WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gran Hotel Costa Rica S.A. v. NA Corporacion Calypso S.A.
Case No. D2006-1100
1. The Parties
The Complainant is Gran Hotel Costa Rica S.A., San Jos�, Costa Rica, represented by Juan Jos� Obando, Costa Rica.
The Respondent is NA Corporaci�n Calypso S.A., Miami, Florida, United States of America represented by Garland M. Baker, Miami, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August�28,�2006. On August�30,�2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On August�31,�2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September�13,�2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October�3,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October�23,�2006. The Response was filed with the Center on October�23,�2006. On October�24,�2006, Respondent filed an Amendment to the Response. On October�24,�2006, the Center acknowledged receipt of the Response and the Amended Response.
The Center appointed Ross Carson as the sole panelist in this matter on November�1,�2006. 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 registered owner of the service mark Gran Hotel Costa Rica S.A., Registration Number 53997, registered June�6,�1978, in respect of services in class O. Annex 3 to Complaint.
Gran Hotel Costa Rica is a well known hotel providing hotel services in San Jos� for more than 75 years. Due to its location, at the center of San Jos� near the “National Theater” the “Plaza de la Cultura” and the “Costa Rican National Cathedral”, the Gran Hotel Costa Rica has been elected as one of the buildings and places recognized as National Architectonical Patrimony of Costa Rica in Decree of the President of Costa Rica and the Ministry of Culture, Youth and Sports in Gazette number 16 of January�24,�2005. (Annex 2 to Complaint)
5. Parties’ Contentions
A. Complainant
A.1 Identical or Confusingly Similar
Complainant states that it has registered the service mark GRAN HOTEL COSTA RICA S.A in the Costa Rican Intellectual Property Registry in class O as Registration number 53997 registered on June�6,�1978. Complainant has operated a bona fide hotel business in San Jos� for almost 75 years achieving a prestigious reputation for the hotel operated in association with its registered trademark. Complainant submits that the letters “cr” in the domain name in dispute are an accepted abbreviation for Costa Rica. Complainant states that the domain name in dispute comprised of the words gran and hotel in association with the abbreviation “cr” is confusingly similar to Complainant’s well known registered trademark GRAN HOTEL COSTA RICA S.A.
A.2 Rights or Legitimate Interests in respect of the Domain Name
Complainant submits that Respondent is a corporation that sells tours and tourist options in Costa Rica. Complainant further submits that Respondent does not operate any hotels in Costa Rica. Complainant further submits that Respondent is without any authorization, using and exploiting freely the image and service mark of Complainant on the website associated with the domain name in dispute as well as other websites operated by Respondent.
Complainant submits that the Respondent was aware of Complainant’s hotel business and registered trademark well before registration of the domain name in dispute by Respondent.
Complainant submits that neither Respondent or its business has not been commonly known by the domain name in dispute.
A.3 Registered and Used in Bad Faith
Complainant submits that Respondent’s adoption and use of the disputed domain name is in bad faith, has continued with full knowledge of Complainant’s prior rights, and is a willful infringement of Complainant’s prior rights. Respondent is using the domain name in dispute which is confusingly similar to Complainant’s trademark for its own commercial gain, by diverting Internet users to its search engine website featuring links to the websites of other hotels in direct competition with Complainant’s business in order to receive compensation for directing a user to such a websites.
Complainant submits that at the website “www.”, the Respondent uses the service mark and logo of Gran Hotel Costa Rica to attract Internet users. Respondent’s website includes pictures of Complainant’s hotel, a description of the hotel’s facilities and services, and information and conditions on how to begin a commercial relationship with the Gran Hotel Costa Rica. Moreover, the pictures that are shown on the website do not represent the current condition of the Gran Hotel Costa Rica’s building. Gran Hotel Costa Rica has invested approximately a sum of $4,000,000 USD improving the image, facilities and facing of the hotel. After giving the information on Complainant’s hotel the following statement is made on Respondent’s website: “WE NO LONGER TAKE RESERVATIONS FOR THIS HOTEL. WE RECOMMEND OTHER OPTIONS FOR YOUR STAY IN SAN JOS�, COSTA RICA.”
Complainant submits that Internet customers and prospective customers upon reviewing the website associated with the domain name in dispute may stop searching for Gran Hotel Costa Rico online, or visit a competing hotels website instead, resulting in lost customers, lost business and loss of reputation of Complainant. Respondent is intentionally attempting to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark.
