DECISION
Marriott International, Inc. and Marriott Worldwide Corporation v. Shashank garg / Robust Lifestyle Pvt Ltd
Claim Number: FA2402002084666
PARTIES
Complainant is Marriott International, Inc. and Marriott Worldwide Corporation ("Complainant"), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is Shashank garg / Robust Lifestyle Pvt Ltd ("Respondent"), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bonvoyworld.com>, registered with GoDaddy.com, LLC.
PANEL
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.
The Honorable Neil Anthony Brown KC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on February 21, 2024; Forum received payment on February 21, 2024.
On February 21, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <bonvoyworld.com> 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 February 22, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 2024 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@bonvoyworld.com. Also on February 22, 2024, 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 14, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In this proceeding, there are two Complainants, Marriott International, Inc. and Marriott Worldwide Corporation. The latter is a wholly owned subsidiary of the former. UDRP Rule 3(a) and Forum's Supplemental Rule 1(e) govern situations involving multiple complainants. UDRP Rule 3(a) states, "Any person or entity may initiate an administrative proceeding by submitting a complaint." 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."
As just noted, there are two Complainants in this proceeding.
Previous panels have routinely interpreted 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. There are many prior decisions to that effect such as Guess? IP Holder L.P. and Guess?, Inc. v. Jerry Guess, FA 2002904 (Forum Aug. 23, 2022) ("While it appears that a single Complainant filed this proceeding, there are two Complainants in this matter: Guess? IP Holder L.P. and Guess?, Inc. Complainant argues that they have a sufficient nexus to both claim rights in the Trademark GUESS because Guess? IP Holder L.P. is effectively owned by Guess?, Inc. The Panel will accept Complainant's assertion and will treat both Complainants as a single entity.").
As the evidence is that the latter Complainant is a wholly owned subsidiary of the former, they clearly have a common interest in the proceeding.
The Panel will therefore treat the Complainants as a single entity for purposes of this proceeding.
For reasons of convenience and clarity, the Panel will hereafter refer to the Complainants collectively as "the Complainant".
PARTIES' CONTENTIONS
A. Complainant
Complainant made the following contentions.
1. Complainant is a United States company that is one of the world's largest and best-known providers of commercial hotel and related services in the United States and internationally.
2. Complainant operates under several prominent brands including the prestigious MARRIOTT brand and numerous others including HOMES & VILLAS BY MARRIOTT BONVOY, APARTMENTS BY MARRIOTT BONVOY and a prominent loyalty and rewards program under the MARRIOTT BONVOY trademark and brand and has done so for many years.
3. The MARRIOTT BONVOY loyalty and rewards program is also known by the coined term BONVOY.
4. Complainant has registered trademark rights in the BONVOY trademark by virtue of its registration of that trademark with the European Union Intellectual Property Office ("EUIPO"), Application No.017975943, registered on February 26, 2019, and numerous other trademarks for BONVOY and MARRIOTT BONVOY registered nationally and internationally with EUIPO, the United States Patent and Trademark Office ("USPTO") and other trademark registration authorities (collectively "the BONVOY trademark").
5. The BONVOY trademark has become prominent, has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services and in particular with the Complainant's BONVOY loyalty and rewards program.
6. As well as its trademarks, the Complainant has registered the domain name <marriott.com> which it uses in its business including for the purpose of promoting its prominent BONVOY loyalty and rewards program.
7. The Complainant has also registered the domain name <bonvoy.com> which it uses in its business and which resolves to the website at www.marriott.com.
8. On June 5, 2023, the Respondent registered the domain name <bonvoyworld.com> ("the disputed domain name").
9. The Respondent so registered the disputed domain name several years after the Complainant acquired its trademark rights in the BONVOY trademark.
10. In registering the disputed domain name, Respondent has incorporated in it the entirety of Complainant's BONVOY trademark without any authority to do so, and has added the word "world" and the generic top-level domain ".com". These additions do not negate the confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i) that is otherwise present, as it is in the present case.
11. The disputed domain name is therefore confusingly similar to the Complainant's BONVOY trademark.
12. The disputed domain name also invokes the Complainant's MARRIOTT BONVOY trademark, brand and loyalty and rewards program and its own domain names <bonvoy.com> and <marriott.com>.
13. Respondent has caused the disputed domain name to resolve to a website that bears the name Bonvoy and purports to sell smart watches and other items bearing the Complainant's BONVOY trademark and name but which are of dubious origin.
