WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Marriott International, Inc., Marriott Worldwide Corporation v. Miss Hue a/k/a Hanh Nguyen
Case No. D2015-0526
1. The Parties
The Complainant is Marriott International, Inc., Marriott Worldwide Corporation of Bethesda, Maryland, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Miss Hue a/k/a Hanh Nguyen of Quan Hai Ba Trung, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <jwmarriott-hanoi.com> (the “Domain Name”) 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 March 25, 2015. On March 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 26, 2015, the Registrar 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 March 31, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 22, 2015. The Complainant filed an unsolicited Supplemental Filing on April 24, 2015.
The Center appointed Ian Lowe as the sole panelist in this matter on April 28, 2015. 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 Supplemental Filing by the Complainant exhibits an email from the Respondent to the Complainant dated April 22, 2015, the date when the Center notified the Respondent’s default to the Parties. In light of the contents of the email, as set out below, the Panel has admitted the Supplemental Filing in accordance with paragraph 10 of the Rules.
4. Factual Background
The Complainant comprises Marriott International, Inc and its subsidiary Marriott Worldwide Corporation. Although the UDRP does not expressly allow for joint complaints, it is now accepted practice for a parent and subsidiary company to file a joint complaint when they together own trademarks relevant to the complaint.
The Complainant was founded in 1927 and now operates, franchises and licenses a diversified portfolio of over 4,100 lodging, timeshare and residential properties in over 79 countries worldwide. It reported revenues in 2014 of nearly USD 14 billion.
The first Marriott hotel opened in 1957. There are now over 500 MARRIOTT hotels and resorts in nearly 60 countries around the world. The JW Marriott Hotels and Resorts brand is one of the Complainant’s luxury hotel brands. The first JW Marriott hotel opened in Washington, DC, United States in 1984 and since then the brand has grown to include 67 JW Marriott hotels and resorts in 26 countries, including in Hanoi, Viet Nam. The JW Marriott hotel in Hanoi opened in December 2013 following significant publicity both online and in print media, particularly in mid-October 2013.
The Complainant owns numerous trademark registrations around the world in respect of the word marks MARRIOTT and JW MARRIOTT including United States trademark number 3,639,551 JW MARRIOTT, registered on June 16, 2009, Community Trade Mark number 6041388 JW MARRIOTT, registered as of June 26, 2007 and Viet Nam trademark number 103765 JW MARRIOTT, registered as of June 20, 2007.
The Complainant is the owner of the domain name <jwmarriotthanoi.com> which redirects to its website at “www.marriott.com”.
The Domain Name was registered on November 19, 2013 shortly after the opening of the Complainant’s hotel in Hanoi was announced and publicized widely. At the time of the preparation of the Complaint, the Domain Name resolved to a website that purported to be linked to the Complainant’s hotel in Hanoi, which comprised photographs copied from the Complainant’s website of the JW Marriott hotel in Hanoi, but which also comprised links to a number of third-party websites including other hotels of competitors of the Complainant in Hanoi.
On October 9, 2014, when the Domain Name was registered in the name of “Miss Hahn”, Hahn Nguyen sent an e-mail to the Complainant offering to sell the Domain Name for USD 1,000 and stating that “if you do not pay attention this domain I may be sell them to other organization (some hotels, resort in Hanoi asking me for transfer)…”. Hahn Nguyen sent a similar email to the Complainant on April 22, 2015, as submitted by the Complainant in its Supplemental Filing, although the Domain Name is currently registered in the name of “Miss Hue”.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its MARRIOTT and JW MARRIOTT trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions. However, as indicated above, on April 22, 2015, the date when the Center notified the Parties of the Respondent’s default, the Respondent, in the name of Hahn Nguyen, sent an email to the Complainant stating:
“Hello, We ready to transfer jwmarriott-hanoi.com 400 usd… You should'nt sent to WIPO. we do not act any bad with your hotel… We seo website top 1 google and help you to expand your trademark… You prosecute us to WIPO…
What do you think when we transfer your domain to bad target or your rival?
Think more carefully!!!!”
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has undoubted, uncontested rights in the trademarks MARRIOTT and JW MARRIOTT both by virtue of its numerous trademark registrations around the world and as acquired through widespread use for many years. Ignoring the generic Top-Level Domain (“gTLD”) suffix “.com”, the Domain Name comprises the JW MARRIOTT mark together only with the geographic indicator “Hanoi”. In the view of the Panel, the geographic name does not detract from the distinctiveness of the JW MARRIOTT mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The website to which the Domain Name resolves purports to be associated with the Complainant’s JW Marriott hotel in Hanoi and the Complainant has made out a very strong prima facie case that the Respondent can have no rights or legitimate interests in respect of the Domain Name. The Panel cannot conceive of any legitimate reason why the Respondent should register the Domain Name. The Respondent has not filed any response and has failed to put forward any explanation for the registration or to counter the prima facie case put forward by the Complainant.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
In light of the emails dated October 9, 2014 and April 22, 2015, the Panel is satisfied that the current registrant “Miss Hue” is also known as “Hahn Nguyen”. The Respondent has twice offered to sell the Domain Name to the Complainant for significant sums well in excess of out-of-pocket expenses for registering the Domain Name. Furthermore, on both occasions, the Respondent has threatened to sell the Domain Name to a competitor of the Complainant. In view of the nature of the Domain Name and the use to which it has been put as described above, the Respondent clearly had the Complainant and its rights in the JW MARRIOTT mark in mind when it registered the Domain Name. The Panel considers that combined with the subsequent offers to sell the Domain Name to the Complainant this represents paradigm bad faith registration and use of the Domain Name for the purposes of the Policy. Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith.
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 <jwmarriott-hanoi.com> be transferred to the Complainant.
Date: May 10, 2015