Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

DRS Number 04127

Parties: Marriott International, Inc. v Digi Real Estate Foundation

Decision of Independent Expert

1. Parties

Complainant: Marriott International Inc

Country: USA

Respondent: Digi Real Estate Foundation

Country: Panama

2. Domain Names

Marriottrewards.co.uk

Marriottcourtyard.co.uk

These domain names are referred to below as the "Domain Names".

3. Procedural Background

The Complaint was lodged with Nominet on 23 October 2006. Nominet validated the Complaint on 24 October and notified the Respondent on the same date. In this correspondence Nominet informed the Respondent that it had 15 working days within which to lodge a Response. The Respondent failed to respond. Nominet informed the Complainant that mediation was not possible in these circumstances. On 27 November 2006 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet Dispute Resolution Service Policy ("the Policy").

Sallie Spilsbury, the undersigned ("the Expert") has confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as Expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the Parties which might appear to call into question her independence and impartiality.

4. Outstanding Formal/Procedural Issues

Under Paragraph 5a of the Dispute Resolution Service Procedure ("the Procedure") the Respondent was required to submit a Response to the Complaint to Nominet by 15 November 2006. The Respondent failed to do so.

Paragraph 15b of the Procedure provides as follows:

If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or Procedure, the Expert will proceed to a Decision on the Complaint.

It is the view of the Expert that there are no exceptional circumstances relevant to this matter. The Expert's decision will be based on the Complaint and the Policy and Procedure.

5. The Facts

The Complainant

The following information about the Complainant is available from the Complaint and its annexes (and is not disputed by the Respondent).

The Complainant is a leading worldwide hospitality company. Corporate documents annexed to the Complaint (described as the "Marriott Fact Book") indicate that the Complainant began trading in 1927 and now has approximately 2,700 operating units in the US and 65 other countries and territories, including the UK. Hotels are operated and franchised under variations of the MARRIOTT mark, including:

Marriott Hotels and resorts

JW Marriott Hotels and resorts

Courtyard by Marriott

Fortune magazine recognised Marriott as one of America's most admired companies for the 6^th consecutive year in February 2005. In the fiscal year 2004 the Complainant reported sales from continuing operations of $10 billion and it had approximately 133,000 employees at year end 2004. MARRIOTT REWARDS was voted best hotel loyalty programme by readers of Global Traveller magazine in February 2005.

The Complainant began trading in the UK under the MARRIOTT mark in 1973. It launched its MARRIOTT REWARDS programme in the UK in 1998. This was the first multi-brand rewards programme for the hospitality industry. Membership gives the opportunity to earn points or airline miles. It is essentially a loyalty bonus type scheme.

The Complainant has built up a very substantial goodwill and reputation in the trade marks MARRIOTT and MARRIOTT REWARDS as a result of the use made of these marks in the United Kingdom since 1973 and 1998 respectively. Attached at Annex 3 to the Complaint are examples of current use of these marks in the United Kingdom and elsewhere in the world.

The COURTYARD mark was first used by the Complainant in the UK in 1992 when COURTYARD hotels were opened in Leamington Spa, Lincoln and Northampton. According to the Complainant's publicity documents annexed to the Complaint Courtyard was a concept that was created to meet the needs of business travellers "who required a high quality lodging experience along with the basic needs they valued most in a hotel" and that the concept is "redefining the moderate tier segment … enabling guests to enjoy a superior guest experience at a price point that provides good value for money". Examples, showing the way in which the trade mark COURTYARD has been used by the Complainant (combining the words MARRIOTT and COURTYARD) are attached at Annex 5 to the Complaint.

Substantial sums have been spent advertising and promoting MARRIOTT, MARRIOTT REWARDS and COURTYARD BY MARRIOTT in the United Kingdom including television, radio and print advertisements. Examples of marketing and publicity are attached at Annex 6 to the Complaint.

