WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Montage Hotels Resorts, LLC v. Robert McCarthy, McCarthy Law P.C.
Case No. D2020-0385
1. The Parties
The Complainant is Montage Hotels & Resorts, LLC, United States of America (“United States”), represented by Neal, Gerber & Eisenberg, United States.
The Respondent is Robert McCarthy, McCarthy Law P.C., United States, self-represented.
2. The Domain Names and Registrar
The disputed domain names <montagebigsky.club>, <montagebigsky.net>, and <montagebigsky.online> (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 February 18, 2020. On February 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 20, 2020, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2020. The Response was filed with the Center on March 12, 2020.
The Center appointed Ellen B Shankman as the sole panelist in this matter on March 18, 2020. 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 Panel also finds that the consolidation into one proceeding in the circumstances of all of the Domain Names showing evidence of common control is justified, and to be determined by a single decision under the facts of this case to be fair and reasonable.
On March 23, 2020, the Complainant submitted a supplemental filing to the Center in reply to the Response.
4. Factual Background
The date of the Domain Names’ creation was confirmed by the Registrar to be October 24, 2019.
The trademark MONTAGE serves as a house-mark of the Complainant and is protected as a registered trademark in multiple jurisdictions world-wide.
The Complainant provided evidence of multiple trademark registrations for the mark MONTAGE including, inter alia, United States Registration No. 2801152, (registered on December 30, 2003), and United States Registration No. 3325069 (registered on October 30, 2007) for word marks that predate the date of the Domain Names registrations for a variety of first-class hotel and resort-related services related goods and services
The Panel also conducted an independent search to determine that the Domain Names are currently active and appear to be parking page’s with links to advertisements.
5. Parties’ Contentions
The Complainant alleges that the Montage brand identifies a collection of distinctive luxury hotels, resorts, and residences conveying a shared dedication to comfortable elegance. The architecture of each of the Montage-branded properties is authentic and true to its surroundings, and the décor is inspired by each resort’s respective setting. This uniqueness distinguishes the Montage brand and has resulted in international acclaim. In addition to the list provided of Montage-branded properties, the Complainant will soon be opening a Montage resort in Big Sky, Montana. The Montage Big Sky property’s modern mountain design is designed to meet the welcoming atmosphere of a classic mountain ski lodge and will feature sweeping alpine vistas and vaulted ceilings accented by a timeless palette of regional woods and stones. The Montage Big Sky property will offer a year-round mountain paradise for luxury adventurers and outdoor enthusiasts alike. The Complainant has invested enormous time, effort, and resources in promoting and marketing the Services under and in connection with the MONTAGE Marks. As a result of this extensive use and promotion of the MONTAGE Marks in connection with the provision of the Services, the MONTAGE Marks have developed considerable consumer recognition and have become known and recognized by travelers all over the world as identifying and distinguishing the Montage brand and the Services. Given its positioning in the marketplace, the integrity of the MONTAGE Marks is extremely valuable to the Complainant, and is crucial to the continued vitality and growth of its business.
The Montage-branded services have garnered tremendous media attention and critical acclaim in international publications such as the New York Times, USA Today, the Los Angeles Times, Condé Nast Traveler, and Travel + Leisure. In addition, the Montage-branded properties and services have garnered numerous high-profile and coveted industry awards, including without limitation, inclusion in Travel + Leisure’s World’s Best Awards, Condé Nast Traveler’s Top 100 Best in the World, TripAdvisor’s Top 25 Luxury Hotels in the United States, and the Forbes Five Star Award.
To further protect its MONTAGE Marks, the Complainant has obtained approximately 100 trademark registrations for the MONTAGE Marks in jurisdictions around the world including, among others, the United States, Australia, the Bahamas, Canada, China, the European Union, Hong Kong, India, Japan, Mexico, New Zealand, the United Arab Emirates, and the United Kingdom. The MONTAGE Marks are further promoted through numerous websites maintained by the Complainant, including the websites maintained at “montage.com” and “montagehotels.com”.
