The Complainant is Montage Hotels & Resorts, LLC of Irvine, California, United States of America (“U.S.”), represented by Neal, Gerber & Eisenberg LLP, U.S.
The Respondent is Offshore Nation, LLC, of Miami, Florida, U.S.
The disputed domain names <montagebrickell.com> and <montageflorida.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2015 listing Offshore Nation, LLC of Miami, Florida, U.S., as the Respondent. On August 19, 2015, the Center transmitted a request for registrar verification in connection with the Domain Names to the Registrar by email. On August 20, 2015, the Registrar transmitted to the Center by email its verification response stating that the WhoIs record for the Domain Names indicates that Offshore Nation, LLC of Miami, Florida, U.S., is the Respondent.
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 August 25, 2015. In accordance with the Rules, paragraph 5(a), the due date for the Respondent to file a Response was September 14, 2015. The Respondent did not submit any response with respect to this proceeding. The Center notified the parties of the Respondent’s default on September 15, 2015.
The Center appointed Marylee Jenkins as the sole panelist in this matter on September 30, 2015. 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.
Based on the review of the uncontested evidence submitted with the Complaint, the Panel determines that the Complainant is the owner of U.S. Trademark Registration Nos. 2,801,152; 3,038,275; 3,325,069; 3,431,645; 3,453,107; 3,942,059; 4,061,056; and 4,591,496 for the mark MONTAGE; U.S. Trademark Registration Nos. 3,320,312; 3,424,205; 3,490,278; 3,593,059; and 4,288,790 for the stylized mark MONTAGE; and U.S. Trademark Registration No. 3,256,835 for the mark MONTAGE and Design covering goods and services in one or more international classes 04, 21, 29, 32, 33, 35, 36, 37, 39, 41, and 43 (individually and collectively the “Complainant’s Marks”). The Complainant also owns and operates websites accessible at the domain names <montagehotels.com>, <montagebeverlyhills.com>, and <montagedeervalley.com>.
The Domain Names <montagebrickell.com> and <montageflorida.com> were registered on May 15, 2015 and July 14, 2015, respectively. The Domain Names have directed to parked pages of the Registrar. There are currently no web pages accessible at the Domain Names.
The Complainant states that it maintains a collection of luxury hotels, resorts, and residences marketed under the MONTAGE brand. The Complainant further alleges that its properties have received awards and international recognition for their unique décor and aesthetic, which are customized to appear authentic and true to their surroundings at each location. The Complainant alleges that it has spent enormous time, effort, and resources promoting and marketing services under and in connection with the MONTAGE mark in the U.S. and abroad. Moreover, the Complainant alleges that its significant investment and continuous use of the Montage brand to advertise, market, and promote its services have engendered extensive goodwill and favorable consumer recognition of the Complainant’s Marks throughout the world. The Complainant states that it is the owner of all rights in and to the Complainant’s Marks. In addition, the Complainant has indicated that it has obtained over 90 trademark registrations for the MONTAGE mark worldwide.
The Complainant alleges that the Respondent registered the Domain Names well after the Complainant’s first use of the Complainant’s Marks. The Complainant further alleges that the Domain Names wholly incorporate the Complainant’s Marks and that the Respondent cannot defend against a finding of confusing similarity merely by adding geographically descriptive terms to the Domain Names, such as “Brickell” or “Florida,” or by adding a top-level domain (“.com”). The Complainant therefore alleges that the Respondent’s Domain Names are confusingly similar to the Complainant’s Marks in which the Complainant has rights.
The Complainant further alleges that the Respondent should be considered as having no rights or legitimate interests with respect to the Domain Names based on the Respondent not: (i) being commonly known by the Domain Names; (ii) having used or made demonstrable preparations for use the Domain Names; (iii) making legitimate non-commercial or fair use of the Domain Names, without intent for commercial gain; or (iv) acquired any trademark or service mark rights therein by a way of a license to use the Complainant’s Marks. Additionally, the Complainant has never authorized the Respondent to register or use the Domain Names or to manufacture or distribute goods or services for the Complainant. Thus, the Complainant alleges that there is no bona fide use of the Domain Names by the Respondent.
