The Complainant is Montage Hotels & Resorts, LLC, United States of America (“United States”), represented by Neal, Gerber & Eisenberg LLP, United States.
The Respondent is Nanci Nette, United States.
The disputed domain name, <montagetempe.com> (the “Domain Name”), is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2020. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. 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, on November 24, 2020.
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 November 30, 2020. In accordance with the Rules, paragraph 5, the due date for the Response was December 20, 2020. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on December 24, 2020.
The Center appointed D. Brian King as the sole panelist in this matter on December 31, 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 Complainant is Montage Hotels & Resorts, LLC, incorporated in Nevada, United States and headquartered in California, United States. According to the Complaint, Montage owns a collection of luxury hotels and resorts. The Complainant’s brand is well known, as reflected by positive coverage in publications like the New York Times and USA Today (Exhibit 6 to the Complaint). The Complainant’s properties have won numerous hospitality industry awards, such as inclusion in Travel + Leisure’s World’s Best Awards and Condé Nast Traveler’s Top 100 Best in the World (Exhibit 6 to the Complaint).
The Respondent has not provided the Panel with any information on its history or activities.
The Complainant has traded under the MONTAGE mark for more than a decade. In that time, it has registered the trademark in a large number of jurisdictions. To date, the Complainant has registered the MONTAGE trademark over 100 times (Exhibit 7 to the Complaint). These registrations include the following:
Trademark | Jurisdiction | Registration Number | Registration Date |
|
MONTAGE |
United States |
3325069 |
October 30, 2007 |
|
MONTAGE |
United Kingdom |
2468998 |
March 07, 2008 |
|
MONTAGE |
Brazil |
829289330 |
December 22, 2009 |
|
MONTAGE |
China |
7840015 |
June 07, 2011 |
|
MONTAGE |
Russian Federation |
462596 |
May 23, 2012 |
|
MONTAGE |
European Union |
011539012 |
August 01, 2013 |
|
MONTAGE |
Mexico |
1377919 |
June 25, 2013 |
|
MONTAGE |
Canada |
TMA865088 |
November 15, 2013 |
The Complainant uses several websites that incorporate the MONTAGE mark in connection with its business, including <montage.com> and <montagehotels.com> (Exhibit 8 to the Complaint). The Complainant also owns several domain names that combine the location of a Montage hotel or resort with the MONTAGE mark, such as <montagedeervalley.com> and <montagelagunabeach.com>.
The Domain Name, was registered on May 17, 2016. The Domain Name resolves to a website featuring pay-per-click real estate advertisements (Exhibit 10 to the Complaint).
The Complainant submits that the Domain Name is confusingly similar to its registered MONTAGE trademark. It notes that the Domain Name fully incorporates the MONTAGE mark with the addition of the geographic term “tempe” (being a city in Arizona, United States). The addition of the “.com” generic Top-Level Domain (“gTLD”), the Complainant submits, does not sufficiently distinguish the Domain Name from the Complainant’s widely recognized, registered trademark.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant represents that it has not authorized the Respondent to use the MONTAGE mark in any way, nor is the Respondent commonly known by a name corresponding to the Domain Name. Further, alleges the Complainant, it can be inferred from the international renown of the MONTAGE mark that the Respondent would not have registered the Domain Name unless the Respondent was seeking to trade off the Complainant’s goodwill — which does not constitute a bona fide interest in the Domain Name.
Finally, the Complainant submits that the Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent must have had at least constructive knowledge of the Complainant’s rights in the MONTAGE mark when registering the Domain Name, due to the repute of the MONTAGE brand and the Complainant’s multiple prior registrations of the trademark in the United States (the Respondent’s home jurisdiction) and elsewhere. It is further alleged that the Respondent’s failure to assert a legitimate interest in the Domain Name upon receipt of cease-and-desist letters from the Complainant, and the Respondent’s use of the website to which the Domain Name resolves to profit from pay-per-click advertisements, constitutes evidence of bad faith registration and use. Lastly, the Complainant argues that the Respondent has engaged in a pattern of bad faith registration and use, as evidenced by citations to many prior WIPO UDRP cases in which domain names the Respondent registered were ordered transferred to the complainants.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent 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.
Paragraph 4(c) of the Policy sets out illustrative circumstances that could demonstrate a respondent’s rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) above.
Paragraph 4(b) of the Policy sets out illustrative circumstances that could demonstrate registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) above.
The Domain Name wholly incorporates the Complainant’s MONTAGE mark and appends to it the geographic term “tempe” and the gTLD “.com”. The addition of the gTLD does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.8 and 1.11. The addition of the geographical term “tempe” likewise fails to prevent a finding of confusing similarity between the Domain Name and the Complainant’s mark. Accordingly, the Panel has no difficulty in finding that the Domain Name is confusingly similar to the Complainant’s MONTAGE mark.
Many prior UDRP panels have found that a complainant only needs to establish a prima facie case in relation to the second element of the test under paragraph 4(a)(ii) of the Policy (see, e.g., Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205). Once a prima facie showing is made, the burden of production shifts to the Respondent to show that it does possess rights or legitimate interests in respect of the disputed domain name.
The present Panel agrees that the Complainant need only make out a prima facie case and finds that it has met that standard here. In the absence of any contrary evidence, the Panel accepts the Complainant’s representation that the Respondent has no connection to the Complainant and has not received permission to use the Complainant’s MONTAGE mark. The Panel also finds no indication that the Respondent is commonly known by a name corresponding to the Domain Name.
In these circumstances, the Complainant has made out a prima facie case that the Respondent lacks any rights or legitimate interests in the Domain Name. The Respondent has failed to provide any contrary evidence, despite having had the opportunity to do so. The Panel accordingly finds that the Complainant succeeds as to the second element of the test under paragraph 4(a) of the Policy.
The third element of the test under paragraph 4(a) requires proof that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out illustrative circumstances that constitute evidence of bad faith registration and use. The Panel finds that the circumstance set out in paragraph 4(b)(iv) of the Policy is present here.
The Panel has already found that above the Domain Name is confusingly similar to the Complainant’s mark. The addition of the geographical term “tempe” confirms the likelihood of confusion, because it mirrors the Complainant’s practice of combining its MONTAGE mark with the names of cities in which its properties are located when registering domain names. The Panel has also found that the Respondent must have had at least constructive knowledge of the Complainant’s rights in the mark when registering the Domain Name. Furthermore, the evidence shows that the Domain Name resolves to a website featuring pay-per-click advertisements, from which the Respondent apparently profits. In these circumstances, the Panel finds that the Respondent is attempting to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainants’ mark. It follows that the Respondent has registered and is using the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <montagetempe.com>, be transferred to the Complainant.
D. Brian King
Sole Panelist
Date: January 14, 2021