WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Occidental Hoteles Management, S.A v. Texas International Property Associates – NA NA Case No. D2008-1215 1. The Parties
Complainant is Occidental Hoteles Management, S.A, Madrid, Spain (the “Complainant” or “Occidental Hoteles”), represented by Ladas & Parry LLP, United States of America.
Respondent is Texas International Property Associates – NA NA, Dallas, Texas, United States of America (the “Respondent”), represented by Law Office of Gary Wayne Tucker, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Compana, LLC (“the Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2008. On August 11, 2008, the Center transmitted to the Registrar by email a request for registrar verification in connection with the Domain Name at issue. On August 12, the Center received by email the Registrar's verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2008. The Response was filed with the Center on September 7, 2008.
The Center appointed Dana Haviland as the sole panelist in this matter on September 24, 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
Complainant is the owner of U.S. Trademark Registration No. 2990433, for the OCCIDENTAL and Design mark, for, inter alia, “hotel management services,” which issued on August 30, 2005, and lists September 2, 2000 as the first use date for the mark in U.S. commerce. Complaint, Annex D.
Respondent registered the Domain Name on May 12, 2005. Complaint, Annex A. 5. Parties' Contentions A. Complainant
According to the Complaint, Complainant holds the worldwide rights to the OCCIDENTAL trademark and service mark and operates the Occidental Hotels & Resorts chain. The company began its operations in 1982 with hotels in Spain, Portugal, the Dominican Republic and Puerto Rico. Today, Occidental Hoteles also has hotels in the Caribbean, Europe, North Africa, and Mexico.
Complainant is the owner of U.S. Trademark Registration No. 2990433, for the OCCIDENTAL and Design mark, which issued on August 30, 2005, and lists September 2, 2000 as the first use date for the mark in U.S. commerce. Complaint, Annex D. The registration covers “Hotel management” services, including “Providing rental and reservation of temporary accommodations for others; making hotel reservations for others; bar and pub services, cafeterias, snack bars; providing camp ground facilities; providing holiday camp services, namely, lodging and canteen services for others; hotel services; restaurant services; self-service restaurant services.”
Complainant asserts that although Complainant's trademark registration for the OCCIDENTAL and Design mark (the “OCCIDENTAL” mark) did not issue until August 30, 2005, the issuance of the registration on the United States Patent and Trademark Office's Principal Register constitutes prima facie evidence of the information stated thereon. According to the Complainant, the registration certificate is thus evidence that Occidental Hoteles' first use of the OCCIDENTAL mark in the U.S. occurred on September 2, 2000, long before the Respondents' registration of the Domain Name on May 12, 2005. Complaint, Annex A. The Complaint's exhibits also include specimens filed with the U.S. application for the mark, which declared that these specimens were in use in the U.S. as of the filing date of the application, September 11, 2003, well before Respondent's May 12, 2005 registration and use of the Domain Name. Complaint, Annex E.
Complainant also alleges that it is also the owner of various other U.S. and international trademark registrations which incorporate the OCCIDENTAL designation, which evidence Complainant's ownership of the exclusive right to use these marks in U.S. and international commerce in connection with hotel management and hotel services, among other goods and services.
According to the Complaint, without the authorization or consent of Complainant, Respondent is using the Domain Name to direct Internet users to a commercial website which offers goods and services in direct competition with those offered by Complainant. Complaint, Annex F. The website operated at the Domain Name features such links as “Occidental Hotels”, which redirects Internet users to the official H website (Complaint, Annex G), and “Grand Hotel Occidental Xcaret”, which redirects Internet users to the official SideS website (Complaint, Annex H). Complainant contends that these links, despite their inclusion of the OCCIDENTAL trademark within them and thus the suggestion of Occidental Hoteles' sponsorship of the linked-to websites, divert Internet traffic to websites offering hotel and resort services for sale by the Complainant's direct competitors.
On August 8, 2007, upon discovery of Respondent's unauthorized registration of the Domain Name, the Complainant sent a cease-and-desist letter to Respondent at the contact information listed in the WHOIS information for the Domain Name. Complaint, Annex I. Complainant received an interim response on August 10, 2007, in which Respondent claimed it would be providing a substantive response in 15 to 21 days. Id. Complainant followed up with Respondent via email on September 5, 2007, and received a reply over six weeks later on October 23, 2007, asserting Respondent's intention to transfer the Domain Name to Complainant. Id. According to the Complaint, despite subsequent reminders, Respondent never transferred the Domain Name and failed to further respond. Respondent also failed to change the content posted on the Domain Name, which Complainant states continues to direct Internet users interested in Complainant and its services to a website featuring links to the direct competitors of Complainant.
