WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Montage Hotels & Resorts, LLC v. Robert McDaniel
Case No. D2013-1366
1. The Parties
Complainant is Montage Hotels & Resorts, LLC of Laguna Beach, California, United States of America, and is represented by Neal, Gerber & Eisenberg of Chicago, United States of America.
Respondent is Robert McDaniel of Kula, Hawaii, United States of America, self-represented.
2. The Domain Names and Registrar
The disputed domain names in these proceedings, <montagekapaluabay.com> and <montagekapalua.com> (the “Domain Names”), are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
Complainant filed the Complaint with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2013. On August 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 5, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On August 8, 2013, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 8, 2013. In accordance with paragraph 5(a) of the Rules, the due date for response was August 28, 2013. Respondent filed the Response with the Center on August 28, 2013. The Center appointed Michael A. Albert as the sole panelist in this matter on September 6, 2013. 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 paragraph 7 of the Rules.
On September 6, 2013, Complainant submitted a supplemental filing, which consisted of a Reply in Support of Complaint and several exhibits. The Center acknowledged to the Parties the receipt of Complainant’s supplemental filing on September 9, 2013. Respondent submitted an email communication to the Center directly on September 7, 2013, without copying Complainant, asserting that no exceptional circumstances exist sufficient to admit supplemental filings in the circumstances of this case. Due to an administrative oversight, this email communication was not acknowledged by the Center; however, as further detailed at Part 6.A below, this has not resulted in any material change to this Panel’s ultimate conclusion in this matter.
4. Factual Background
Complainant owns and operates hotels and related properties in the United States. Those properties include a resort in Laguna Beach, California, a hotel in Beverly Hills, California, and a branded property in Deer Valley, Utah. For each of those properties, Complainant also owns an associated domain name composed of the word “montage” followed by the location of the property names. See “http://www.montagelagunabeach.com/”, “http://www.montagebeverlyhills.com/”, “http://www.montagedeervalley.com/”. Since May 2013, news outlets have reported Complainant’s plans to manage The Residences at Kapalua Bay on Maui, Hawaii, as a branded property.
Complainant has made significant efforts to foster trademark rights in the MONTAGE mark. Complainant obtained over seventy trademark registrations for the MONTAGE mark, including seven U.S. federal registrations dating from 2007 to 2011. Numerous media outlets have used the MONTAGE mark when describing Complainant’s properties and services. Complainant consistently uses the MONTAGE mark on its websites, including its company website at “http://www.montagehotels.com/”. Complainant also promotes its properties and services with the MONTAGE mark on social networking sites.
Respondent is an individual residing on Maui, the same Hawaiian island as Complainant’s Kapalua Bay interests. On June 7, 2013, Respondent registered the Domain Names. Since registration, the Domain Names have pointed to the Registrar’s default parked page consisting of information about the Registrar and advertisements for various companies, including some selling products and services in competition with Complainant. In the months leading up to Respondent’s registration of the Domain Names, Respondent was involved in an unrelated proceeding under the Policy respecting several domain names Respondent had registered. See Harpo, Inc. and Oprah’s Farm, LLC v. Robert McDaniel, WIPO Case No. D2013-0585 (decided June 17, 2013). In that proceeding, Respondent was properly noticed and filed his Response as provided under the Policy and Rules. See id.
In this proceeding, Complainant’s counsel sent Respondent a letter on June 18, 2013, alleging that Respondent’s registration of the Domain Names constituted a violation of the Policy and several U.S. federal laws. Respondent did not respond to the letter. Complainant’s counsel sent Respondent a second copy of the June 18 letter on July 3, 2013, and again, Respondent did not respond. The mail carrier confirmed delivery of both letters. Subsequent to sending those letters, Complainant’s counsel attempted to call Respondent at the number listed in the WhoIs record for the Domain Names and at Respondent’s place of employment, but was unable to reach Respondent. Complainant then initiated these proceedings on August 1, 2013, as described above in Part 3.
5. Parties’ Contentions
In the Complaint, Complainant advanced three primary arguments. First, Complainant argued that the Domain Names are “virtually identical and confusingly similar” to Complainant’s MONTAGE mark, because the Domains Names merely consists of the trademark with a geographic location and a top-level domain. Second, Complainant argued that Respondent has no rights to or legitimate interests in the Domain Names, because Respondent is not commonly known by the Domain Names, has made no affirmative use of the Domain Names, and selected the Domain Names merely in response to Complainant’s activities on Maui. And third, Complainant argued that Respondent registered and is using the Domain Names in bad faith, because Respondent had constructive knowledge of Complainant’s trademark, tailored the Domain Names to conform with Complainant’s domain naming convention, failed to correspond with Complainant prior to these proceedings, is using the Domain Names to display advertisements for competing services, and is a proven cybersquatter.
