WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Montage Hotels & Resorts, LLC v. Deborah Neal

Case No. D2019-2029

1. The Parties

Complainant is Montage Hotels & Resorts, LLC, United States of America (the “United States” or “U.S.”), represented by Neal, Gerber & Eisenberg, United States.

Respondent is Deborah Neal, United States.

2. The Domain Name and Registrar

The disputed domain name <montage-cabo.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2019. On August 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 23, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 29, 2019.

The Center verified that the Complaint together with the amended 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 August 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2019. Respondent sent a preliminary response to the Complaint on August 29, 2019. The Center notified the Commencement of Panel Appointment Process on September 23, 2019.

The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on October 10, 2019. 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 the owner of the trademark MONTAGE which is registered in jurisdictions around the world and which Complainant has used for many years in connection with the provision of first-class hotel and resort-related services.

Complainant is the owner of approximately 100 trademark registrations for the MONTAGE marks in jurisdictions around the world, including the following trademark registrations for the mark MONTAGE in the U.S. and Mexico: U.S. Trademark Registration Nos. 2801152, 3325069, 3942059, 3593059, 4288790, and 4822219, and Mexico Trademark Registration Nos. 1871170, 1839271, 902520, 903026 and 1843580.

Complainant’s MONTAGE-branded property in Laguna Beach, California is Complainant’s flagship luxury resort, and has received award-winning distinction. In addition to its Laguna Beach property, Complainant operates a MONTAGE branded property in Los Cabos, Cabo, Mexico. Complainant also operates MONTAGE-branded properties in other highly desirable locations including Beverly Hills (California), Big Sky (Montana), Deer Valley (Utah), Palmetto Bluff (South Carolina), and Kapalua Bay (Hawaii).

Complainant’s 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, Complainant’s MONTAGE-branded properties and services have garnered numerous high-profile industry awards.

Complainant’s mark and services are further promoted through numerous websites maintained by Complainant, including <montage.com> and <montagehotels.com>.

The disputed domain name was registered on April 8, 2019 and resolves to a website offering real estate services in Cabo, Mexico.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s MONTAGE trademark, that Respondent has no rights or legitimate interests in respect of the disputed domain name and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

Respondent sent a preliminary response to the Complaint on August 29, 2019 whereby it claims that it is “a broker in Los Cabos with one of the best office locations in all of Cabo …”.

Respondent contends that it “purchased this domain for the value in its backlinks and the Cabo portion of its domain name”. Respondent further claims, inter alia, that “Montage is a common everyday word, and not for a hotel brand or residences. This is not Coca Cola, Pepsi or Hilton, this is a common word without any ties because of geography or location that would make an ordinary person think of a hotel brand. …”

6. Discussion and Findings

In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and

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

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”.

A. Identical or Confusingly Similar

Complainant has demonstrated that it has strong rights in the trademark MONTAGE in connection with hotel and resort and related services. The disputed domain name incorporates Complainant’s mark in its entirety with the additional, geographic term “cabo”, which relates to the location of one of Complainant’s Montage resorts. The term “cabo” does not add any distinguishing feature.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no legal relationship with Complainant through which Respondent can claim any rights to the disputed domain name. Complainant has not consented to Respondent’s registration of the disputed domain name. Respondent is not referred to or commonly known by the disputed domain name and does not have any trademark registrations for the disputed domain name. Respondent has not made, and is not making, a legitimate noncommercial or fair use of the disputed domain name. Respondent has not used the disputed domain name in connection with the bona fide offering of goods or services. Respondent does not use the disputed domain name to host an active website¹ . Rather, the domain name automatically diverts to Respondent’s own website, where Respondent features real estate listings in and around Los Cabos, Mexico. This is the same location in which Complainant provides hotel, resort and real estate services under the mark MONTAGE.

The Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The record indicates that Complainant’s MONTAGE mark is widely-known. It is not plausible that Respondent innocently registered the disputed domain name without being aware of Complainant’s mark. Respondent’s awareness of Complainant’s mark can also be inferred from Respondent’s linking of the disputed domain name to a website offering real estate services similar to those of Complainant and in a location where Complaint owns and operates a well-known resort. In response to Complainant’s letters demanding transfer of the disputed domain name, Respondent indicated that in order for Respondent to take any action or transfer the disputed domain name, Complainant would need to pay $800 and that if Complainant did not immediately purchase the disputed domain name from Respondent, the price would further increase.

In an email to Complainant’s counsel dated May 29, 2019, Respondent stated:

“I will reiterate my offer to sell the domain for 800.00 USD, there is no marketing affiliated with said website nor keywords associated with the montage brand. The keywords are chanel and replica that are associated with said site. There is absolutely no value to my seo from montage being in name of site, the only value are the links already pointing to it.

If I have not had a response I will advise webmaster to continue with said site and further costs will be associated with site so this price will increase in future.”

In another email to Complainant’s counsel dated May 31, 2019, Respondent stated “…I will not be transferring name without compensation and will furthermore utilize existing links to montage-Cabo.com that have nothing to do with your brand for seo purposes in one week if not resolved…”.

Respondent has created a likelihood of confusion with Complainant and its trademarks by registering the disputed domain name that incorporates Complainant’s MONTAGE trademark, which demonstrates that Respondent is using the disputed domain name to confuse Internet users looking for Complainant’s services and to mislead Internet users as to the source, sponsorship, affiliation or endorsement of the disputed domain name.

There is no evidence in the record indicating a plausible good faith reason for Respondent to have registered or used the disputed domain name.

Accordingly, the Panel finds that Respondent has registered and used the disputed domain name in bad faith.

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 disputed domain name <montage-cabo.com> be transferred to Complainant.

Lynda J. Zadra-Symes
Sole Panelist
Date: October 24, 2019

¹ Regarding Respondent’s claim that “montage” is a dictionary term, the Panel refers to WIPO Overview 3.0, section 2.10 and decisions cited therein. The Panel notes that “montage-cabo” is not a dictionary term, and finds Respondent’s claim to be pretextual.