Marriott International, Inc. and Marriott Worldwide Corporation v. Milen Radumilo
Claim Number: FA2302002031948
Complainant is Marriott International, Inc. and Marriott Worldwide Corporation (“Complainant”), represented by Steven M. Levy, District of Columbia. Respondent is Milen Radumilo (“Respondent”), ro.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marriott-bonvoy.club>, registered with CommuniGal Communication Ltd..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to Forum electronically on February 15, 2023; Forum received payment on February 15, 2023.
On February 20, 2023, CommuniGal Communication Ltd. confirmed by e-mail to Forum that the <marriott-bonvoy.club> domain name is registered with CommuniGal Communication Ltd. and that Respondent is the current registrant of the name. CommuniGal Communication Ltd. has verified that Respondent is bound by the CommuniGal Communication Ltd. 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 February 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 2023 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-bonvoy.club. Also on February 21, 2023, 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.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On March 19, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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.”
There are two Complainants in this matter: Marriott International, Inc. and Marriott Worldwide Corporation.
The Complainant Marriott International, Inc. is the parent company of the Complainant Marriott Worldwide Corporation. Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated: “It has been accepted that it is permissible for two complainants to submit a single complaint if they can 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”.
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and will therefore hereafter – if not specifically noted otherwise – refer to them in singular as “the Complainant”.
A. Complainant
The Complainant is a well-known operator of hotels and resorts. Complainant has rights in the MARRIOTT BONVOY trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,148,202 registered September 8, 2020). Respondent’s <marriott-bonvoy.club> domain name is virtually identical and confusingly similar to Complainant’s trademark because it incorporates the MARRIOTT BONVOY trademark in its entirety and adds a hyphen and the “.club” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <marriott-bonvoy.club> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the MARRIOTT BONVOY trademark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a rotating series of websites, including Complainant’s own webpage, a webpage that offers pay-per-click third party links, and a webpage that attempts to distribute malware.
Respondent registered and uses the <marriott-bonvoy.club> domain name in bad faith. Respondent has engaged in a pattern of bad faith registration and use. Respondent registered the disputed domain name in order to disrupt Complainant’s business and divert customers for commercial gain. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the MARRIOTT BONVOY trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of a number of national and international trademark registrations around the world of the trademark MARRIOTT BONVOY, including but not limited to:
- U.S. national trademark registration No. 6,148,202 MARRIOTT BONVOY (word), registered September 8, 2020 in Intl. Classes 35, 36 and 43;
- U.S. national trademark registration No. 6,131,145 MARRIOTT BONVOY (fig), registered August 18, 2020 in Intl. Classes 35, 36 and 43; and
- European Union trade mark No. 017975947 MARRIOTT BONVOY (word), registered February 26, 2019 in Int. Classes 35, 36 an 43; and
The disputed domain name <marriott-bonvoy.club> was registered on May 27, 2022.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant asserts rights in the MARRIOTT BONVOY trademark based upon the registration of the trademark with the USPTO (e.g., Reg. No. 6,148,202 registered September 8, 2020), as well as EUIPO and other regional/national trademark authorities.