The complainant has a significant number of MARRIOTT REWARDS members who reside in the United Kingdom. Figures from 2002-2006 to date are as follows:

2002 – 518,784

2003 – 610,735

2004 – 730,851

2005 – 891,163

27-01-06 – 902,247

Copies of newsletters from 2005 that active MARRIOTT REWARDS members in the UK have received together with additional information relating to use of the MARRIOTT and COURTYARD brands worldwide are attached at Annex 7 to the Complaint.

Trade Mark Registrations

The Complaint asserts that the Complainant owns a number of UK and Community Trade Mark (CTM) registrations consisting of or including the MARRIOTT mark. Documents annexed to the Complaint provide details of these trade mark registrations. They indicate that the registrations are actually owned by Marriott Worldwide Corporation (rather than the Complaint Marriott International, Inc.). The addresses for the 2 Marriott companies are not the same (although both are in the US). The Expert can find no indication in the Complaint or within the voluminous corporate documentation annexed to it to explain the precise relationship between the Complainant and Marriott Worldwide Corporation. The statement in the Complaint that the registrations are owned by the Complainant appears to be incorrect. Whether this is simply a technical inaccuracy is not a matter that the Expert is in any position to clarify on the information before her.

The Expert does not find that the Complainant owns the trade mark registrations that are referred to in the Complaint. But the registrations are not without relevance. They give an indication of the range of marks featuring the MARRIOTT brand and in particular the use of the MARRIOTT REWARDS and the MARRIOTT COURTYARD marks.

The earliest of the UK marks consisting of the word only MARRIOTT mark were registered in 1973. A list of UK trade mark registrations is annexed to the Complaint (Annex 2) and includes the following registrations for the MARRIOTT mark:

1004290 registered in 1973 in class 29

1004291 registered in 1973 in class 30

1004292 registered in 1973 in class 31

1004293 registered in 1973 in class 32

The word only MARRIOTT REWARDS mark was registered in 1998 in classes 35 and 36.

The following UK registrations feature the word only COURTYARD mark:

COURTYARD-1485968 registered in 1991 in class 42

COURTYARD BY MARRIOTT- 1485972 registered in 1991 in class 42

COURTYARD CLUB- 1580241 registered in 1994 in class 42

Marriott Worldwide Corporation also owns community trade mark registrations consisting of or containing the word MARRIOTT (details are set out in Annex 2 to the Complaint). These include 2 registrations for the following figurative marks:

COURTYARD MARRIOTT (registered on 8 November 2005)

COURTYARD by MARRIOTT (registered on 16 December 1998)

There are no CTM registrations featuring the MARRIOTT REWARDS mark.

The Respondent

A Nominet WHOIS search shows that the Domain Names were registered by the Respondent on the following dates:

MARRIOTTREWARDS.CO.UK 14 July 2004

MARRIOTTCOURTYARD.CO.UK 17 October 2004.

The Registrant's status for each Domain Name is given as a non-UK corporation.

A printout provided by Nominet for each domain name shows that the Domain Names are both directed to the same generic website offering numerous services including "Cheap hotel" (sic) and airline tickets. The Expert confirmed that this remained the case on 16 December 2006. The site features a link to "Marriott" but when clicked on the user is taken to a list of providers offering accommodation in Marriott hotels rather than to an official Marriott website operated by or on behalf of the Complainant.

The Complaint draws the Expert's attention to a previous decision under the Policy against the Respondent (Dispute no. 2177 Robert Half International, Inc v Digi Real Estate Foundation). In that decision the Expert, Matthew Harris, observed at paragraph numbered 7.12 of his decision that;

"it would appear likely that the respondent is taking pains to conceal its true identity. The basis for this is that (i) the Respondent gives as its address a P.O. Box number in Panama, notwithstanding that the Respondent's website appears directed to persons in the UK, and (ii) the postal code provided appears to be incorrectly formatted for Panama and instead follows a format used in parts of the Holloway Road, North London, in the United Kingdom. In addition I note that Nominet's submission of the Complaint to the Postmaster at the Domain Name was met with a delivery failure report".