The Complainant argues that the Respondent has registered and used the Domain Names in bad faith and with full knowledge of the MONTAGE Marks. Given the renown of the MONTAGE Marks, the recent buzz surrounding the Montage Big Sky property, and the Respondent’s proximity to the Montage Big Sky property, it is not plausible that the Respondent innocently registered the Domain Names without a design to exploit its similarity to the MONTAGE Marks.
In addition, the Respondent’s bad faith is evidenced by its failure to assert any legitimate interest in, or right to use, the Domain Names. Indeed, during the January 16, 2020 phone call with the Complainant’s counsel, the Respondent provided no evidence whatsoever of any actual or contemplated good faith use of the Domain Names. The Complainant also argues that the Respondent’s failure to host a website at the Domain Names is a further indicia of Respondent’s bad faith.
The Complaint argues that the Respondent cannot establish a right to, or legitimate interest in, the Domain Names. The Respondent has no legal relationship with the Complainant through which the Respondent can claim any rights to the Domain Names, nor has the Complainant consented to the Respondent’s registration of the Domain Names. Indeed, the Complainant has objected to the Respondent’s registration and use of the Domain Names. The Respondent also has no rights or legitimate interests in the Domain Names because the Respondent is not referred to or commonly known as Montage Big Sky, <montagebigsky.net>, <montagebigsky.online>, or <montagebigsky.club>. Nor does the Respondent have any trademark registrations for the term “montage”.
The Complaint asserts that the Respondent has not made, and is not making, a legitimate noncommercial or fair use of the Domain Names. To the contrary, the Respondent is passively holding the Domain Names. Particularly given the renown of the MONTAGE Marks in connection with the Services and the fact that the Respondent uses an actual and forthcoming Montage property location in the geographical area indicated in the Domain Names (i.e., “Big Sky”), it is clear that the Respondent would not have chosen the Domain Names unless the Respondent was seeking to intentionally trade on the Complainant’s MONTAGE Marks. Accordingly, the Respondent cannot establish a bona fide interest in the Domain Names.
The Complaint sets forth that on October 24, 2019, several years after the Complainant’s first use and adoption of the MONTAGE Marks, the Respondent registered the Domain Names. Not coincidentally, the Domain Names are comprised of the Complainant’s MONTAGE Marks plus the geographic term “Big Sky” that denotes one of the Complainant’s property locations. The Complainant believes that the Respondent registered the Domain Names in order to trade upon the significant goodwill and extensive promotional efforts associated with the MONTAGE Marks. In fact, the Complainant first attempted to resolve this matter amicably by contacting the Respondent on December 13, 2019, shortly after it first became aware of the Domain Names. The Complainant’s counsel sent a letter to the Respondent via email and Federal Express demanding that the Domain Names be transferred to Montage.
When the Respondent did not respond to the Complainant’s counsel’s December 13, 2019 letter, the Complainant’s counsel reached out to the Respondent via phone on January 16, 2020. During that call, the Respondent confirmed that he had received the Complainant’s counsel’s December 13, 2019 letter, and stated that he had no intention to respond. The Respondent further represented that he had registered the Domain Names on his own behalf, but would not disclose his planned use of the Domain Names. Later, on that same call, the Respondent changed his story, claiming that he had registered the Domain Names for a client. The Respondent said that the client would not disclose its alleged intended use of the Domain Names, but would be willing to sell them for a “reasonable price”, but for more than the costs involved to register the Domain Names. After the January 16, 2020 call with the Respondent, the Complainant’s counsel followed up with the Respondent via email on January 22, 2020, to confirm the substance of the call, and to further inquire about transfer of the Domain Names. The Respondent replied on January 22, 2020, stating that his alleged client now refused to transfer the Domain Names. The Complainant states that as a result of the parties’ impasse, the Complainant has had no choice but to initiate this proceeding against the Respondent to protect the valuable MONTAGE Marks from the Respondent’s attempt to trade upon the goodwill, consumer recognition, and extensive promotion associated therewith.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark MONTAGE, in respect of a hotel and services. The Domain Names are confusingly similar to the trademark owned by the Complainant. The addition of the terms “blue sky” to the term “montage” as well as the generic Top-Level Domains (“gTLDs”) “.net”, “.club”, and “.online” does not prevent a finding of confusing similarity. Therefore, the Domain Names could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Domain Names were registered and are being used in bad faith. That continued use of the Domain Names would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent’s registrations and use of the Domain Names constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Names.
