World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Marriott International, Inc. v. Robert Waschenfelder

Case No. D2012-1577

1. The Parties

Complainant is Marriott International, Inc. of Bethesda, Maryland, United States of America, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America.

Respondent is Robert Waschenfelder of San Francisco, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <shopmariott.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 3, 2012. On August 6, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name.

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 Respondent of the Complaint, and the proceedings commenced on August 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 30, 2012.

The Center appointed Sandra A. Sellers as the sole panelist in this matter on September 25, 2012. 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

Complainant is one of the world’s leaders in the hospitality industry, and has operated under the MARRIOTT mark since at least 1960. Complainant operates, franchises or licenses more than 3700 hotels, residences, apartments, and resorts in 73 countries. Complainant is a “Fortune 200” company and employs approximately 300,000 persons. Its revenue in 2010 was USD 11.7 billion and USD 12.0 billion in 2011. Complainant has offered or promoted its services on the Internet under the MARRIOTT mark since at least 1996 at the domain name <marriott.com>.

Complainant owns a family of marks containing the MARRIOTT mark, which are registered in the United States and worldwide. In particular, Complainant owns the mark SHOPMARRIOTT, for Complainant’s online retail store offering linens, bedding products, towels, and other items. These products are sold at the domain name <shopmarriott.com>, which Complainant registered in 2004.

Respondent acquired or registered the disputed domain name in September 2011. Prior to Respondent’s acquisition, third parties had previously registered the disputed domain name, which was first registered on August 6, 2009.

Respondent uses the disputed domain name as a commercial click-through website, which features sponsored links and advertisements for sites that compete directly with Complainant’s online products. The site also features “search categories” that directly refer to “Marriott Courtyard” and “Marriott Hotels” and connect to additional web pages that directly compete with Complainant. Respondent also has offered the disputed domain name for sale via the website at the domain name <buydomains.com> and through the WhoIs record for the disputed domain name.

5. Parties’ Contentions

A. Complainant

Complainant asserts that its mark is a famous mark that is internationally recognized. Complainant contends that the disputed domain name is confusingly similar to Complainant’s marks because it consists of Complainant’s marks MARRIOTT and SHOPMARRIOTT in their entirety, and that the only difference between Complainant’s marks and the disputed domain name is the misspelling of Complainant’s mark by omitting one of the letters “r”, which constitutes “typosquatting”. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

As set forth above, Complainant is one of the world’s leaders in the hospitality industry, and has operated under the MARRIOTT mark since at least 1960. Complainant operates, franchises or licenses more than 3700 hotels, residences, apartments, and resorts in 73 countries. Complainant is a “Fortune 200” company and employs approximately 300,000 persons. This Panel finds that the MARRIOTT mark is famous.

Complainant also owns a family of marks containing the MARRIOTT mark, which are registered in the United States and worldwide. In particular, Marriott owns the mark SHOPMARRIOTT, for Marriott’s online retail store offering linens, bedding products, towels, and other items. These products are sold at the domain name <shopmarriott.com>, which Complainant registered in 2004.

This Panel finds that Complainant has rights in the MARRIOTT mark and its related SHOPMARRIOTT mark alleged to be contained in the disputed domain name.

The disputed domain name consists of Complainant’s MARRIOTT and SHOPMARRIOTT marks in their entirety, and the only difference between Complainant’s marks and the disputed domain name is the omission of one of the letters “r”, which constitutes “typosquatting”. It has long been held that omission of a letter is irrelevant to the determination of whether the domain name is identical or confusingly similar to a complainant’s mark. Indeed, several UDRP decisions cited by Complainant came to similar conclusions. See, e.g., Mariott International, Inc. v Seocho, NAF Case No. FA149187; Marriott International, Inc. v. Kyznetsov, NAF Case No. FA95648; and Marriott International, Inc. v Polanski, NAF Case No. FA95647. Furthermore, Respondent’s inclusion of “search categories” on the website at the disputed domain name, that directly refer to “Marriott Courtyard” and “Marriott Hotels” strengthen the impression that the disputed domain name is affiliated with Complainant, which causes further confusion.

Accordingly, the Panel finds that Complainant has rights in the MARRIOTT and SHOPMARRIOTT marks and that the disputed domain name is confusingly similar to Complainant’s marks. Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.

Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the MARRIOTT and SHOPMARRIOTT marks. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name. Further, Respondent's offer to sell the disputed domain name also indicates that Respondent lacks rights or legitimate interests in the disputed domain name.

The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.

Respondent is in default, and has not provided any evidence in its own favor.

The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that:

“for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a 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 that 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 web site or location or of a product or service on your web site or location.”

This Panel infers that Respondent most likely knew of Complainant’s MARRIOTT and SHOPMARRIOTT marks when Respondent registered the disputed domain name, given the general fame of the MARRIOTT mark, and the fact that the MARRIOTT and SHOPMARRIOTT marks are registered in the United States, Respondent’s country of residence. The Panel finds that Respondent therefore registered the disputed domain name in bad faith.

Under Section 4(b)(i), it has long been established that conduct such as Respondent’s efforts to sell the domain name on “ww.buydomains.com” and through the WhoIs database constitutes bad faith, despite the fact that Respondent is offering the domain name for sale generally and not just to Complainant. See Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001, and the legislative history cited therein.

The Panel finds that Respondent also has used the domain name in bad faith under Policy, paragraph 4(b)(iv). Respondent’s website intentionally attracts Internet users for commercial gain by linking to other websites through which Complainant’s competitors sell similar goods. It has long been held that this type of click through revenue violates the Policy. Further, “typosquatting” has consistently been found to constitute bad faith. Additionally, Respondent’s inclusion of “search categories” that directly refer to “Marriott Courtyard” and “Marriott Hotels” on the website at the disputed domain name strengthen the impression that the disputed domain name is affiliated with Complainant, which causes further confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement.

This Panel finds that Respondent has registered and used the disputed domain name in bad faith and that Complainant meets the third criterion of paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <shopmariott.com> be transferred to the Complainant.

Sandra A. Sellers
Sole Panelist
Dated: October 8, 2012

 

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