WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Montage Hotels & Resorts, LLC v. Robert McCarthy, McCarthy Law P.C.
Case No. D2021-0816
1. The Parties
Complainant is Montage Hotels & Resorts, LLC, United States of America (“United States” and “U.S.”), represented by Neal, Gerber & Eisenberg, United States.
Respondent is Robert McCarthy, McCarthy Law P.C., United States.
2. The Domain Names and Registrar
The disputed domain names <bigskymontage.com> and <bigskymontage.online> 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 March 19, 2021. On March 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 22, 2021, 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 March 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 15, 2021.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on April 21, 2021. 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 provides a variety of hospitality services in the United States and internationally under the MONTAGE trademark (“Montage Mark” or Complainant’s Mark”), including hotel, resort, residential condominium, spa, bar and restaurant services. Complainant owns approximately 100 national trademark registrations for its MONTAGE Mark in the United States and other jurisdictions, including U.S. registration numbers 3,942,059 and 3,325,069 (respectively registered on April 5, 2011, and October 30, 2007). Complainant also owns and operates multiple domain names incorporating the MONTAGE Mark, including <montage.com> and <montagehotels.com>. Complainant has garnered numerous high-profile industry awards including 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. Complainant announced publicly on September 17, 2018, that it would be opening a new ultra-luxury resort in Big Sky, Montana in 2021 that was going to be named Montage Big Sky. Complainant promoted its Montage Big Sky property through the website located at the <montagebigsky.com> domain name, which it registered on January 23, 2014.
Respondent registered the disputed domain names <bigskymontage.com> and <bigskymontage.online> on October 24, 2019, and August 6, 2020, respectively. The disputed domain names redirect users to a website located at <mccarthylaw.net>, where Respondent advertises its legal services. Complainant had previously instituted a UDRP proceeding against Respondent regarding three other domain names referencing Complainant’s Montage Big Sky property and obtained a decision in its favor on March 24, 2020. See Montage Hotels & Resorts LLC v. Robert McCarthy, McCarthy Law P.C., WIPO Case No. D2020-0385, (ordering transfer of <montagebigsky.club>, <montagebigsky.net>, and <montagebigsky.online>).
5. Parties’ Contentions
Complainant argues that the disputed domain names are similar to Complainant’s MONTAGE Mark because both identically and fully incorporate the MONTAGE trademark. Complainant argues that the addition of “big sky” within the disputed domain name does nothing to prevent a finding of confusing similarity under the first element because it is a geographically descriptive term relating to the location where Complainant is developing its Montage Big Sky property.
Complainant further argues that Respondent does not have any rights or legitimate interests in or to the disputed domain names. According to Complainant, Respondent cannot claim to be making any legitimate noncommercial or fair use of the disputed domain names because they fully incorporate Complainant’s Mark and merely redirect visitors to Respondent’s main website at <mccarthylaw.net>. Complainant further alleges that Respondent is not commonly known by the disputed domain names, is not associated or affiliated with Complainant in any way and was never licensed or authorized to use Complainant’s MONTAGE Mark.
Lastly, Complainant alleges that Respondent registered and used the disputed domain names in bad faith. According to Complainant, Respondent must have had actual knowledge of Complainant’s rights in the MONTAGE Mark given its national notoriety, the existence of United States trademark registrations for the mark at the time the disputed domain names were registered, and the prior UDRP proceeding between Complainant and Respondent regarding other domain names containing Complainant’s MONTAGE mark. Lastly, Complainant argues that Respondent’s use of the disputed domain names to redirect traffic to his own commercial legal services website is further evidence of Respondent’s bad faith.
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name were identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the MONTAGE Mark through its United States registrations.
With Complainant’s rights in the MONTAGE Mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the Top-Level Domain (“TLD”) in which the domain names are registered) are identical or confusingly similar to Complainant’s MONTAGE Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” WIPO Overview 3.0, section 1.7. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive word or suffix. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795. As stated in section 1.8 of the WIPO Overview 3.0, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. See Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.
Here, Complainant’s MONTAGE Mark is fully incorporated in the disputed domain names, and the addition of the descriptive or geographical term “Big Sky” in both disputed domain names does not prevent a finding of confusing similarity. See Merck KgaA v. Registrant : Chen Yan Hua, WIPO Case No. D2011-1010; see also Montage Hotels & Resorts LLC v. Robert McCarthy, McCarthy Law P.C., supra. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain names are confusingly similar to Complainant’s MONTAGE Mark.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of production of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the domain name:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, Respondent has not submitted any arguments or evidence to rebut the Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the MONTAGE Mark in any way. Respondent is also not using the disputed domain names in connection with any bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the disputed domain names. The disputed domain names have no other purpose than redirecting users to Respondent’s own legal services website. This is clear indicia of cybersquatting intent, which categorically cannot be considered as a bona fide offering of goods and services. WIPO Overview 3.0, section 2.2. Lastly, there is no evidence suggesting that Respondent is commonly known by the disputed domain names.
Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain names within the meaning of Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b)(ii) of the Policy indicates that bad faith use and registration can be found if a respondent is shown to have registered the domain in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct.
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found when, by using a disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
Among the circumstances panels take into account when assessing whether the respondent’s registration of a domain name is in bad faith are:
(i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant’s area of activity or natural zone of expansion),
(ii) the content of any website to which the domain name directs, including any changes in such content and the timing thereof,
(iii) the clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name, and
(iv) other indicia generally suggesting that the respondent had somehow targeted the complainant. WIPO Overview 3.0, section 3.2.1.
In this case, bad faith can be found in the registration and use of the disputed domain names. Complainant provided ample evidence to show the widespread use and numerous registrations of the MONTAGE Mark that long predate Respondent’s registration of the disputed domain names, as well as Respondent’s prior registrations of domain names relating to Complainant’s Mark. Therefore, Respondent was clearly aware of the MONTAGE trademark when it registered the disputed domain names, or knew or should have known that they were identical or confusingly similar to Complainant’s Mark. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.
Furthermore, Respondent has also engaged in a pattern of registering and using domain names targeting Complainant’s Mark, as found in prior UDRP proceedings against Respondent, which is further evidence of bad faith use and registration of the disputed domain names under Policy, paragraph 4(b)(ii). UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. WIPO Overview 3.0, section 3.1.2. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names. Id. Respondent was already required to transfer multiple domain names incorporating Complainant’s Mark and the geographically descriptive term “Big Sky” in a previous UDRP proceeding. See Montage Hotels & Resorts LLC v. Robert McCarthy, McCarthy Law P.C., supra. Therefore, Respondent’s registration and use of the disputed domain names here is clear evidence that Respondent is engaging in a pattern of registering and using domain names targeting Complainant’s Mark. Lastly, Respondent’s use of the disputed domain names to redirect traffic to its own commercial legal services website is further evidence of Respondent’s bad faith use and registration of the disputed domain names. See Wal-Mart Stores, Inc. v. Steve Powers, WIPO Case No. D2003-1051(finding use and registration of the disputed domain name was in bad faith where the disputed domain name was used primarily for the purpose of diverting traffic meant for complainant’s website to the respondent’s website).
For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain names was in bad faith, pursuant to paragraphs 4(b)(ii) and 4(b)(iv) 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 disputed domain names, <bigskymontage.com> and <bigskymontage.online> be transferred to Complainant.
Brian J. Winterfeldt
Date: April 30, 2021