Registration of a trademark with the USPTO or EUIPO is sufficient to establish rights in a trademark per Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant has provided the Panel with copies of its registration for the trademark in a USA and the European Union. Therefore, the Panel find that Complainant has rights in the trademarks per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <marriott-bonvoy.club> domain name is identical or confusingly similar to Complainant’s MARRIOTT BONVOY trademark. The addition of a gTLD and extraneous punctuation fails to sufficiently distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See Novartis AG v. ruanhuanhuan, FA 1574397 (Forum Sept. 19, 2014) (finding that the <alcon.club> domain name is confusingly similar to the ALCON mark, as the addition of the top-level domain “.club” is not enough to defeat the identical nature of the disputed domain name pursuant to Policy ¶ 4(a)(i)); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Here, the disputed domain name contains the MARRIOTT BONVOY trademark in its entirety while adding in a hyphen and the “.club” gTLD. Therefore, the Panel find that the disputed domain name is indeed confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent lacks rights or legitimate interests in the <marriott-bonvoy.club> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the MARRIOTT BONVOY trademark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). In addition, a lack of authorization to use a complainant’s trademark may also indicate that a respondent is not commonly known by the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS information for the disputed domain name lists the registrant as “Milen Radumilo”. Complainant further asserts it has not licensed or otherwise authorized Respondent to use Complainant’s MARRIOTT BONVOY trademark. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name instead resolves to a series of rotating webpages:
a) some of which displaying links related to the goods and services associated with Complainant and its competitors. Where a respondent uses a domain to redirect users to competing services, it is a clear indication that the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant provides evidence of the disputed domain name resolving to a page displaying pay-per-click third party links.
b) including a webpage that attempts to distribute malware. Use of a disputed domain name to distribute malware is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Here, Complainant provides evidence of the disputed domain name resolving to a page that offers malicious software.
c) including redirecting internet users to Complainant’s own webpage. Where a respondent uses a domain to redirect users to a complainant’s own webpage, previous panels have found that the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). Here, Complainant provides evidence of the disputed domain name resolving to Complainant’s own website.
Based on the above, the Panel find that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and uses the <marriott-bonvoy.club> domain name in bad faith because Respondent previously engaged in bad faith registration of a domain name. Previous findings of bad faith registration of a domain name may be evidence of bad faith under Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Complainant asserts that Respondent has previously been involved in a number of adverse UDRP proceedings, and has exhibited a pattern of cybersquatting. See e.g. Abbott Laboratories v. Milen Radumilo, FA 1824865 (Forum Feb. 11, 2019) (“Respondent has been subject to a number of adverse decisions suggesting a pattern of conduct under Policy 4(b)(ii).”). Therefore, the Panel find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant argues that Respondent registered and uses the <marriott-bonvoy.club> domain name in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Use of a disputed domain name to redirect consumers to a series of rotating websites, including webpages that display pay-per-click third-party links and malware, is indeed evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Harry Winston, Inc. v. Domain Admin / Whois Privacy Corp., FA 1749276 (Forum, Oct, 18, 2017) (finding the respondent acted in bad faith by using “a technique known as FFDNS to divert internet users to a rotating series of webpages unrelated to or in competition with Complainant’s business, some of which attempt to install malware onto users’ computers.”); see also Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent uses pay-per-click hyperlinks on the resolving website, which redirects users to competing websites. The use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).”). As previously noted, Complainant provides evidence of the disputed domain name resolving to webpages displaying pay-per-click third party links and malware. Therefore, the Panel agree and find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii) or (iv).
Complainant argues that Respondent registered and uses the <marriott-bonvoy.club> domain name in bad faith because Respondent attempts to create a likelihood of confusion with Complainant’s well-known trademark and uses the disputed domain name to redirect internet users to Complainant’s own website. Use of a domain name that is confusingly similar to a well-known mark can be evidence of bad faith under Policy ¶ 4(a)(iii). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). In addition, redirecting internet users to a complainant’s own website is further evidence of bad faith per Policy ¶ 4(a)(iii). See MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding bad faith when "Respondent has been using the disputed domain name to link to the Complainant’s own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant."). Here, Complainant contends that Respondent registered the disputed domain name in order to take advantage of a likelihood of confusion with Complainant’s well-known trademark, and provides evidence of the disputed domain name resolving to Complainant’s own webpage. The Panel agrees with the Complainant’s conclusion, and find that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the MARRIOTT BONVOY trademark. Although constructive notice is normally not sufficient for a finding of bad faith, the Panel find that Respondent had actual knowledge of Complainant's trademark and rights and therefore find that Respondent registered the disputed domain name 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-bonvoy.club> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: March 30, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page