The Complainant in the current matter wrote to the Respondent at the UK address linked to the Respondent's postcode on 9 March 2005 seeking a transfer of the Domain Name. No response was received to this letter.

Without casting any doubt on Mr Harris' observations there is no evidence or independent verification before the Expert to permit a finding that the Respondent is deliberately seeking to conceal its identity by use of a false postcode. Mr Harris did not himself make an unequivocal finding on this point.

The Complaint also notes that further investigations (presumably by the Complainant) have revealed that the Respondent has also registered the following domain names with the .co.uk suffix (the typographical errors are accurately recorded):

crownplazahotel.co.uk,

crownplazahotels.co.uk,

chasemanhattan.co.uk,

nikefootwear.co.uk,

nikesport.co.uk,

bestwestern.co.uk,

travelodge.co.uk,

harrypotter.co.uk,

raddisson.co.uk,

hitlon.co.uk

holidatinn.co.uk,

ramadainn.co.uk,

polariod.co.uk,

swisshotel.co.uk,

voguemagazine.co.uk.

Details of the registrations are attached at Annex 11. 6 to the Complaint and have not been disputed by the Respondent. All of the above domain names were registered during 2004 (as were the Domain Names in this matter).

On 16 December 2006 the Expert carried out sample searches at the raddisson.co.uk and the swisshotel.co.uk domain names and noted that in each case she was directed to a very similar web host page as the page to which the Domain Names at issue in this decision are linked.

6. The Parties' Contentions

Complainant

Rights

The Complainant states that it has Rights in the MARRIOTT REWARDS and MARRIOTT COURTYARD marks because of its ownership of the trade marks referred to above and as a result of its very substantial goodwill and reputation in the marks MARRIOTT, MARRIOTT REWARDS and MARRIOTT COURTYARD. It also alleges that disregarding the generic co.uk suffix, the Domain Names are identical or virtually identical or confusingly similar to the Complainant's own name and trade marks.

Abusive Registration

The Complainant asserts that the Domain Names are Abusive Registrations in the hands of the Respondent for the following reasons.

1. It is clear that the names forming the Domain Names are names in which the Complainant has established a substantial goodwill and reputation over many years. The Complainant also has numerous trade mark registrations and has made substantial usage of the names in the United Kingdom. Based upon the above, and the other domain names registered by the Respondent, the Complainant believes that the Domain Names were registered primarily to stop the Complainant from registering them to reflect its trade mark rights. The Respondent has ignored the Complainant's request to take a transfer of the names [the Expert presumes that this is a reference to the letter to the Respondent dated 9 March 2005 to which reference is made in section 5 above].

2. The Respondent has established no legitimate business under the Domain Names. The websites for the Domain Names have pointed to web hosting pages. The registration of the Domain Names causes detriment to the Complainant by preventing it from establishing a legitimate website under the Domain Names in question to reflect its established business activities in the names MARRIOTT REWARDS, MARRIOTT and MARRIOTT COURTYARD in the United Kingdom.

3. The Respondent registered the Domain Names long after the complainant had established its rights in MARRIOTT, MARRIOTT REWARDS and COURTYARD BY MARRIOTT in the United Kingdom.

4. The existence of the Domain Names act as blocking registrations against the MARRIOTT name in which the Complainant has a legitimate and valid right and/or are designed to confuse internet users.

5. The Complainant contends that the registration and use of the Domain Names not only blocks the Complainant from registering the Domain Names but also takes an unfair advantage of the Complainant's rights and is unfairly detrimental to those rights. It is possible that an advantage is being made by way of a commercial gain accruing from the per click payments which would be driven by the attractive forces of the Complainant's reputation in the well known names MARRIOTT, MARRIOTT REWARDS and COURTYARD BY MARRIOTT. It is unfairly detrimental in that visitors who intended to visit the Complainant's website may be drawn instead to the websites linked from time to time with the Domain Names against which this Complaint is filed.