Complainant notes that Respondent is not new to administrative proceedings under the Policy and that UDRP panels have found in favor of the complainant in at least 57 domain name disputes filed with WIPO against Respondent. Complaint, Annex J. Identical or confusingly similar
Complainant owns registered trademarks for OCCIDENTAL in several countries, including the United States, which Complainant contends demonstrate Complainant's rights in the OCCIDENTAL mark under paragraph 4(a)(i) of the Policy. Complainant notes that the Domain Name incorporates Complainant's OCCIDENTAL mark in its entirety, with the mere omission of the letter “l”, and argues that such intentional inclusion of a typographical error as to a third party trademark fails to sufficiently differentiate the domain name from the mark under the “confusingly similar” analysis of paragraph 4(a)(i) of the Policy.
Complainant also argues that the Domain Name is confusingly similar to Complainant's OCCIDENTAL trademark because it incorporates not only a close version of the mark but also the generic or descriptive term “hotels,” a term directly related to the goods and services offered by Complainant under the OCCIDENTAL trademark.
Complainant asserts that the addition of the gTLD “.com” serves no purpose in distinguishing the Domain Name from the OCCIDENTAL mark because gTLDs are a functional necessity rather than an arbitrary choice. Rights or legitimate interests
The Complaint states that without Complainant's authorization or consent, Respondent registered and is using the Domain Name to divert Internet traffic to a generic webpage featuring links to the official H website and the official SideS website. According to the Complaint, these links include the OCCIDENTAL trademark within the links, thereby indicating Occidental Hoteles' sponsorship of the linked-to websites, but instead divert Internet traffic to websites offering hotel and resort services for sale by Complainant's direct competitors. Complainant argues that such use demonstrates neither a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy nor a legitimate noncommercial or fair use of the Domain Name under paragraph 4(c)(iii) of the Policy.
Complainant states that it has not authorized, licensed or consented to Respondent's registration and use of a domain name incorporating the OCCIDENTAL mark, or any variation thereof. According to the Complaint, to Complainant's knowledge, there are no prior trademark applications or registrations in the name of Respondent for any mark incorporating “occidental” anywhere in the world, and nothing in the WHOIS information related to the Domain Name indicates that Respondent is commonly known by the designation “occidental.”
In addition, Complainant argues that it is reasonable to assume that if Respondent had any justification for registration of the Domain Name, it would not have originally agreed to transfer the Domain Name in response to Complainant's cease and desist letter. Registered and used in bad faith
Complainant alleges that Respondent has registered a domain name confusingly similar to Complainant's mark and used the Domain Name to divert Internet users to Respondent's website, where Respondent likely garners click-through fees for each Internet user who selects one of the links. According to Complainant, the links on Respondent's website further divert Internet traffic to websites that offer hotel and resort services for sale, in direct competition with the services offered by Complainant under its OCCIDENTAL trademark. Complainant asserts that Respondent has thus registered and used the Domain Name in bad faith pursuant to Paragraph 4(b)(iv) of the Policy.
Complainant further contends that Respondent's registration and use of the Domain Name to divert Internet traffic to Complainant's direct competitors establishes Respondent's bad faith registration and use of the Domain Name under Paragraph 4(b)(iii) of the Policy because the domains were registered for the purpose of disrupting the business of a competitor. B. Respondent
Respondent has filed a Response in which Respondent states that it does not admit to the three elements of paragraph 4(a) of the Policy but agrees to the relief requested by Complainant and consents to entry of an order transferring the Domain Name to Complainant.
The Response does not present any evidence in opposition to Complainant's evidence with respect to the three elements of Complainant's claim under paragraph 4(a) of the Policy. Specifically, Respondent does not contest Complainant's allegations and evidence of its trademark rights, does not assert or provide evidence of any independent rights or legitimate interests in the Domain Name, and does not dispute Complainant's allegations and evidence of Respondent's bad faith registration and use of the Domain Name.
Respondent argues, on the grounds of judicial economy, that because it has consented to transfer of the Domain Name, the Panel should order the immediate transfer of the Domain Name to the Complainant without consideration or findings with respect to the merits of Complainant's claim. 6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent's domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the respondent's domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a). A. Identical or Confusingly Similar
Complainant has shown that it has trademark rights in its OCCIDENTAL trademark, which Respondent has not contested. The Domain Name incorporates Complainant's mark in its entirety, save for the final letter “l” and adds the generic term “hotels”.
Dropping a letter from a trademark in a domain name is a common form of typosquatting, “a practice by which ‘a registrant deliberately introduces slight deviations into famous marks' for commercial gain,” and does not preclude a finding of confusing similarity. FirstRand International Limited, FirstRand Bank Limited v. Virtual Sky,WIPO Case No. D2007-0701 (domain name confusingly similar to eBUCKS trademark); Marriott International, Inc. v. Seocho, NAF Case No. 0149187 (domain name confusingly similar to Marriott trademark).
