See Media West-PNI, Inc. and Phoenix Newspapers, Inc. v. Bruce Watson, WIPO Case No. D2004-0974. Similarly, a panel had held previously that “[r]espondent’s use of the [d]omain [n]ame in connection with […] services that compete with [c]omplainant’s services demonstrate an intentional attempt to attract Internet users to [r]espondent’s site by creating confusion as to source, sponsorship, affiliation or endorsement by [c]omplainant” and said panel found that this supports a finding of bad faith under the Policy. See Las Vegas Sands, LLC v. Hsiu Chin Kuo, WIPO Case No. D2006-1377 and Tigre S.A. Tubos e Conexões v. Tubo Forte, S.A.C., WIPO Case No. D2008-1337.
The Complainant further represents that the Respondents are engaged in a pattern of registering domain names identical or confusingly similar to well-known trademarks and have, in previous occasions, as found in earlier UDRP panel decisions wherein it was found that Respondent Daniel Kirchhof, alone or under the company Unister GmbH, had registered 22,000 domain names wherein 1,500 domain names at issue were transferred to the complainant. See Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof, WIPO Case No. D2009-1661 and Six Continents Hotels, Inc. v. Daniel Kirchhof, Unister GmbH, WIPO Case No. D2010-1960, involving 150 domain names, and finally Lowe Wild Dunes Investors, LP, Commonwealth Washington Operating, Inc., Spruce Peak Realty, LLC, Squaw Creek Associates, LLC, L-O Tempe Hotel, Inc., Long Point Development, LLC, v. Daniel Kirchhof, Unister GmbH, supra.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for the disputed domain names to be cancelled or transferred:
(i) The disputed domain names registered by the Respondents are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
A. Identification of the Respondents
The Panel has noted that, in the heading of the Complaint, the Complainant has named Daniel Kirchhof and Unister GmbH as the Respondents. On information and belief, the Panel is aware that the expression “GmbH” is the acronym to identify an incorporate organization in Germany. Within the evidence there are two verifications on PSI-USA, INC. WhoIs server: in respect of each of the two disputed domain names, the information provided therein, in respect of the owner and registrant, is the following: “type: PERSON; fname: Daniel; lname: Kirchhof; org.: Unister GmbH; address and city: Barfußgäßchen, Leipzig; country: DE; e-mail: […]@unister-gmbh.de.
Upon receipt of the Complaint, the Center, by e-mail, sent a request for registrar verification on June 20, 2011, addressed to the Registrar in which the Center identified the Respondent as “Daniel Kirchhof” alone and under the item (3) the Center asked “confirm that the Respondent is the current registrant of the domain name”, considering that there is only one Respondent.
The domain name Registrar answered the Request on June 21, 2011 and in respect of the item (3) provided the following answer: “the following owner data are listed by us: and reiterated thereafter the data mentioned herein with both names Daniel Kirchhof and Unister GmbH.” It is not clear to this Panel that the disputed domain names are registered by Daniel Kirchhof in his own personal capacity or on behalf and in the name of Unister GmbH. The Panel considers that in the presence of Daniel Kirchhof and Unister GmbH engaged in a pattern of cybersquatting that the decision to transfer the disputed domain names rendered in the present case is complied with and for greater certainty considers appropriate to name both Daniel Kirchhof and Unister GmbH as Respondents.
Similar data are also provided by the Registrar in respect of the domain name <hotelreservation.com> again both Daniel Kirchhof and Unister GmbH are present in the same fashion. Nowhere in the evidence is Daniel Kirchhof appearing alone except for the UDRP case at paragraph 37 of the Complaint, Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof, supra, in the two other cases cited in the same paragraph to show the bad faith cybersquatting, the Respondents are both Daniel Kirchhof and Unister GmbH.
The Panel is of the view and finds that for adequate protection of the rights of the Complainant and recovery of the two disputed domain names, both Daniel Kirchhof and Unister GmbH be named and treated as Respondents in this case as requested by the Complainant in its Complaint.
B. Identical or Confusingly Similar
The Complainant has clearly established that it operates various resorts, hotels, restaurants and residential real estate services amongst others since at least 2003 in association with its Trademark MONTAGE which is registered in several countries as mentioned herein and in particular operates two luxury resorts properties in Beverly Hills and Laguna Beach, California, which are known as Montage Beverly Hills and Montage Laguna Beach; therefore, the Complainant has rights in the Trademark MONTAGE.
The Complainant has also registered the two domain names <montagebeverlyhills.com> and <montagelagunebeach.com> and operated websites at the address of these domain names since 2002.
