WIPO Domain Name Decision D2008-0152 for barcelodominicanbeach.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Barcel� Corporaci�n Empresarial, S.A. v. Media Insights

Case No. D2008-0152

 

1. The Parties

The Complainant is Barcel� Corporaci�n Empresarial, S.A., Palma de Mallorca, Baleares, Spain, represented by Herrero & Asociados, Spain.

The Respondent is Media Insights, of Miami Beach, Florida, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name is registered with Melbourne IT.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2008. On February 1, 2008, the Center transmitted by email to Melbourne IT a request for registrar verification in connection with the domain name at issue. On February 4, 2008, Melbourne IT transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 February 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2008.

The Center appointed Isabel Davies as the sole panelist in this matter on March 7, 2008. 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

The Complainant is Barcel� Corporaci�n Empresarial, S.A. a member of the Barcel� Group. Among the hotels operated by the Barcel� Group is the Barcel� Dominican Beach. The Barcel� Group is a major hotel chain.

The Barcel� Group has traded under the trade mark BARCEL� since 1931. In particular, it has traded under that trade mark in respect of hotels and tourism since 1962; and in respect of hotels and tourism in the Dominican Republic since 1985.

The Complainant submitted documents in support of its statement that Barcel� Group is the proprietor of numerous trade mark registrations in various jurisdictions which include the term BARCEL� and relate to hotels, resorts and tourism, including the following:

- USA trade mark 2557091, BARCEL� HOTELS & RESORTS, class 42

- USA trade mark 2596874, BARCELO HOTELS USA, class 35

- USA trade mark 2600153, BARCELO HOSPITALITY USA, class 35

- Community trade mark 2093722, BARCEL� HOTELS, class 42

- Canadian trade mark 1269036, BARCEL� HOTELS & RESORTS

- French trade mark 13104032, BARCEL� HOTELS & RESORTS, classes 38, 41 and 42

- Honduras trade mark 5336, BARCEL� HOTELS, class 42

- Costa Rica trade mark 94008, BARCEL� HOTELS class 42

In particular, Barcel� Group holds a number of trade marks in the Dominican Republic:

- Trade mark 158559, BARCEL� HOTELS & RESORTS in class 43.

- Trade mark 48312, BARCEL� AWARD HOTELES for hotels, travel agency and tourism management.

- Trade mark 48314, BARCEL� HOTELS for hotels, travel agency and tourism management.

- Trade mark 50533, BARCEL� HOTELS for hotels, travel agency and tourism management.

- Trade mark 50535, BARCEL� AWARD HOTELS for hotels, travel agency and tourism management.

- Trade mark 133851, BARCEL� B�VARO CONVENTION CENTER for hotels, travel agency and tourism management.

- Trade mark 134039, HOTEL BARCEL� COLONIAL TROPICAL BEACH RESORT for hotels, travel agency and tourism management.

- Trade mark 134041, HOTEL BARCEL� TALANQUERA BEACH RESORT for hotels, travel agency and tourism management.

- Trade mark 154505, BARCEL� BUSINESS CLUB in class 35.

The Respondent is registrant of the domain name , which was registered with Melbourne IT on September 14, 2007. The website to which the disputed domain name resolves is not being used to offer any goods, services or information connected with the Respondent or with the Dominican Republic. Instead, the domain name links to a blank web page. However, the browser title bar displays the words “Vacation Tours”.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is similar to the Complainant’s registered trade marks.

The Complainant also contends that the Respondent has no legitimate right to the sign Barcel� Dominican Beach, which is the name of the Complainant’s business in the Dominican Republic.

The Complainant also contends that neither it nor Barcel� Group have licensed or otherwise authorised the Respondent to use the trade mark BARCEL� or to apply for any domain name incorporating the trade mark.

The Complainant further contends that there is no holder of rights to the name Barcel� Hotels other than the Complainant in either the Dominican Trade Mark Office or the Registry of Companies. The Respondent’s name does not coincide with the domain name.

