Marriott International, Inc. and Marriott Worldwide Corporation v. Manpreet Badhwar
Claim Number: FA1712001762333
Complainant is Marriott International, Inc. and Marriott Worldwide Corporation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Manpreet Badhwar (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marriott.menu>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 11, 2017; the Forum received payment on December 15, 2017.
On Dec 13, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <marriott.menu> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@marriott.menu. Also on December 18, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 8, 2018.
On 01/03/2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luiz Edgard Montaury Pimenta as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the internationally famous “MARRIOTT” trademark via a number of trademark registrations worldwide, including its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Regs. Nos. 0899900 and 0904029, registered on September 29, 1970 and December 8, 1970, respectively).
Respondent’s <marriott.menu> domain name is effectively identical to Complainant’s marks as it incorporates the MARRIOTT mark entirely, while merely adding the “.menu” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <marriott.menu> domain name.
Respondent is not a licensee of Complainant, nor is it commonly known by the disputed domain name.
Respondent’s website currently resolves to a page showcasing automobiles, despite previously redirecting users to a Facebook.com page.
Also, Complainant shows evidence that Respondent owns at least 360 domain names, many of which copying numerous other well-known trademarks. Such being evidence of bad faith registration of the disputed domain name.
Nonetheless, at Complainant’s Attached Exhibit G and the past UDRP decision in Exhibit H are evidence of Respondent’s bad faith in (i) attempting to sell the domain name — demonstrating bad faith under Policy ¶ 4(a)(iii) —, and (ii) repeatedly registering domain names consisting of third party trademarks, in violation of their rights.
Respondent had prior knowledge of Complainant’s MARRIOTT mark.
B. Respondent
In response to Complainant’s allegations, Respondent requests the Panel to deny the remedy sought by Complainant, basically alleging that:
The Complaint is baseless and Complainant tried to “lure” Respondent into selling the disputed domain name, offer which was rejected by Respondent. A chain of e-mails was attached to the response, where Respondent states that the domain name “is not for sale”.
Also, Respondent claims that the documents attached by Complainant might have been gone through graphic changes by the use of special software.
Respondent requests that the Complaint be set as an example against ones that after having their offers to buy a domain name rejected, use the Forum to “get what they want”.
Respondent states that the disputed domain name is used to give free information about cars and has not relation to Complainant.
Complainant is one of the world's largest providers of hotel, restaurant and hospitality services in the United States and in many other countries. Complainant owns the MARRIOTT mark along with many others consisting of the “Marriott” expression via registrations with the United States Patent and Trademark Office (“USPTO”), the European Office for harmonization in the International Market (“OHIM”), the Government of India’s Trade Marks Registry, Intellectual Property India (“IPI”), as well as in many others countries. (e.g., USPTO Regs. Nos. 0899900 and 0904029, registered on September 29, 1970 and December 8, 1970; OHIM – Reg. No. 0144360, registered Oct. 15, 1998; IPI – 286503, registered Sep. 12, 1992).
Respondent registered the disputed domain name on March 31, 2014.
The trademark registrations of Complainant were issued prior to the registration of the disputed domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The Panel finds that both entities figuring as Complainants have enough rights and proven to have a sufficient nexus who can each claim to have rights to the disputed domain name, as they are parent companies. Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006) (holding that it is permissible for two complainants to submit a single complaint if they demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity).
Therefore, the Panel accepts to have both Marriott International, Inc. and Marriott Worldwide Corporation treated as a single entity in the proceeding, therefore being Complainant.
The Panel finds that the disputed domain name is effectively identical to Complainant’s mark as it incorporates its mark entirely, while merely adding the “.menu” gTLD, which only heightens the confusing similarity as the word “menu” is highly relevant to Complainant’s business.
Therefore, this Panel fins confusing similarity between the disputed domain name and Complainant’s mark under Policy ¶ 4(a)(i).
It is well established that Complainant must first make a prima facie that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to Respondent to show that it does have rights or legitimate interests in a domain name).
In the present case, the Panel finds that Respondent is not a licensee of Complainant, nor is it commonly known by the disputed domain name. Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that Respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that Respondent was commonly known by that domain name, including the WHOIS information as well as Complainant’s assertion that it did not authorize or license Respondent’s use of its mark in a domain name).
The Panel also notes that, according to the evidence shown, Respondent does not operate a business under any trademark that could justify the registration of the disputed domain name. Besides, a WHOIS search confirmed that Respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that Respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
The WHOIS information identifies Respondent as “Manpreet Badhwar”, and no information or record indicates Respondent has been authorized to register a domain name incorporating Complainant’s mark. Also, a reverse WHOIS search shows that Respondent owns numerous other domain names incorporating a number of other well-known trademarks, reinforcing that Respondent has no legitimate rights or interests in the disputed domain name.
Additionally, the Panel verifies that Respondent does not make a bona fide offering of goods or services or for a legitimate noncommercial or fair use of the disputed domain name.
The Panel verifies that, initially, the disputed domain name redirected internet users to Respondent’s Facebook.com page, and now resolver to a static webpage displaying pictures of automobiles.
In the circumstances, this Panel concludes that Respondent has failed to discharge the onus of proof required to establish rights or legitimate interest in the disputed domain name.
The Panel also notes that Respondent participated in another UDRP procedure, in which Respondent owned another obviously infringing domain name. See DD IP Holder LLC v. Manpreet Badhwar , FA1405001562029 (Forum July 14, 2014) (finding that respondent had intentionally attempted to attract, for commercial gain, Internet users to his Facebook page, by taking predatory advantage of complainant’s goodwill by intercepting Internet traffic which would benefit Complainant).
Accordingly, the Panel finds that Complainant has succeeded in the second element, proving that Respondent has no rights or legitimate interests, under Policy ¶ 4(a)(ii), as it seems that Respondent registered the disputed domain name for the sole purpose of gaining commercial benefits with it.
The Panel notes that Respondent, although stating by e-mail that the disputed domain name is not for sale, has reached out to Complainant by phone offering the domain name for sale for an amount in excess of put-of-pocket costs, according to the evidences presented by Complainant. That alone can lead to a finding of bad faith under Policy ¶ 4(b)(i).
Furthermore, the Panel verifies that the fact that Respondent has registered many other infringing domain names and had figured as respondent in previous UDRP disputes established a pattern of bad faith according to the Policy. See Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Forum Apr. 6, 2001) (finding that where Respondent has registered over 50 domain names that correspond to different well-known trademarks, evidence of a pattern exists); see also Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that Respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).
Moreover, in light of the fame and notoriety of Complainant’s MARRIOTT mark, it is inconceivable that Respondent could have registered the disputed domain name without actual knowledge of Complainant’s rights in the mark. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting Respondent's contention that it did not register the disputed domain name in bad faith since the panel found that Respondent had knowledge of Complainant's rights in the UNIVISION mark when registering the disputed domain name).
Under these circumstances and based in the evidence in the record, the fact that the disputed domain name currently resolves to a webpage displaying automobile pictures is not enough to fend off a finding of bad faith, especially considering that Complainant holds trademark rights for marks consisting of the expression MARRIOTT in relation to car rental services.
That said, this Panel finds, for all the foregoing reasons, that the disputed domain name has been registered and used in bad faith, under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marriott.menu> domain name be TRANSFERRED from Respondent to Complainant.
Luiz Edgard Montaury Pimenta, Panelist
Dated: January 18, 2018
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