It is clear that the disputed domain names incorporate in totality the MONTAGE Trademark to which two descriptive geographical locations have been added.
In respect of the addition of a geographic location to that Trademark MONTAGE, the Panel concurs and adopts the findings of the panels in the three decisions cited above which considered that a domain name which incorporates a geographic description with a registered trademark can still be considered identical or confusingly similar to the trademark for the purpose of the Policy.
The Panel reiterates that the Complainant has rights in the MONTAGE Trademark and finds that the disputed domain names are confusingly similar to the said MONTAGE Trademark.
The Panel finds that the first criterion has been met.
C. Rights or Legitimate Interests
The Respondents have not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names by stating that the Respondents have never been known by the disputed domain names, are not making any legitimate noncommercial or fair use of the disputed domain names. Furthermore, the Complainant has never given a license nor in any way authorized the Respondents to make use of the Complainant’s Trademark MONTAGE. There is no evidence that the Respondents have ever engaged in any legitimate business under the Complainant’s Trademark.
The evidences adduced by the Complainant clearly demonstrate that the Respondent Daniel Kirchhof is not known or associated in any way with any of the Trademarks considered herein in respect of the disputed domain names and notwithstanding the information contained in the disputed domain names in respect of the hotel operations and services of the Complainant in Beverly Hills and Laguna Beach, the Respondents are not a licensed or authorized representative of the Complainant in this respect. The additional presence of hotel information available to Internet visitors at the websites located under the disputed domain names at the Respondents’ <hotelreservation.com> domain name which refer the said Internet visitors to hotels in competition with those of the Complainant does not, in this Panel’s view, constitute a bona fide noncommercial use of the disputed domain names, but to the contrary, is used there in bad faith as considered and found herein.
The Panel finds that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The second criterion has been met.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant contends that the disputed domain names were registered and used in bad faith.
The evidence is clear that the Respondent, Daniel Kirchhof, in his personal capacity or as an officer or agent of the Respondent Unister GmbH, was aware of the hotel operations of the Complainant under at least its Trademark MONTAGE and that he was not authorized nor sought or obtained any license from the Complainant to incorporate in the disputed domain name the Trademark MONTAGE. It has already been determined herein that the disputed domain names are confusingly similar to the Trademark MONTAGE.
In this Panel’s view, the incorporation on the website at the disputed domain names address of information about the hotels and other activities of the Complainant is in this case misleading consumers into falsely believing that there is a relationship of sponsorship or endorsement with the Complainant or to create the false impression that these said websites are official websites for the Complainant’s hotels with the Respondents as an authorized advertiser, promoter or reservations agent when it is not the case.
The Panel finds that the disputed domain names were registered in bad faith by the Respondents.
The evidence is also clear that in addition to information about the hotel facilities of the Complainant, the respective websites at the disputed domain names address also include information and links to the Respondents’ hotel reservation website at the domain name <hotelreservation.com> and thereby offering hotel information and booking services which directly compete with the similar services offered and provided by the Complainant and thereby, benefiting from the likelihood of confusion of Internet users which were then mislead by the disputed domain names and corresponding websites of the Respondents. The Panel concurs with the findings of panels in the UDRP decisions cited by the Complainant namely Las Vegas Sands, LLC v. Hsiu Chin Kuo, supra and Tigre S.A. Tubos e Conexões v. Tubo Forte, S.A.C., supra, where such offering of services which compete with those of the Complainant demonstrate an intentional attempt to use the Respondents’ sites by creating confusion as to source, sponsorship, affiliation or endorsement by the Complainant which constitute use in bad faith of the disputed domain names in this Panel’s view.
This bad faith attitude of the Respondents herein is not surprising when one considers the three earlier cases cited by the Complainant in which the Respondent Daniel Kirchhof alone or with the Respondent Unister GmbH were also respondents in respect of domain names with geographic identifiers and hyphens as used in the present case were held to have acted in bad faith and this Panel finds that said Respondents are engaged in a pattern of cybersquatting and thereby acting in bad faith.
The Panel finds that the disputed domain names are used in bad faith.
The third criterion has been met.
The Panel concludes that:
(a) the disputed domain names <montage-beverly-hills.com> and <montage-laguna-beach.com> are confusingly similar to the Complainant’s Trademark MONTAGE;
(b) the Respondents have no rights or legitimate interests in the disputed domain names;
(c) the disputed domain names have been registered and are being used in bad faith.
Therefore, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <montage-beverly-hills.com> and <montage-laguna-beach.com> be transferred to the Complainant.
J. Nelson Landry
Dated: August 25, 2011