The Complainant further contends that it has conducted web searches which have not revealed any reference to any company other than the Complainant trading under the sign Barcel� Dominican Beach. The Complainant contends that the sign therefore only identifies Barcel� Group’s resort.

On this basis the Complainant contends that there is no evidence that the Respondent is making a legitimate non-commercial or fair use of the domain name, and that prior to receiving notice of this Complaint, the Respondent has not used the domain names in connection with any bona fide offering of goods or services.

The Complainant also contends that the disputed domain name can only have been registered in bad faith by the Respondent, with the objective of attracting traffic to its website by misleading members of the public who are searching for information on its Barcel� Dominican Beach resort. The Complainant further contends that the Respondent intends to disrupt the Barcel� Group’s business. It also contends that the fame of the Barcel� Group is such that the coincidence between the name of the Complainant’s resort and the disputed domain name cannot be accidental.

The Complainant notes that the Respondent’s use of the domain name constitutes “passive holding”, because the website is without content. However, it contends that the text reading “Vacation Tours”, which appears in the browser’s information bar when the web page is viewed, could be related to the services offered by the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

The Respondent failed to respond to the Complaint. Pursuant to Rule 14(b), the Panel is entitled to draw such inferences from such failure as it considers appropriate.

Because the Respondent has submitted no response, the Panel accepts the reasonable factual allegations set out in the Complaint as true. See Rita Rudner v. Internetco Corp.,WIPO Case No. D2000-0581, Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415, and Rule 5(e): “If a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.

However, the failure to submit a Response does not automatically lead to the Complainant being granted the remedy sought. The Complainant must still establish all three of the elements set out in paragraph 4(a) of the Policy on the balance of probabilities before an order can be made to transfer the domain name.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must show that the domain name registered is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

The Complainant has provided evidence of numerous trade mark registrations owned by the Barcelό Group which include the word BARCEL� as their dominant and distinctive element. It has also provided evidence of extensive use by the Barcelό Group of the word Barcel�. The Panel therefore finds that the Barcelό Group has rights in the trade mark BARCEL�. The Complainant has also provided some limited evidence of the Barcelό Group’s use of the sign Barcel� Dominican Beach. However, such evidence as has been provided is insufficient for the Panel to conclude on the balance of probabilities that the Barcelό Group has rights in the trade mark BARCEL� DOMINICAN BEACH over and above its rights in the word BARCEL�.

The Panel notes that the Complainant’s contentions relate to rights owned by the Barcelό Group as a whole. The Complainant is one company within the Barcelό Group, not the Barcelό Group as a whole. The Panel’s review of the supporting documentation provided by the Complainant shows that most of the trade mark registrations referred to at section 4 above are in the name of the Complainant. The Complainant has neither asserted, nor provided evidence of, its rights to use the trade marks registered in the name of other members of its group. However, such registrations as are in the name of the Complainant satisfy the Panel that the Complainant has rights in the trade mark BARCEL�.

The domain name incorporates the whole of the Complainant’s mark BARCEL�, which is the dominant and distinctive element of the domain name. Notwithstanding the Panel’s finding that the Complainant has no rights in the words Dominican Beach, the inclusion of those words in the disputed domain name do nothing to avoid confusing similarity between it and the Complainant’s trade marks. If anything the words Dominican Beach make confusion more likely, because they relate to resorts and tourism generally and to one of the Barcelό Group’s resorts particularly.

The domain name registered is therefore confusingly similar to trade marks in which the Complainant has rights. The requirements of paragraph 4(a)(i) of the Policy are therefore satisfied.

B. Rights or Legitimate Interests

The Panel must be satisfied that the Respondent has no rights or legitimate interests in respect of the domain name, as set out in paragraph 4(a)(ii) of the Policy.