14. The Respondent has no rights or legitimate interests in the disputed domain name because:
(a) Respondent registered the domain name well after the Complainant acquired its rights in the BONVOY trademark;
(b) Respondent is not commonly known by the domain name;
(c) Respondent has concealed its identity behind a privacy service;
(d) Respondent has no rights in the BONVOY trademark;
(e) there is no relationship between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use a domain name incorporating the Complainant's BONVOY trademark;
(f) it is clear that the Respondent chose and constructed the domain name due to the fame of the BONVOY trademark, its association with the famous names and brands of the Complainant and to attract and drive internet traffic away from the Complainant ands to a website from which the Respondent derives revenue;
(g) the domain name and the aforesaid website were clearly intended by the Respondent to impersonate the Complainant and to confuse internet users as to the source of the Respondent's goods and services offered on its website;
(h) the Complainant has not authorized the Respondent to make any use of the BONVOY trademark in a domain name or otherwise;
(i) the Respondent has populated the aforesaid website with text copied from other websites;
(j) the Respondent has registered and used a domain name that is confusingly similar to the Complainant's trademark and which is calculated to derive financial advantage to the Respondent by diverting consumers from the Complainant to the Respondent;
(k) Respondent has not used the disputed domain name for a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i);
(l) the Respondent's website is so constructed as to produce revenue from potentially confused internet users who have been put at risk of being deceived into buying counterfeit or unauthorized products;
(m) Respondent has not used the disputed domain name for a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii); and
(n) there are no other circumstances that could give the Respondent a right or legitimate interest in the disputed domain name.
15. By reason of the matters aforesaid, the Respondent has no rights or legitimate interests in the disputed domain name.
16. The Respondent has registered and used the disputed domain name in bad faith. That is so because:
(a) the Respondent has incorporated the BONVOY trademark in the domain name;
(b) the Respondent has done so years after the Complainant acquired its rights in the BONVOY trademark and its became famous;
(c) the Respondent has also done so with the clear intent of suggesting falsely a connection with the Complainant to promote the sale of low-priced and highly discounted smart watches for the financial benefit of the Respondent and by trading on the fame of the Complainant, the BONVOY trademark and the aforesaid loyalty and rewards program;
(d) it is clear that the Respondent had actual knowledge of the Complainant and its famous trademarks when it, the Respondent, registered the domain name;
(e) the Respondent's website to which the domain name resolves falsely purports to be an official BONVOY site by using that name;
(f) the known facts indicate that consumers will be confused as to the offending website's association with or sponsorship by the Complainant within the meaning of Policy ¶ 4(b)(iv);
(g) the Respondent's website targets the Complainant and its trademarks by prominently displaying the BONVOY trademark and logo;
(h) the Respondent has sought to conceal its contact information and used a proxy server which are illustrative of a bad faith intention; and
(i) all of the relevant acts, facts, matters and circumstances show that the Respondent has registered and used the disputed domain name in bad faith.
16. The Complainant has cited numerous prior UDRP decisions to support its contentions.
17. It is therefore submitted by the Complainant that it has shown all of the elements that it must establish under the UDRP Policy and that the disputed domain name should be transferred from the Respondent to the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
1. The Complainant is a United States company that is one of the world's largest and best-known providers of commercial hotel and related services in the United States and internationally.
2. One of its activities that it conducts is the prominent MARRIOTT BONVOY loyalty and rewards program, also known by the coined term BONVOY.
3. The Complainant has established by evidence that it has registered trademark rights in the BONVOY trademark by virtue of its registration of that trademark with the European Union Intellectual Property Office ("EUIPO") , Application No.017975943, registered on February 26, 2019, and numerous other trademarks for BONVOY and MARRIOTT BONVOY registered nationally and internationally with EUIPO, the United States Patent and Trademark Office ("USPTO") and other trademark registration authorities (collectively "the BONVOY trademark").
4. The BONVOY trademark has become prominent, has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services and particularly with the Complainant's BONVOY loyalty and rewards program.
5. On June 6, 2023, the Respondent registered the domain name <bonvoyworld.com> ("the disputed domain name").
6. The Complainant acquired its trademark rights in the BONVOY trademark well before the Respondent registered the disputed domain name.
7. By reason of the matters aforesaid, and as demonstrated by the evidence, the disputed domain name is confusingly similar to the Complainant's BONVOY trademark, the Respondent has no rights or legitimate interests in the domain name and the domain name has been registered and used by the Respondent in bad faith.
8. Accordingly, the disputed domain name should be transferred to the Complainant.
DISCUSSION
Paragraph 15(a) of the Rules instructs this 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."
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 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").
