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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Marriott International Inc. and Marriott Worldwide Corporation v. Jacques Robitaille, Les Immeubles Jacques Robitaille Inc.

Case No. D2017-1646

1. The Parties

Complainants are Marriott International Inc. and Marriott Worldwide Corporation of Bethesda, Maryland, United States of America (the "Complainant"), represented by Kilpatrick Townsend & Stockton LLP, United States of America.

Respondent is Jacques Robitaille, Les Immeubles Jacques Robitaille Inc. of Quebec City, Quebec, Canada.

2. The Domain Names and Registrar

The disputed domain names <deltahotelquebec.com>, <hoteldeltaquebec.com>, <marriotthotelquebec.com>, <marriottquebec.com> (the "Domain Names") are 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 24, 2017. On August 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 25, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 21, 2017. The Response was filed with the Center on September 12, 2017. On September 28, 2017, Respondent sent a brief email communication to the Center.

The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on September 27, 2017. 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 largest providers of hotel, restaurant and hospitality services in the United States and in many other countries. Complainant's origins dates back to 1927 and it operates over 6,000 lodging, timeshare and residential properties in over 126 countries, including over 130 properties in Canada. Complainant operates under various brands including Marriott Hotels and Delta Hotels.

According to the evidence submitted by Complainant, Complainant has a large number of trademark registrations for MARRIOTT and DELTA HOTELS, including:

- the trademark MARRIOTT registered with the Canadian Intellectual Property Office (CIPO) under number 0341015 and a registration date of November 8, 1974;

- the trademark DELTA HOTELS registered with the Canadian Intellectual Property Office (CIPO) under number 0367336 and a registration date of July 19, 1974.

The Domain Names <deltahotelquebec.com>, <hoteldeltaquebec.com>, <marriotthotelquebec.com>, <marriottquebec.com> were registered on October 11, 2013. The Domain Names <marriotthotelquebec.com> and <marriottquebec.com> redirect to Respondent's website "www.hotelsjaro.com" where Internet users can make hotel reservation, and <deltahotelquebec.com> and <hoteldeltaquebec.com> resolve to parking websites displaying pay-per-click links.

The trademark registrations of Complainant were issued prior to the registration of the Domain Names.

5. Parties' Contentions

A. Complainant

Complainant submits that the Domain Names are confusingly similar to the trademarks of Complainant as they fully incorporate the MARRIOTT and DELTA HOTELS trademarks. The Domain Names <deltahotelquebec.com> and <hoteldeltaquebec.com> have only removed the letter "s" from the DELTA HOTELS mark. According to Complainant the mere addition of the geographic destination "Quebec" in the Domain Names is of no importance as it merely suggests that the Domain Names relate to the MARRIOTT and DELTA HOTELS in Quebec.

According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Names. There is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating the MARRIOTT and DELTA HOTELS trademarks of Complainant. According to Complainant, Respondent owns and operates a competing chain of hotel properties in Quebec, Canada under the name "Les Hotels Jaro" and operates a website at <hotelsjaro.com>. Complainant submits that Respondent has used the Domain Names to redirect web traffic to a page within Respondent's website at <hotelsjaro.com> in order to promote Respondent's Hôtel Palace Royal located in Quebec City and to gain bookings from consumers. Complainant asserts that the <deltahotelquebec.com> and <hoteldeltaquebec.com> Domain Names have also been used by Respondent to resolve to pay-per-click pages including numerous links to third party travel and hotel related websites and more recently to a generic parking page. According to Complainant, Respondent has failed to create a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the Domain Names.

Complainant submits that Respondent has registered and is using the Domain Names in bad faith. According to Complainant this is established by the fact that the Domain Names wholly and purposefully incorporate Complainant's well-known MARRIOTT and DELTA HOTELS trademarks for commercial gain and to profit from the resulting consumer confusion that the Domain Names are connected with or endorsed by Complainant. Complainant submits that there can be no doubt that Respondent was well aware of Complainant, its hotels and marks when registering the Domain Names especially as Respondent owns and operates competing hotels in some of the very same cities as Complainant, including in Quebec City.

B. Respondent

Respondent submits that the use of the Domain Names is not to mislead Internet users, as the Domain Names do not host websites linked to Marriott but only redirect to the website of Respondent in order to offer alternative hotels. Respondent states that the website to where the Domain Names are redirected does not contain any names, logos or other graphic items that are the properties of Complainant. According to Respondent, it agrees to remove redirects to its corporate website. Finally, if Complainant wishes to purchase the Domain Names for a reasonable price, Respondent agrees to sell them. As previously noted, Respondent submitted a brief email communication to the Center on September 28, 2017 that did not add any further substance to the dispute.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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".