As set out above, the Complainant contends that the Respondent has no right or legitimate interest to the name “barcel�dominicanbeach”. In particular, it contends that its searches reveal no other business trading under such name. The Respondent has had every opportunity to demonstrate its rights to and legitimate interests in the disputed domain name, whether by any of the methods set out in paragraph 4(c) of the Policy or otherwise, but it has failed to do so. The Panel has before it no evidence to suggest that the Respondent has any rights to and legitimate interests in the disputed domain name. The Panel therefore concludes that the Respondent has no such rights.

C. Registered and Used in Bad Faith

The Panel must be satisfied that the domain name has been registered and is being used in bad faith, as set out in paragraph 4(a)(iii) of the Policy. Paragraph 4(a)(iii) of the Policy sets out four examples of circumstances which shall be evidence of registration and use of a domain name in bad faith.

Here, the web page to which the disputed domain name resolves is not being used, other than by way of the text “Vacation Tours” set out in the browser information bar. This lack of active use of the web page is known as “passive holding”. Passive holding can in principle however, even though it may not fit squarely within any of the four inclusive examples set out in paragraph 4(a)(iii) of the Policy, constitute registration and use of a domain name in bad faith; see, for example, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574.

There is no evidence in this case that the Respondent registered the domain name primarily for the purpose of transferring the domain name to the Complainant, or one of its competitors, for excessive value. Nor is there evidence that the Respondent registered the domain name to prevent the Complainant from obtaining the domain name, nor of a pattern of such conduct. There is also no evidence that the Respondent registered the domain name primarily for disrupting the business of the Complainant, notwithstanding the contention of the Complainant to this effect. Given that the website to which the domain name resolves does not carry any content, the Respondent also cannot be said to be using the domain name with the intention of attracting for commercial gain Internet users to the website by creating a likelihood of confusion with the Complainant’s marks.

Nonetheless, and as the panel observed in Jupiters Limited v. Aaron Hall and Telstra Corporation Limited v. Nuclear Marshmallows, the examples of circumstances of bad faith set out in Paragraph 4(a)(iii) of the Policy are as previously noted not an exhaustive list. Many other circumstances may also be evidence of bad faith. In Telstra Corporation Limited v. Nuclear Marshmallows, the panel decided that the question of what circumstances of passive holding other than those expressly identified in paragraphs 4(b) can constitute a domain name being used in bad faith cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. Particular circumstances which the panel concluded were evidence of bad faith in Telstra Corporation Limited decision included, among other things:

(i) that the complainant’s trademark had a strong reputation and is widely known, as evidenced by its substantial use in the relevant countries; and

(ii) that the respondent provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name.

The Panel finds that both of these circumstances apply to the facts of the present Complaint. In addition:

(iii) the precise reproduction in the disputed domain name of the name of Barcelό Group’s resort Barcelό Dominican Beach means that it is extremely unlikely that the Respondent applied to register the domain name without the Complainant’s business in mind; and

(iv) the only explanation for the presence of the words “Vacation Tours” in the browser information bar is that the Respondent registered the domain name with the intention of using, and/or intends to use in the future, the website to which the domain name resolves to offer leisure and tourism services, and that it registered the disputed domain name in order to attract Internet users searching for the Complainant’s resort to its website by creating a likelihood of confusion with the Complainant’s mark.

The Panel is also mindful of the line of prior decisions in which the Panel has decided that, where a trade mark used in a domain name has a high degree of renown and the Respondent has no right or legitimate interest in the mark, this of itself suggests opportunistic bad faith (see Banca Sella S.p.A. v. Mr. Paolo Parente,WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin, Maison Fond�e en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano,WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l.,WIPO Case No. D2002-0395; and Barcel� Corporaci�n Empresarial, S.A. v. KPYR / Svetlana Zubovich,WIPO Case No. D2005-1335).

For the reasons set out above, and taking into account the surrounding circumstances, this Panel concludes that there is no plausible actual or contemplated use to which the domain name could be put by the Respondent that would not be illegitimate, whether by constituting passing off or an infringement of the Complainant’s registered trade marks. The Panel therefore finds that the Respondent registered and used the disputed domain name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.

Isabel Davies
Sole Panelist

Dated: March 25, 2008

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