6. It may also be unfairly detrimental in that visitors who intended to visit the Complaint's website may be drawn instead to a competitor's site. For example, by clicking on some of the links on the homepages at the websites linked with the Domain Names it is possible to visit websites run directly by competitors of the Complainant.

7. Taking all the relevant circumstances and factors into account, the Complainant contends that the Respondent is involved in a pattern of abusive registrations of Domain Names which correspond to well known names and/or trade marks in which the Respondent has no apparent rights. The Domain Names have been registered and used by the Respondent in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant's rights and are therefore abusive registrations. In relation to the mis-spellings of a number of the domain names registered by the Respondent (e.g. raddisson.co.uk instead of radisson.co.uk) the Respondent asserts that this is an example of "typo squatting" a practice that takes unfair advantage of a customer's imperfect recollection of or mis-spelling of a brand name. This practice has been the subject of a number of earlier Nominet DRS decisions e.g. Yahoo! Inc v Simon Charles Smith (DRS 1770) and was also relevant to the earlier DRS decision involving the Respondent to which reference is made in section 5 above.

Respondent

The Respondent has made no submissions.

7. Discussion and Findings:

As an introductory point the Expert has kept in mind the earlier DRS decision of Matthew Harris involving the Respondent (DRS 2177 Robert Half International v Digi Real Estate Foundation) in making her findings. It is of course the case that the Policy does not follow a strict system of precedent. The findings of the Expert are therefore based on her own assessment of the matters raised by this Complaint.

General

Clause 2a of the Policy provides that a Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts according to the Procedure, that:

i the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

ii the Domain Name, in the hands of the Respondent, is an Abusive Registration.

The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities (clause 2b of the Policy). In the absence of any exceptional circumstances the Expert is also entitled to draw such inferences from the Respondent's non-compliance with the Policy or Procedure as she considers appropriate (paragraph 15c of the Procedure). There are no exceptional circumstances to justify the Respondent's failure to submit a Response and the Expert is accordingly able to draw such inferences as may be appropriate.

Complainant's Rights

Rights are defined in clause 1 of the Policy as including but not limited to "rights enforceable under English law.

The Complainant's Rights

For the reasons set out in section 5 above the Complainant has not proved to the Expert's satisfaction that it has ownership of or any rights to the trade mark registrations referred to in the Complaint and registered to Marriott Worldwide Corporation. At one level this finding may be criticised for being overly pedantic. But it is an important issue. Complainants are required under the Policy to make out a case on the balance of probabilities. It is important that experts ensure an equality of arms between parties if the Policy is to remain accessible and fair for all parties whatever their status and whether or not legally represented. If powerful corporations wish to assert trade mark rights against smaller, and often unrepresented, respondents it is important that the expert ensures that the rights that are asserted do exist and that the Complainant has the legal entitlement to enforce them. It is that last link that is missing from the submissions in this matter.

Nevertheless the Complainant's case is not limited to its trade mark registrations. It also relies on the substantial goodwill (or unregistered rights) generated by its UK trading activity under the MARRIOTT, MARRIOTT REWARDS and MARRIOTT COURTYARD marks. Unregistered rights can exist independently of trade mark registrations and they arise whenever a party can show that it has used marks in the course of trade such that the marks have become distinctive of, and associated with, that party.

The MARRIOTT mark is sufficiently well known to be a household name in connection with the hotel business. This is evidenced by the Complainant's global status and by the volume and extent of its advertising and marketing as evidenced by the annexes to the Complaint. The UK success of and publicity for the MARRIOTT REWARDS programme has also given rise to an independent goodwill generated by that composite mark as well as the goodwill associated with the MARRIOTT brand name per se. The same is true for the MARRIOTT COURTYARD mark. The Expert finds that there is substantial goodwill giving rise to unregistered rights in the MARRIOTT REWARDS and MARRIOTT COURTYARD marks and that these rights belong to the Complainant as the trading entity behind the MARRIOTT brand. These names are identical to the Domain Names (it being customary to disregard the suffix ".co.uk"). The first criterion of the Policy has accordingly been proved on the basis of unregistered rights.