Complainant states that during August 2004, Garland Baker, on behalf of Corporaci�n Calypso S.A, went to Eric Guti�rrez Rojas office, Manager of Gran Hotel Costa Rica, offering to sell the domain name in dispute to Gran Hotel Costa Rica for a sum of $30,000 USD, an amount in excess of out-of-pocket costs directly related to the domain name. Eric Guti�rrez Rojas did not accept the offer.
B. Respondent
B.1 Identical or Confusingly Similar
Respondent submits that pursuant to an oral agreement between Respondent and Complainant made in 1999 Respondent registered the domain name and developed and operated the website associated with the domain name on behalf of Complainant. Respondent received a commission from Complainant for reservations at the hotel emanating from the website associated with the domain name in dispute. The management of the hotel changed in or about October�2005 and Complainant has not paid Respondent any commissions for reservations emanating from enquiries made using the domain name in dispute.
Respondent submits that the domain name in dispute is not identical to any trademark used by Complainant.
B. 2 Rights or Legitimate Interests in respect of the Domain Name
Respondent submits that the domain name in dispute was acquired by Respondent as part of a business agreement with Complainant whereby Respondent would develop a website to promote Complainant’s hotel and establish an on-line reservation service. Pursuant to honoring the agreement, the domain name in dispute was registered by Respondent. Respondent developed the website which includes logos of Complainant, pictures and related information about the facilities and location of the Complainant’s hotel in San Jos�, Costa Rica.
B. 3 Registered and Used in Bad Faith
Respondent submits that it registered the domain name in dispute with the consent of the Complainant or its predecessor and designed and operated the website associated with the domain name in dispute in good faith. Respondent arranged for accommodations at Complainant’s hotel for Internet users using the domain name in dispute for many years. Respondent has never intentionally attempted to attract any business for commercial gain that was not related to making reservations for the Gran Hotel Costa Rica as per the original agreement with Complainant nor created confusion with any of the Complainant’s trade or service marks.
The domain name in dispute was not registered for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, or to a competitor of the Complainant. As is mentioned above, Respondent made and respected an agreement with Gran Hotel Costa Rica made in 1999 by registering the domain and providing reservations services.
Respondent submits that it did not attempt to attract Internet users to its website, by creating confusion with the trade and/or service mark Gran Hotel Costa Rica. Respondent has always acted in good faith, creating no confusion, rather helping the Gran Hotel Costa Rica over the years by arranging reservations at Complainant’s hotel.
Respondent submits that the domain name in dispute was not registered or acquired primarily for the domain name. It was not registered in order to prevent the Complainant registering it. Complainant recently registered many domain names more closely representing its service marks. However, Complainant wants the domain name to capitalize on the equity in the domain name, including but not limited to its high ranking on many search engines.
Respondent states that Complainant and the Respondent are not competitors and the domain name was not registered by the Respondent primarily to disrupt the Complainant’s business, as mentioned above Respondent registered the domain name to benefit the Complainant’s hotel by providing promotion and reservation services for the hotel in return for a commission.
The domain name was not registered by the Respondent in an intentional attempt to attract for commercial gain Internet users to the Respondent’s website or other on-line location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of another product or service on the Respondent’s website or location.
Respondent states that in 2005, when Complainant stopped paying commissions for reservation services, Respondent had to inform Internet users that it was not taking reservations any more, that is why a notice was provided on the website by posting the legend: “WE NO LONGER TAKE RESERVATIONS FOR THIS HOTEL. WE RECOMMEND YOU LOOK INTO OTHER OPTIONS FOR YOUR STAY IN SAN JOSE, COSTA RICA.”
Respondent submits that Complainant wrongly alleged in the Complaint that the message posted by Respondent read: “WE NO LONGER TAKE RESERVATIONS FOR THIS HOTEL. WE RECOMMEND OTHER OPTIONS FOR YOUR STAY IN SAN JOSE, COSTA RICA.”
The difference between the message posted by Respondent is that Respondent is not recommending anything, but letting visitors decide what they want to do based on the fact Respondent is no longer taking reservations because the Complainant is not complying with the long-standing business relationship.
Respondent further states that it has never made a reservation for another hotel from an Internet inquiry directed to or directed a reservation to any other website regardless of the fact Complainant has not honored its agreement with Respondent by not paying the company for its services.
Respondent submits that it takes no other reservations of any type for any service in the tourism or hospitality industry.
Respondent submits that there is evidence in the e-mail communications between Respondent and Complainant that in 2005 when the Complainant stopped paying commissions without any notice; Respondent inquired from Complainant as to the status of commissions for reservations made through Respondent and were advised the matter was under study. However, Respondent was never paid the outstanding commissions.
6. Discussion and Findings
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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.