Additionally, the Complainant alleges that given the wide recognition of Complainant’s Marks and the fact that the Respondent’s Domain Names follow the Complainant’s customary domain naming convention, the Respondent must have had actual knowledge of the Complainant’s Marks and selected the Domain Names in order to intentionally trade on the Complainant’s Marks. Further, the Complainant alleges that the Respondent’s registration of multiple domain names comprised entirely of the Complainant’s Marks and a geographic designator, mimicking the Complainant’s customary naming convention, demonstrates a pattern of “preclusive registration” that evidences bad faith. The Complainant also alleges that the Respondent’s failure to respond to the Complainant’s repeated correspondence, and its registration of the <montageflorida.com> domain name after being put on notice of the Complainant’s Marks via such correspondence, demonstrates the Respondent’s bad faith. The Complainant has also indicated that the Respondent’s failure to host a website at either of the Domain Names, combined with the aforementioned allegations, should be interpreted as further evidence of bad faith.
No response was filed by the Respondent with respect to this proceeding.
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent's default as the Panel considers appropriate. Nevertheless, the Panel may rule in the Complainant's favor only after the Complainant has proven that the above elements are present.
Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in and to the Complainant’s Marks.
A review of each of the second-level domains of the Domain Names, respectively “montagebrickell” and “montageflorida”, shows that each comprises the Complainant’s Marks (i.e., the federally registered mark MONTAGE in its entirety) as a prefix and a geographically descriptive term (i.e., “Brickell” or “Florida”) as a suffix. The Panel concludes that the addition of such geographically descriptive terms with the Complainant’s Marks does not differentiate the Domain Names from the Complainant’s Marks. Furthermore, the Respondent’s uses of such geographically descriptive terms in the Domain Names suggest that the Respondent had knowledge of the Complainant's Marks and its domain name registrations and corresponding websites when the Respondent registered the Domain Names. The Panel therefore finds that the Domain Names are confusingly similar to the Complainant’s Marks and that paragraph 4(a)(i) has been satisfied.
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proven based on the evaluation of all of the evidence presented, can demonstrate the domain name holder's rights to or legitimate interests in a domain name. These circumstances include:
(i) before any notice to the holder of the dispute, the holder’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 holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder 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.
No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent was using or was making demonstrable preparations to use the Domain Names in connection with any type of bona fide offering of goods or services or that the Respondent has been commonly known, as an individual, business or otherwise, by either of the Domain Names. In addition, no evidence has been presented that the Respondent has ever asked for or been given permission by the Complainant to register or use any domain name incorporating the Complainant’s Marks in any fashion. Rather, the uncontested evidence shows that the Respondent is directing the Domain Names to parked web pages with each page stating “[l]earn how you can get this domain.” Such does not in the circumstances of the present case create rights or legitimate interests in the Domain Names on the part of the Respondent.
The uncontested evidence further shows that the Complainant had well established rights to the Complainant’s Marks at the time of the Respondent’s registration of the Domain Names and that the Respondent nevertheless registered the Domain Names. In view of the uncontested evidence, the Panel does not find any rights or legitimate interests in either of the Domain Names by the Respondent and therefore concludes that paragraph 4(a)(ii) of the Policy has been satisfied.
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the domain name holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor, or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the holder's website or location.
No evidence has been presented that the Respondent is commonly known by the Domain Names or that the Complainant has at any time assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Complainant’s Marks. Further, no evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Names in connection with any type of bona fide offering of goods or services. Rather, the Panel finds that the Respondent clearly had knowledge of the Complainant’s Marks when registering the Domain Names. This finding is supported by the uncontested evidence showing that the Domain Names were registered by the Respondent well after the Complainant’s significantly earlier dates of first use and first use in commerce of the Complainant’s Marks. The Respondent’s registrations of the Domain Names, comprising the Complainant’s Marks along with geographical descriptive terms, in a similar format to the Complainant’s existing domain names, provide further evidence of the Respondent’s actual knowledge of the Complainant’s Marks.
The Complainant has further asserted that the Respondent acquired the Domain Names in bad faith primarily for the purpose of diverting Internet users looking for the Complainant to the Respondent’s sites for its own commercial benefit. The Complainant alleges and has submitted uncontested evidence showing that the Domain Names direct to parked web pages with language on each page apparently offering the Domain Names for sale. Based on the submitted evidence, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its parked web pages so as to create a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation or endorsement thereof for apparent commercial benefit. The Panel therefore concludes that the Respondent has registered and is using the Domain Names in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Names <montagebrickell.com> and <montageflorida.com> be transferred to the Complainant.
Marylee Jenkins
Sole Panelist
Date: October 22, 2015