Further, the addition of the generic term “hotels,” a word describing the very business of Complainant, not only fails to distinguish the Domain Name from Complainant's trademark, but reinforces the association of the Domain Name to Complainant's mark. See Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel,WIPO Case No. D2004-0246; Société Air France v. Nadine Schwab,WIPO Case No. D2008-1220. The generic top-level domain “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See Rollerblade, Inc. v. Chris McCrady,WIPO Case No.D2000-0429.
The Panel finds that the Domain Name is confusingly similar to a trademark in which Complainant has rights, and that Complainant has thus established the first element of its claim under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the respondent of the dispute, respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has not acquired trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent is using the Domain Name for a website with links to third party vendors of services, including some in competition with Complainant, for the purpose of commercial gain from click-through revenues. It has been consistently held that such use does not give a registrant a right or legitimate interest in a domain name. See MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550 (“Use of the domain name in connection with such a commercial link service is not a bona fide offering of goods or services capable of giving rise to a right or legitimate interest in the domain name.”).
Respondent has neither denied this use of the Domain Name nor provided any evidence of any other possible right or legitimate interest in the Domain Name. The Panel finds that Complainant has established the second element of its claim under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Complainant establish both bad faith registration and bad faith use of the Domain Name by Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti Casey, WIPO Case No. D2007-0555; Patrick Pawlicki v. The Plastiform Company,WIPO Case No. D2007-1206.
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of paragraph 4(a)(iii) above:
(i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location.
It is well-established that use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy. See, e.g., Cigna Intellectual Property, Inc. v. Yun Sung Lee, WIPO Case No. D2003-1042 (“By advertising products which might be generally associated with the Complainant's mark, it appears that the Respondent is attempting for commercial gain to attract Internet users by creating a likelihood of confusion with the Complainant's mark.”); Las Vegas Sands, LLC v. Michael Silver,WIPO Case No. D2006-0979; American Management Association International v. Mode L.,WIPO Case No. D2007-0418. Complainant has established bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy.
As Complainant has shown, Respondent is a serial cybersquatter and the subject of many UDRP cases, the great majority of which have resulted in findings of Respondent's bad faith registration and use of domain names. In one case involving Respondent, Usborne Publishing Limited v. Texas International Property Associates – NA NA, WIPO Case No. D2007-1913, the panel noted that “the numerous prior decisions against the Respondent [Texas International Property Associates] on the issue of bad faith do constitute a pattern of the kind referred to in paragraph 4(b)(ii) of the Policy.” The Usborne panel found that “Respondent [Texas International Property Associates] is engaged in classic typosquatting, and appears from the evidence before the Panel to have previously engaged in a pattern of such conduct.” Id.
The panel in the Usborne case further chose to make a finding on the issue of bad faith despite Respondent's agreement to transfer the domain name in dispute, noting that:
“If panels simply comply with respondents' surrender when a complaint is filed, and refrain from making factual findings that are open to them which would otherwise be evidence of a pattern, inappropriate “cybersquatting” conduct might be perpetuated.”
Id. See also Sassybax, L.L.C. v. Texas International Property Associates,WIPO Case No. D2007-1190 (panel chose to decide case on merits despite respondent's consent to transfer). Similarly, in Brownells, Inc. v. Texas International Property Associates,WIPO Case No. D2007-1211, involving this Respondent's usual spurious offer to transfer the domain name, the panel proceeded to decide the case on the merits, because:
“Respondent appears to be engaged in a pattern of registering domain names that are confusingly similar to a trademark in which the Respondent has no rights, and then attempting to avoid or delay a decision on the merits. The Panel believes that a discussion of this pattern of conduct may be helpful to other Complainants and WIPO Panels.
[…]
If Respondent had sincerely wished to transfer the Domain Name, it would have been a simple matter for it to do so. Respondent's failure to follow through on its offer to transfer suggests that Respondent is attempting to delay the inevitable transfer of its Domain Name so as to generate another month or two of revenues. This conduct is inconsistent with the Policy and is resulting in a waste of resources of the Center and of multiple Complainants.”
Accord, Messe Frankfurt GmbH v. Texas International Property Associates,WIPO Case No. D2008-0375; See also President and Fellows of Harvard College v. Texas International Property Associates- NA NA,WIPO Case No. D2008-0597.
This Panel agrees with the foregoing cases and finds that Respondent in this case has registered and used the Domain Name in bad faith, under paragraphs 4(b)(ii) and (iv) of the Policy, and has long engaged in a pattern of such conduct. The Panel finds it regrettable that the Policy and Rules do not include a provision for an award of costs and attorneys' fees in such cases. 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 Complainant.
Dana Haviland
Sole Panelist
Dated: October 13, 2008
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