A. Identical or Confusingly Similar
Complainant is the owner of Costa Rica Trademark Registration No. 53997 for the trademark GRAN HOTEL COSTA RICA S.A. registered on June�15,�1978. Complainant and its predecessors have operated a hotel in central San Jos�, Costa Rica for over 75 years under the trademark GRAN HOTEL COSTA RICA and the trademark is well known in Costa Rica and among tourists who frequent San Jos�. Respondent registered the domain name in dispute for the purpose of promoting the Gran Hotel Costa Rica and also for the purpose of arranging reservations for rooms at the hotel over the Internet. The domain name in dispute is comprised of a combination of gran, hotel and cr. The letters c and r are an accepted contraction for Costa Rica.
The Panel finds that Complainant has proven that the domain name in dispute is confusingly similar to Complainant’s registered and common law trademarks relating to services of operating a hotel.
B. Rights or Legitimate Interests
The onus is on Complainant to prove that Respondent has no rights or legitimate interests in the domain name. Previous panels have recognized that it is difficult for Complainant to prove a negative. If Complainant provides evidence that Respondent has no apparent rights or legitimate interest in the domain name the evidentiary onus changes and Respondent has to provide evidence of its rights and legitimate interests in the domain name in dispute.
Respondent is not in the hotel business and does not operate any business and does not use the trademark GRAN HOTEL COSTA RICA to distinguish any goods or services provided by Respondent.
The Respondent, pursuant to an oral agreement with Complainant in 1999 and continuing until sometime in 2004 or 2005, promoted and made reservations relating to Complainant’s hotel in return for a commission. The agreement has terminated. The website associated with the domain name in dispute operated by Respondent informs Internet users logging on to the website that “we no longer take reservations for this hotel, we recommend other options for your stay in San Jose, Costa Rica.”
The fact that Respondent posted the above notice leads to the inference that former clientele of the hotel familiar with the domain name in dispute are using the domain name to make reservations at Complainant’s hotel. Does this goodwill associated with the domain name in dispute comprise a legitimate interest of Respondent in the domain name in dispute? There is no evidence as to the intention of the parties, if any, with respect to the transfer or cancellation of the domain name in dispute upon termination of the oral agreement between the parties. The evidence is that Respondent offered to transfer the domain name in dispute to Complainant for 30,000 dollars. No response appears to have been made by Complainant to the offer by the Respondent to sell the domain name in dispute to Complainant.
The Panel finds that it is not necessary to reach a conclusion on this second requirement of the Policy in view of the Panel’s finding below with regard to the third requirement of the Policy.
C. Registered and Used in Bad Faith
The third requirement of the Policy requires Complainant to prove that Respondent registered and used the domain name in dispute in bad faith. It is evident that registration and use comprise separate disjunctive elements which must be proven by Complainant. World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Telstra Computers Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Respondent registered the domain name in dispute pursuant to an oral agreement with Complainant. Respondent registered the domain name, developed and operated the website associated with the domain name, to promote Complainant’s hotel and arrange reservations through the hotel for Internet users choosing to stay at Complainant’s hotel. In return for Respondent’s development and operation of the website and arranging reservations at the hotel for Internet users Respondent was paid a commission by Complainant on the reservations directed to Complainant arising from the Internet inquiries. Complainant has not filed any evidence to show that the registration was made by the Respondent in bad faith.
As stated by the Panel in Guideline Instruments Limited v. Anthony Anderson, WIPO Case No. D2006-0157; “A long line of decisions has held that the first of these conditions requires that the original registration, or possibly a subsequent acquisition, of the Domain Name was in bad faith, and that the maintenance or renewal in bad faith of a registration originally made in good faith does not suffice: see Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005; Teradyne Inc. v. 4tel Technology, WIPO Case No. D2000-0026; Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000-0993; e-Duction, Inc. v. John Zuccarini, d/b/a The Cupcake Party & Cupcake Movies, WIPO Case No. D2000-1369…”
The uncontroverted evidence in this case is that Respondent registered the domain name in dispute in good faith with the approval of Complainant. Complainant provided Respondent with photographs and promotional material relating to Complainant’s hotel for inclusion on the website.
The Panel finds that the Complainant has not proven that the domain name in dispute was registered by Respondent in bad faith as required by Paragraph 4(a) (iii) of the Policy.
These reasons are based upon the application of the Policy governing mandatory administrative proceedings under the UDRP. The Panel has not considered possible contractual and other issues which the Panel does not have jurisdiction to inquire into, which issues may involve more than the domain name and which will require complex evidence and procedures in a forum which has jurisdiction to decide such matters
7. Decision
For all the foregoing reasons, the Complaint is denied.
Ross Carson
Sole Panelist
Dated: November�15,�2006.
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