Identical and/or Confusingly Similar
The first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. Complainant has established by evidence that it has registered trademark rights in the BONVOY trademark by virtue of its registration of that trademark with the European Union Intellectual Property Office ("EUIPO"), Application No.017975943, registered on February 26, 2019, and numerous other trademarks for BONVOY and MARRIOTT BONVOY registered nationally and internationally with EUIPO, the United States Patent and Trademark Office ("USPTO") and other trademark registration authorities (collectively "the BONVOY trademark").
The next question that arises is whether the disputed domain name is identical or confusingly similar to the Complainant's BONVOY trademark. It is clear that the domain name is confusingly similar to the trademark as the Respondent has incorporated in it the entirety of Complainant's BONVOY trademark without any authority to do so, and has added the word "world" and the generic top-level domain ".com". These additions do not negate the confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i) that is otherwise present, as it is in the present case.
In any event, the Respondent has included in the domain name the word "world" which invokes the name of the second named Complainant, being as it is, Marriott Worldwide Corporation, thereby implying that <bonvoyworld.com> is part of Marriott Worldwide Corporation. Indeed, the internet presence of Marriott Worldwide Corporation, which is in evidence, extensively promotes the BONVOY loyalty and rewards program.
The domain name means, would be interpreted by internet users to mean, and was no doubt intended to convey the meaning that it is a domain name of the Complainant because it uses the Complainant's well-known BONVOY trademark and purports to relate to the official activities of the Complainant in operating its Bonvoy loyalty and rewards program under its trademark. This emphasizes the notion that the domain name is a domain name of the Complainant or was created with the approval of the Complainant and that it will lead to an official website of the Complainant in delivering genuine goods and services of the Complainant, none of which is correct.
The disputed domain name is therefore confusingly similar to the Complainant's BONVOY trademark.
The Complainant has thus made out the first of the three elements that it must establish.
Rights or Legitimate Interests
The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations:
(a) the evidence is that the Respondent has chosen to take the Complainant's BONVOY trademark and to use it in the disputed domain name, making only the minor additions mentioned above, generating the clear impression that it is referring to and invoking the Complainant's trademark and that the Respondent intended to use the domain name for an unauthorized purpose involving the use of the Complainant's trademarked BONVOY product name. The starting point is therefore that the Respondent had no right to do any of this, meaning that there is no foundation at all for finding that it had the right to do so or that it gave the Respondent any legitimate interest in the domain name so created;
(b) On June 6, 2023, the Respondent registered the domain name <bonvoyworld.com> ("the disputed domain name"), which was well after the Complainant had acquired its trademark rights in the BONVOY trademark;
(c) it is clear from the evidence that the intention of the Respondent was to invoke the Complainant's product name, its BONVOY trademark and business and to copy them, which cannot conceivably give rise to a right or legitimate interest in the domain name;
(e) this conduct was a clear infringement of the Complainant's BONVOY trademark;
(f) the evidence on the foregoing matters is contained in the Complainant's very informative Exhibit U. The Panel has examined that exhibit and the details contained in it. Suffice to say that it shows that the Respondent has used its domain name and website to display and offer for sale a range of products under the name Bonvoy, suggesting that they are approved products under the Marriott Bonvoy loyalty and rewards program. The website opens up with its first word being "Bonvoy" as in "Bonvoy CRYSTAL", then a watch named as a "Bonvoy Prima", another watch named as a "Bonvoy Crystal", exhortations to "Experience Bonvoy" and to use the health measuring facilities provided through Bonvoy products, numerous further uses of the word "Bonvoy", other products such as smart watches, headphones and wireless speakers, search facilities to find "your perfect smart watch", further exhortations to buy "Bonvoy" products and the reflection that its business has been based on "one principle that we at Bonvoy have held as holy grail-build experiences crafted around 'you' " (emphasis added). The website also included the usual accoutrements of a deceptive website such as warranties, shipping policy, an email address for support and obviously heavily-reduced prices. The Respondent has also added a copyright symbol to assert falsely by that means that it is the lawful owner of the brand displayed which is in fact the brand and trademark of the Complainant;
(g) this evidence shows that the Respondent has no right or legitimate interest in the domain name which is being used to present this false narrative;
(h) in view of the Respondent's name, it is impossible to conclude that it is commonly known by the domain name; it is extremely unlikely that anyone named "Shashank gard" would answer to the name "bonvoy world.com" or anything like it;
(i) the evidence also shows that the use made of the domain name by the
Respondent is not a bona fide offering of goods or services within the meaning of Policy¶4(c)(i); it cannot be bona fide when it is based on the falsehood that it is or is authorized by the Complainant to use its trademark and product names;
(j) the evidence also shows that the domain name is not being used for a
legitimate non-commercial or fair use; the use of the domain name has already been shown to be illegitimate because it is being used to damage the Complainant and mislead internet users; it also cannot be said to be non-commercial in any sense as it clearly is intended to be used by the Respondent for a financial purpose, namely to make money; nor is it fair, as it is clearly unfair to use a trademark without permission of the trademark owner and to pretend falsely that it is being used with the approval of the Complainant as trademark owner;
(k) the evidence also shows that the domain name is being used and was
intended to be used to pass the Respondent off as the Complainant and as the owner of the Bonvoy business;
(l) the evidence shows that there is no relationship between the Complainant and the Respondent and that the Complainant has not authorized or licensed the Respondent to register the domain name or to use its trademark in any way;
(m) all of the grounds relied on by the Complainant have also been made out on the evidence, including that the Respondent has concealed its identity behind a privacy service; that the Respondent chose and constructed the domain name due to the fame of the BONVOY trademark, its association with the famous names and brands of the Complainant and to attract and drive internet traffic away from the Complainant and to a website from which the Respondent obviously derives revenue; that the Respondent has populated the aforesaid website with text copied from other websites; and that the Respondent's website is so constructed as to produce revenue from potentially confused internet users who have been put at risk of being deceived into buying potentially counterfeit products;
(n) there are no other circumstances that could give the Respondent a right or legitimate interest in the disputed domain name; and
(o) all of the above considerations disprove any suggestion that the Respondent has a right or legitimate interest in the disputed domain name.