The Respondent affirmatively disputes the Complaint, claiming that the Complainant has failed to show that the “domain name[s] [are] being used in any manner whatsoever, much less in ‘bad faith’. There is no use of the domain name[s] currently”. The Respondent further argues that:
“The Respondent had not, in fact, taken any steps to establish a website at the time that he was contacted by [Complainant’s] counsel and advised [Complainant’s] counsel so at the time that [Complainant’s counsel] contacted him. The Respondent had no intent to use the domain name in bad faith and demonstrated there was no such intent by not immediately establishing a site. The Respondent also had no obligation to discuss his intentions for the site with Complainant's counsel or to provide any explanation as to the intended use. The Respondent is a lifelong Montana resident that read reports of the massive construction of an elite resort area miles away from his homes in Butte, Montana and Ennis, Montana with horror and fear and wanted to do something to organize a community response. Searching for an appropriate domain to host the site an obvious domain was found to be available and the Respondent procured it. Despite loftier intentions and aspirations the website was not immediately established. The intent for the site was part of a plan that did not immediately occur but the domain was secured with the intent to provide a public forum not a commercial website. The Respondent is fully aware of the free speech protections guaranteed by the U.S. and Montana constitutions. The expected press release following this action is also now an intended purpose of obtaining these domains given the challenge to free speech that the Complainant poses by this action. The Respondent’s call to action is to fully inform the residents of the state of Montana of what is coming if they don’t organize and act. The Respondent hopes to bring further attention to the environmental and economic impacts of the Complainant’s construction plans in the state of Montana. The Respondent fully intends a free speech use of the domain name so that the public can be fully informed of what is being planned in the State of Montana by the Complainant. The Respondent will invite the Complainant to provide its fulls plans and studies to be published on the domain. The Respondent believes that the Complainant is through its construction plans going to destroy both human and animal habitat, cause extreme overuse and overt destruction and decimation of pristine areas of public lands and waterways and ultimately provide only substandard wages to working poor in non-union workplaces where they will reduced to relative serfdom working for the abundantly wealthy and notoriously rude and obnoxious non-resident millionaires and billionaires that contribute nothing productive or valuable to the State of Montana. The free speech use of the domain was reinforced after the Respondent spoke to counsel for the Complainant and was vividly reminded of the demeanor and class of people that the Montage will likely bring to the State of Montana. The need for active public comment and participation, and legislative intervention was vividly brought to the forefront by the brief interactions with [Complainant’s counsel]. The Respondent is a Montana resident that is personally vehemently opposed to the further unrestricted and narrowly considered development of the area in which the Complainant has announced plans to develop a huge commercial resort property. The Respondent is opposed to the Complainant’s impact upon the State of Montana, the local communities and the environment. The Respondent is also opposed to the Complainant on the basis of reports of being a low paying employer. The Respondent fears the the consequences upon the natural and wild resources of Montana by the planned development and presence of wealthy Montage clients that have no history in the State and that are unlikely to share the common regard of Montana residents for the preservation and betterment or our State.”
The Respondent argues that the Complaint must fail because he has not used the Domain Names, and that the Complainant’s actions are an attempt to exercise a restraint on free speech. The Respondent affirmatively raises the defenses of “free speech” and “fair sue” to use the website as a social forum and “complaint” site. The Respondent further asserts that no prudent Internet user would be confused as to the source or sponsorship of the website as there simply is no website that is in place at this time. The Respondent denies that Complainant owns the exclusive use of the common word “montage”, or that its alleged MONTAGE Marks prevent the use of the common word with other common words. The Respondent requests that request to transfer the Domain Names be denied.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(iii) that the Domain Name has been registered and used in bad faith.
A. Supplemental Filing
Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding “with due expedition”. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6. The Panel notes that it is able to decide the present proceeding based on the information already presented. Accordingly, the Panel will not consider the Complainant’s supplemental filing.
B. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for MONTAGE. The Panel rejects the Respondent’s contention that the Complainant cannot have rights in a “common word”.
The Panel finds that the Domain Names are confusingly similar to the Complainant’s trademark. Further, the Panel finds that the addition of the terms “blue sky” and the three gTLDs to the Domain Names does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Names and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating, “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark”.
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Names are identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Names <montagebigsky.club>, <montagebigsky.net>, and <montagebigsky.online> and that they are not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. Indeed, the Complainant has objected to the Respondent’s registration and use of the Domain Names. The Respondent has not made, and is not making, a legitimate noncommercial or fair use of the Domain Names. To the contrary, the Respondent is passively holding the Domain Names.
Based on the available record, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names.
The Respondent refutes this. The Respondent argues that his “free speech” rights give him legitimate interests in the Domain Names. The Panel in this case does not find the Respondent’s arguments persuasive.
The Panel recognizes that there may be situations where the registration and use of a domain name that specifically refers to and incorporates the trademark of another entity may serve legitimate purposes. However, the Panel finds that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to the trademark. See WIPO Overview 3.0, section 2.6.2. In this case, even if the Domain Names were used in relation to genuine noncommercial free speech – which they are not – the choice of the addition of the terms “blue sky” rather than any term that might indicate criticism (e.g., the “sucks” cases), the Panel finds that this creates an impermissible risk of user confusion through impersonation and does not grant the Respondent legitimate rights in the Domain Names.
In any event, the Respondent is actually not “using” the Domain Names and he has provided no evidence of hisintention is to use the Domain Names for a future criticism website.
Particularly given the renown of the MONTAGE Marks in connection with the Services and the fact that the Respondent uses an actual and forthcoming Montage property location in the Domain Names, it is clear that the Respondent would not have chosen the Domain Names unless the Respondent was seeking to intentionally trade on the MONTAGE Marks. See Drexel University v. David Brouda, WIPO Case No. D2001-0067 (“rights or legitimate interest cannot be created where the user of the domain names at issue would not choose such a name unless he was seeking to create an impression of association with the complainant.”).
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Names, under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
It is clear from the Respondent’s own statements that he registered the Domain Names with the full knowledge of the Complainant’s marks and the Montage Big Sky property and the Respondent’s proximity to that property. The Panel agrees with the Complainant’s argument that it is not plausible that the Respondent innocently registered the Domain Names without a design to exploit its similarity to the MONTAGE Marks.
The two arguments of the Respondent that remain are that he is not actually “using” the Domain Names and that his intention is to use the Domain Names for a future criticism website.
With regard to the Respondent’s arguments, the Panel finds that the Respondent’s passive holding of the Domain Names does not prevent a finding of use in bad faith – and if anything, may be further indicia of the Respondent’s bad faith. See Advance Magazine Publishers, Inc. v. ChinaVogue.com, WIPO Case No. D2005-0615 (ordering transfer where complainant’s mark was strong, and respondent provided no evidence of any actual or contemplated good faith use of the passively-held domain name). Further, the Respondent provided no evidence to support his assertion of his future intent to use the Domain Names for free speech criticism.
In addition, even if that were the Respondent’s intention, rather than to merely disrupt the Complainant’s business, the Panel finds that the Respondent did not create any clear intention of criticism in the choice of Domain Names, and instead deliberately chose names that on their face could mislead users. That the websites resolved to “parking pages” that offered “pay-per-click” links without any other content undermines the plausibility of the Respondent’s claimed intentions.
Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Names with full knowledge of the Complainant’s trademark MONTAGE and uses it for the purpose of misleading and diverting Internet traffic.
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Names with apparent full knowledge of the Complainant’s rights, and the Respondent’s reply to the Complainant’s request for voluntary transfer of the Domain Names, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, under paragraph 4(a)(iii) of the Policy
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 <montagebigsky.club>, <montagebigsky.net>, and <montagebigsky.online> be transferred to the Complainant.
Ellen B Shankman
Date: March 24, 2020