WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Montage Hotels & Resorts, LLC v. Whois Privacy Services Pty Ltd. / Lisa Katz, Domain Protection LLC
Case No. D2016-0898
1. The Parties
Complainant is Montage Hotels & Resorts, LLC of Irvine, California, United States of America (“United States”), represented by Neal, Gerber & Eisenberg LLP, United States of America.
Respondent is Whois Privacy Services Pty Ltd. of Fortitude Valley, Queensland, Australia / Lisa Katz, Domain Protection LLC of Dallas, Texas, United States.
2. The Domain Name and Registrar
The disputed domain name <montagespa.com> is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2016. On May 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 6, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 10, 2016.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 2, 2016.
The Center appointed Martin Schwimmer as the sole panelist in this matter on June 9, 2016. 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 offers hotel and spa services under the trademarks MONTAGE, the first being registered on December 30, 2003 and SPA MONTAGE, the first being registered on September 13, 2005.
The disputed domain name was registered on January 30, 2005. The disputed domain name <montagespa.com>, has redirected to sites of competing hotel chains, and at other times, to a parking page.
5. Parties’ Contentions
Complainant has proffered numerous trademark and domain name registrations incorporating the MONTAGE and SPA MONTAGE trademarks (collectively, the “Trademarks”), covering hotel and spa services. It operates a website promoting such services at “www.montagehotels.com”.
Complainant contends that the disputed domain name is identical or confusingly similar to the MONTAGE and SPA MONTAGE Trademarks.
Complainant denies that Respondent has any license, permission, or authorization to use the Trademarks, it is not referred to or commonly known as “montagespa”, and has not make a bona fide offering of goods or services and, accordingly, that Respondent has any rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent has used the disputed domain name to link to websites promoting the services of competitors (such as “www.holidayinn.com”). Such use constitutes registration and use in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established rights in the MONTAGE and SPA MONTAGE trademarks. The Panel concludes that the disputed domain name is confusingly similar because the disputed domain name incorporates Complainant’s MONTAGE mark in its entirety, adding only a descriptive term for one category related to Complainant’s business “spa”, and the generic Top-Level Domain (“gTLD”) “.com”. Furthermore, the Panel holds that SPA MONTAGE is confusingly similarly to “montagespa” as the word order reversal does not change connotation in this instance.
Consequently, the Panel finds that Complainant has met the first element of the Policy
B. Rights or Legitimate Interests
The second ground to be demonstrated by Complainant, according to the provisions of the Policy, is Respondent’s absence of any rights or legitimate interests in the disputed domain name, per paragraph 4(a)(ii) of the Policy.
Previous UDRP panels have consistently held that it is sufficient for a complainant to prove a prima facie case that the respondent does not hold rights or legitimate interests in the domain name (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the disputed domain name.
The Panel is satisfied that Respondent has no connection or affiliation with Complainant and has not received any license or consent to use the Trademarks in a domain name or in any other manner. Complainant alleges that there is no such connection here. The Panel confirms that the disputed domain name resolves to pages that evidence no legitimate or fair use of Complainant’s Trademarks.
In addition, Respondent has not submitted any reply to Complainant’s contentions.
Therefore, in light of Complainant’s unrebutted prima facie case, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel notes that as Complainant has established that its MONTAGE and SPA MONTAGE trademarks are, as a result of extensive use and promotion, at a minimum, strong. It is beyond coincidence that Respondent would select <montagespa.com> without prior knowledge of Complainant’s use of its Trademarks.
Complainant documents its allegation that Respondent has in the past re-directed the disputed domain name to webpages promoting hotel services competitive to its own.
The Panel notes that it has attempted to visit Respondent’s website and has been re-directed to sites appearing to be the home pages of Complainant’s competitors such as “Holiday Inn” and “Intercontinental Hotels”. In other attempts by the Panel, the disputed domain name re-directed to pages displaying keyword ads promoting hotel spa services, presumably competitive with those of Complainant.
The Panel may make negative inferences based on Respondent’s failure to respond to Complainant’s contentions. Furthermore, the Panel notes that Respondent’s contact information in the WhoIs listing for the disputed domain name is erroneous, which also may support a negative inference.
It has long been generally held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark, without obvious legitimate purpose, will be deemed to be bad faith use pursuant to paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In this situation, where Respondent clearly had notice of Complainant’s strong mark prior to obtaining the disputed domain name, the Panel deems the re-direction to websites promoting third-party competitors to comprise bad faith use of a domain name. The re-direction to keyword ads comprises diversion of Internet traffic for Respondent’s improper benefit. Both usages support the Panel’s holding that the disputed domain name was 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 disputed domain name <montagespa.com> be transferred to Complainant.
Date: June 15, 2016