For the foregoing reasons, Complainant requested that this Panel transfer the Domain Names to Complainant.
Complainant also submitted an unsolicited supplemental filing, which this Panel declines to admit for the reasons discussed below in Part 6.A.
In the Response, Respondent addresses each of Complainant’s arguments. First, Respondent does not challenge Complainant’s rights to the MONTAGE mark, but argued that since “montage” is a word used in English and Kapalua Bay is scenic, the words together could have a meaning in the Domain Names without referring to Complainant’s business. Second, Respondent asserted that before notification of this dispute he had begun preparations to use the Domain Names to display photography or art and that he would not use the Domain Names for commercial gain in the hospitality industry. Third, Respondent argued that he did not register and is not using the Domain Names in bad faith, because he had no knowledge of the MONTAGE mark, was not required to respond to Complainant’s communications, did not direct the Registrar to host advertisements, did not contact Complainant or any competitor of Complainant, did not register the Domain Names to interfere with Complainant’s business or for commercial gain, and is not a cybersquatter but rather “an accumulator of virtual real estate.”
For the foregoing reasons, Respondent requested that this Panel deny Complainant’s request to transfer the Domain Names.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Under paragraph 4(a) of the Policy, Complainant is entitled to transfer if it can prove that (1) the Domain Names are identical or confusingly similar to a mark in which Complainant has rights, (2) Respondent has no rights to or legitimate interests in the Domain Names, and (3) Respondent has registered and is using the Domain Names in bad faith. Complainant must satisfy its burden by a preponderance of the evidence, which means that in light of the evidence, Complainant’s allegation must be on balance more likely than not. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847; see also paragraph 4.7, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Conclusory assertions of fact neither satisfy Complainant’s burden nor help Respondent to rebut Complainant’s case.
A. Admission of Complainant’s Supplemental Filing
Before turning to the merits of these proceedings, this Panel first decides not to admit Complainant’s supplemental filing. A supplemental filing is permitted under the Rules only at the Panel’s discretion. See Paragraphs 12 and 10(d) of the Rules. To secure the goals of ensuring procedural efficiency, treating all parties equally, and affording each party a fair opportunity to present its case, an unsolicited supplemental filing is only admissible upon a showing of exceptional circumstances. See Paragraph 10(b) of the Rules; paragraph 4.2, WIPO Overview 2.0; Lloyds TSB Bank PLC v. Daniel Carmel-Brown, WIPO Case No. D2008-1889 (declining to admit two supplemental filings since no “exceptional circumstances” existed); The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (“[A]dditional evidence or submissions should only be admitted in exceptional circumstances . . . .”). Complainant made no showing of exceptional circumstances. Rather, it merely asserted arguments that were or could have been in its Complaint. Thus, the Panel declines to admit Complainant’s supplemental filing.1
B. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the first element that Complainant must prove is that the Domain Names are identical or confusingly similar to a trademark in which Complainant has rights. Complainant demonstrated well-established rights in the MONTAGE mark. Complainant provided convincing evidence of numerous registrations of the MONTAGE mark in various countries around the world, including seven registrations in the United States, which give rise to a presumption of rights in the trademark. See paragraph 1.1, WIPO Overview 2.0. In addition, Complainant offered evidence of its efforts to promote the MONTAGE mark in connection with its services and of media recognition of Complainant’s services in association with the MONTAGE mark. Upon this evidence, the Panel concludes that Complainant has rights in the MONTAGE mark. Respondent provided no rebuttal to this conclusion.
The Domain Names are plainly not identical to Complainant’s MONTAGE mark, since they combine the mark with either “kapalua” or “kapaluabay” and add a top-level suffix (i.e. “.com”). Where, as here, the top-level suffix is not part of the trademark and is merely a technical requirement of registration of the domain names, this Panel may disregard it. See Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561; see also paragraph1.2, WIPO Overview 2.0. Complainant’s argument that the Domain Names are “virtually identical” is insufficient to satisfy the Policy’s identity requirement. Therefore, the dispositive question for this element is whether the Domain Names are confusingly similar to Complainant’s MONTAGE mark.
This Panel finds that the Domain Names are confusingly similar to Complainant’s MONTAGE mark. The Domain Names each begin with the MONTAGE mark. The addition of the geographic indicators does not dispel the confusion, as Respondent argued. Cf. paragraph 1.9, WIPO Overview 2.0, (noting that the addition of geographic wording to a mark does not generally avoid confusion). Rather, adding the geographic indicators conforms with Complainant’s domain naming practice of appending the location of its property interests to its MONTAGE mark. Furthermore, since Complainant had plans to conduct business around Kapalua Bay, the Domain Names imply a confusing association with Complainant’s services. Respondent failed to rebut Complainant’s evidence. Although one could imagine uses of the Domain Names that are unrelated to Complainant, as Respondent argued, those hypothetical uses do not prevent the confusion resulting from the similarity between the Domain Names and the MONTAGE mark. Therefore, this Panel concludes that the Domain Names are confusingly similar to Complainant’s MONTAGE mark.
C. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the second element that Complainant must prove is that Respondent has no rights to or legitimate interests in the Domain Names. Complainant bears the initial burden to make a prima facie case, after which Respondent then bears the burden to rebut that showing. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Under paragraph 4(c) of the Policy, Respondent may rebut Complainant’s prima facie case by proving one of the following circumstances:
(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services, or
(ii) Respondent has been commonly known by the Domain Names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant can make its prima facie case by negating all of these circumstances. See Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364.
Complainant satisfied its burden to make a prima facie case, which Respondent failed to rebut. First, Respondent is not using the Domain Names for any bona fide offering of goods or services or for any noncommercial or fair use. In fact, the Parties agreed that the Domain Names merely point to the Registrar’s default parked page containing automatically selected advertisements. Although Respondent may intend to make a noncommercial or fair use of the Domain Names—namely, to display photography or art—his bare allegations of that intent fail to rebut Complainant’s prima facie case.
Second, Respondent is not commonly known by the Domain Names. Respondent had no relationship with Complainant or its MONTAGE mark before registering the Domain Names on June 7, 2013. Respondent does not claim any relationship to Complainant or its mark. Rather, he appears to recognize that his only interest in the Domain Names is merely as a speculator in “virtual real estate.” While this is an interest in the Domain Names, it is not a legitimate interest sufficient to overcome Complainant’s interest in its MONTAGE mark in the circumstances of this case. Therefore, this Panel concludes that Respondent has no rights to or legitimate interests in the Domain Names.
D. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the third element that Complainant must prove is that Respondent registered and is using the Domain Names in bad faith. Under paragraph 4(b) of the Policy, Complainant may prove bad faith registration and use by establishing one of the following circumstances:
(i) Respondent registered or acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Names, or
(ii) Respondent registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Names, provided that Respondent engaged in a pattern of such conduct; or
(iii) Respondent registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, Respondent intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Several factors lead this Panel to conclude that Respondent registered the Domain Names in bad faith. The temporal proximity between the reporting of Complainant’s Kapalua Bay plans and Respondent’s registration of the Domain Names, along with the geographic proximity between Respondent and Kapalua Bay, together imply that Respondent registered the Domain Names to take advantage of Complainant’s activities on Maui. Similarly, the striking conformity of the Domain Names with Complainant’s standard domain naming practices strongly suggests that Respondent attempted to stand in the way of Complainant applying its MONTAGE mark to a domain name corresponding to its activities on Kapalua Bay. Furthermore, Respondent’s knowledge of the Policy and the ready availability of information regarding Complainant’s rights in its MONTAGE mark2 together suggest strongly that Respondent registered the Domain Names knowing that doing so violated the Policy. Finally, Respondent’s description of himself as “an accumulator of virtual real estate” undermines his bald assertions that he had a legitimate purpose for the website other than one that implicates the circumstances in paragraph 4(b) of the Policy. For these reasons, this Panel concludes that Respondent registered the Domain Names in bad faith.
This Panel also concludes that Respondent is using the Domain Names in bad faith. Respondent’s use of the Domain Names falls within paragraph 4(b)(iv) of the Policy. The Domain Names are confusingly similar to Complainant’s trademark and conform to Complainant’s typical domain naming pattern. See Part 6.B supra. Consumers seeking information about Complainant’s activities on Kapalua Bay will very likely be confused about the source and relevance of the Domain Names. The advertising links on the parked pages generate a commercial benefit, and the fact that the benefit may flow to the Registrar is immaterial. See Get Away Today.Com Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021; Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 (both finding that the commercial benefit need not flow to Respondent). Finally, the evidence of bad faith registration also gives rise to the strong inference that Respondent intentionally attempted to divert confused consumers. See paragraph 3.2, WIPO Overview 2.0(noting bad faith registration may suggest bad faith use, and vice versa). For these reasons, this Panel concludes that Respondent is using the Domain Names in bad faith.
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, this Panel orders that the Domain Names <montagekapaluabay.com> and <montagekapalua.com> be transferred to Complainant.
Michael A. Albert
Date: September 20, 2013
1 This Panel also notes that even if it did admit and consider Complainant’s supplemental filing, that decision would not alter this Panel’s ultimate conclusion to transfer the Domain Names.
2 Information regarding U.S. federal trademarks is available online at the U.S. Patent & Trademark Office website at “http://www.uspto.gov/trademarks/”. Click “Trademark Search” and then “Basic Word Mark Search.” Search for “montage.”