All of these matters go to make out the prima facie case against the Respondent.
As the Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
The Complainant has thus made out the second of the three elements that it must establish.
Registration and Use in Bad Faith
It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was both registered and used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) are not exclusive but that proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
The Complainant has submitted that the Respondent has registered and used the disputed domain name in bad faith on the several grounds referred to above.
It is clear that the Complainant has made out each and every of the grounds relied on in its detailed and persuasive case.
Taking them in order, the Complainant has established by evidence that:
(a) the Respondent has incorporated the BONVOY trademark in the domain name and it must be inferred that it did not do this by coincidence or accident but that it did so deliberately, knowing of the BONVOY trademark and what it stands for;
(b) the Respondent has done so years after the Complainant acquired its rights in the BONVOY trademark and became famous;
(c) the Respondent has also done this with the clear intention of suggesting falsely a connection with the Complainant to promote the sale of low-priced and greatly discounted smart watches and other products for the financial benefit of the Respondent and by trading on the fame of the Complainant, the BONVOY trademark and the aforesaid loyalty and rewards program;
(d) it is clear that the Respondent had actual knowledge of the Complainant and its famous trademarks when it, the Respondent, registered the domain name;
(e) the Respondent's website to which the domain name resolves falsely purports to be an official BONVOY website by using that name;
(f) the known facts indicate that consumers will be confused as to the offending website's association with or sponsorship by the Complainant within the meaning of Policy ¶ 4(b)(iv);
(g) the Respondent's website targets the Complainant and its trademarks by prominently displaying the BONVOY trademark and logo;
(h) the Respondent has sought to conceal its contact information and used a proxy server which are illustrative of a bad faith intention; and
(i) all of the relevant acts, facts, matters and circumstances show that the Respondent has registered and used the disputed domain name in bad faith.
All of this has been established, first, because the evidence shows that the Respondent had actual knowledge of the Complainant and its globally recognized trademarks when it registered the domain name. The Complainant's name and brand name are very well-known and the Respondent has set about targeting and copying them. It is inconceivable that it could have embarked on the detailed pretence shown by the evidence if it did not have actual knowledge of the Complainant and its trademark. The Respondent clearly knew what its target was and set about aiming at it, which amounts to bad faith registration and use.
Secondly, it has used the domain name by setting about creating a website which advertises what purport to be the Complainant's branded goods and in every way pretends that it is the Complainant or is acting with its approval and that it is lawfully offering for sale genuine products of the Complainant when in fact it is offering for sale counterfeit products or products it has no authority to offer for sale.
Thirdly, the Respondent obviously passed itself off as the Complainant, directed internet users away from the Complainant and to itself and tried to extract money from internet users by misleading them, all the time trying to create the false impression that its website originated with and was approved by or linked to the Complainant. If that conduct were not bad faith registration and use, those words would have no meaning.
Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the conduct that the Respondent has engaged in, it has registered and used the domain name in bad faith within the generally accepted meaning of that expression.
The Complainant has thus made out the third of the three elements that it must establish.
The Complainant has correctly cited several prior UDRP decisions that support its contentions on all of the elements required to be proved.
The Complainant has therefore shown all of the elements it is required to prove under the Policy and is entitled to the relief that it seeks.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bonvoyworld.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: March 14, 2024
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