Abusive Registration

Abusive Registration is defined in clause 1 of the Policy as follows:

A Domain Name which either:

i was registered or otherwise acquired in a manner, which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights [italics for emphasis],

OR

Ii has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.

A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is given in clause 3a of the Policy. They include the following:

i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A. for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;

B. as a blocking registration against a name or mark in which the Complainant has Rights; or

C. for the purpose of unfairly disrupting the business of the Complainant;

ii Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;

iii The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;

iv It is independently verified that the Respondent has given false contact details …….

The Polocy also provides at 3C that there shall be a presumption of Abusive Registration if the Complainant proves that the Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4 (c)).

In relation to 3a(iii), although there are suspicions about whether the Respondent has provided Nominet with correct contact details there is no independent verification of this point.

In relation to 3C the Expert has only been made aware of 1 earlier finding of Abusive Registration against the Respondent (DRS 2177) and as such no presumption of Abusive Registration arises under this provision.

Registration

There is no direct evidence before the Expert about the Respondent's motivations in registering the Domain Names. No offers to sell the name to the Complainant have been made. Accordingly the Expert does not find that the registration of the Domain Names was primarily motivated by a desire to sell the Domain Names for a profit, to block a registration by the Complainant or to unfairly disrupt the Complainant's business as required in clause 3a(i) of the Policy. The Respondent was undoubtedly motivated by a desire to profit from the use of the Domain Names in some way but that does not automatically equate to a finding that it was primarily influenced by a desire to unfairly disrupt the Complainant's business.

However it must be kept in mind that the Domain Names are not isolated instances. The Respondent has registered at least 15 other .co.uk domain names featuring recognisable versions of well known brands with which the Respondent has no apparent connection. This is clearly an example of a Respondent engaged in a pattern of registrations which correspond to well known names or trade marks in which the Respondent has no apparent rights. It makes no difference that not all of the Respondent's registrations is spelt correctly. The key issue is that the registrations are recognisable as marks connected to well known businesses to which the Respondent has no apparent connection. Although the Expert has not carried out checks against all of the domain names to which the Complainant has drawn her attention, she is satisfied that the 2 "spotchecks" that she did carry out against the raddisson and the swisshotel domain names establish that the Respondent is using each of these domain name registrations in a similar manner as part of a deliberate pattern of activity. The Domain Names that are the subject of this Complaint form part of that pattern.

It follows that the registration of the Domain Names in this matter amounts to Abusive Registrations.

Use

The Expert also finds that the manner in which the Domain Names have been used amounts to Abusive Registration.

She agrees with the Complainant's submission that visitors who intended to visit the Complainant's website may instead be drawn to a competitor's site through the web host pages connected to the Domain Names. They may then choose to book accommodation with that competitor to the Complainant's detriment. There is obviously nothing wrong with competition in the marketplace but this is an example of unfair competition arising from the Respondent's misleading use of the Complainant's MARRIOTT mark and associated trading reputation. The Expert also finds that on the balance of probabilities that a potential customer of the Complainant who visits the website to which the Domain Names direct them will believe that the Complainant is connected in some way with that site, for example that the Complainant has approved or sanctioned the use of its name. The Respondent is accordingly using the Domain Names to take unfair advantage of the goodwill and trading reputation generated by the Complainant's well known brands with a potential consequence of lost revenue for the Complainant. This conduct is clearly abusive on its own terms. When it is seen as part of a pattern of use alongside the Respondent's other registrations the finding of abuse is reinforced.

The Expert makes no finding in relation to the Complainant's submission about "per click" payments on the evidence before her.

8. Decision

The Expert finds that the Complainant has proved on the balance of probabilities that it owns Rights in respect of names or marks which are identical or similar to the Domain Names and that the Domain Names in the hands of the Respondent are Abusive Registrations.

Accordingly the Expert finds in favour of the Complainant and directs that the Domain Names are transferred to the Complainant.

Sallie Spilsbury

18 December 2006