Paragraph 4(a) of the Policy requires that the complainant proves each of the following three elements to obtain an order that the disputed domain name be transferred:

(i) the disputed 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 disputed domain name; and

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

The Panel is satisfied that the registrant of record for the Domain Names is Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied by Complainant in this proceeding.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first of all establish rights in a trademark or service mark and secondly that the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.

Complainant has established that it is the owner of multiple trademark registrations for MARRIOTT and DELTA HOTELS. The Domain Names <deltahotelquebec.com>, <hoteldeltaquebec.com>, <marriotthotelquebec.com>, <marriottquebec.com> incorporate the entirety of the MARRIOTT and DELTA HOTELS trademarks as its distinctive element. Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant's trademark where the disputed domain name incorporates a complainant's trademark in its entirety. The addition of the geographic term "Quebec" in all four Domain Names, the addition of the generic and descriptive word "hotel" in the Domain Name <marriotthotelquebec.com>, the deletion of the letter "s" in the Domain Names <deltahotelquebec.com> and <hoteldeltaquebec.com>, and the generic Top-Level Domain ("gTLD") ".com" are insufficient to avoid a finding of confusing similarity.

The Panel finds that Complainant has proven that the Domain Names are confusingly similar to Complainant's trademarks.

B. Rights or Legitimate Interests

In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Names. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Names incorporating its trademarks.

Based on the undisputed submission of Complainant all four Domain Names redirect or redirected at some point before this proceeding to the Hôtel Palace Royal website of Respondent, who is a direct competitor of Complainant. The Domain Names <deltahotelquebec.com> and <hoteldeltaquebec.com> resolve now to websites containing classic pay-per-click links including links to various online travel agencies and hotel price comparison sites, and to parking pages where the Domain Names <deltahotelquebec.com> and <hoteldeltaquebec.com> are offered for sale.

The Panel does not consider such use a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Names. The argument of Respondent that through the redirection to its own website it wants to offer alternative hotels is invalid as such redirection based on Complainant's trademarks as contained in the Domain Names is considered unfair use. In the view of the Panel it is irrelevant that the website to which the Domain Names redirect does not contain any names, logos or other graphic items that are the property of Complainant. In addition, the websites under the Domain Names do not accurately and prominently disclose the relationship between Respondent and Complainant as the holder of the well-known trademarks of Complainant, in particular as there has never been any business relationship between Complainant and Respondent. Respondent is also not commonly known by the Domain Names nor has it acquired any trademark or service mark rights.

Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.

C. Registered and Used in Bad Faith

The Panel finds that the Domain Names have been registered and are being used in bad faith. Noting the well-known status of the MARRIOTT and DELTA HOTELS marks and the overall circumstances of this case, the Panel finds it more likely than not that Respondent knew or should have known of Complainant's marks, especially as Respondent is also in the hotel business and as the hotels of Respondent are in the same country, in the same Quebec province of Canada and in the same Quebec City where many of the hotels of Complainant are also located.

The Panel notes that the Domain Names redirect or redirected to the competing website of Respondent, and that the Domain Names <deltahotelquebec.com> and <hoteldeltaquebec.com> resolve to websites displaying pay-per-click links including links to various online travel agencies and hotel price comparison sites and finally to parking websites where the Domain Names <deltahotelquebec.com> and <hoteldeltaquebec.com> are offered for sale.

These circumstances indicate that Respondent registered and is using the Domain Names primarily for the purpose of disrupting the business of Complainant as a competitor and with the intention to attract, for commercial gain, Internet users to the websites mentioned above, including the hotel website of Respondent, by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or of a service on its website, which constitutes registration and use in bad faith pursuant to paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.

In addition, bad faith registration and use is further indicated by the fact that Respondent in its Response offered the Domain Names for sale asking for a "reasonable price" which indicates that Respondent registered the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to Complainant (the owner of the trademarks) for valuable consideration in excess of documented out-of-pocket costs directly related to the Domain Names.

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 Names <deltahotelquebec.com>, <hoteldeltaquebec.com>, <marriotthotelquebec.com>, <marriottquebec.com> be transferred to Complainant.

Dinant T. L. Oosterbaan
Sole Panelist
Date: September 29, 2017

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