WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Levantur, S.A. v. Belize Domain WHOIS Service Lt Case No. D2009-0605 1. The Parties
The Complainant is Levantur, S.A. of Palma de Mallorca, Spain, represented by Landwell, PricewaterhouseCoopers, Spain.
The Respondent is Belize Domain WHOIS Service Lt of Belize. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with Intercosmos Media Group d/b/a directNIC.com. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2009. On May 7, 2009, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the Domain Name. On May 7, 2009, Intercosmos Media Group d/b/a directNIC.com 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 Domain Name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 May 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 18, 2009.
The Center appointed Warwick Smith as the sole panelist in this matter on June 26, 2009. 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.
The Panel is satisfied that the Respondent duly received Notice of the Complaint: the courier report shows that the Complaint and Notification of Complaint and Commencement of Administrative Proceeding were duly delivered to the Respondent in Belize on June 1, 2009. 4. Factual Background
The following (uncontested) facts are taken from the Complaint.
The Complainant is a Spanish corporation, which is part of the Piñero Group, one of the leading players in the Spanish tourism industry. The Complainant operates 15 luxury hotels in Spain, Portugal, Mexico, and the Dominican Republic. It opened its first “Bahía Príncipe” hotel, the Bahía Príncipe San Juan in the Dominican Republic, in 1995. The names of at least 11 of the Complainant's hotels begin with the expression “Gran Bahía Príncipe”. The names are completed by the addition of the location of the relevant hotel.
The Complainant is the proprietor of the registered device mark BAHIA PRINCIPE CLUBS & RESORTS in Spain and in the United States of America. The Spanish registration is in international class 42, and dates from October 1998. The United States registered mark is also registered in international class 42, and covers “accommodation services, namely, hotels”. The United States mark has been registered with effect from August 20, 2001.
In both cases, the Complainant's registered mark consists of a sun device appearing above the underlined words “BAHIA PRINCIPE”, with the expression “CLUBS & RESORTS” appearing in smaller font underneath the underlined words.
The Complainant says that the principal part of its service mark consists of the words “Bahía Príncipe”, and that it operates in the Spanish and international markets under the abbreviated name “Bahía Príncipe”. The Complainant produced with its Complaint some online examples showing the use of the abbreviated name “Bahía Príncipe”.
According to the Complaint, the term “Bahía Príncipe” is not the name of any geographical location. The word “gran” is simply the Spanish word for “big”.
The Complainant has registered numerous domain names consisting of or including the words “bahía” and/or “príncipe”. The expression “Bahía Príncipe” has been accepted by the Spanish domain name registration authority for the “.es” space as a valid trademark in Spain.
The Complainant says that it has made large investments advertising its hotels and travel services in various media, and that the expression “Bahía Príncipe” is extensively used in that advertising. According to the Complaint, 17.4% of Internet users searching for the Complainant's website do so using the words “Bahía Príncipe”.
The Complainant has not authorized the Respondent to use its service mark or the expression “Bahía Príncipe”. The Respondent and the Domain Name
The Domain Name was registered on August 3, 2005.
The Domain Name points to a website (“the Respondent's website”) which offers hotel services including services offered by companies which compete with the Complainant. The Complainant produced a printout from the Respondent's website dated May 5, 2009, and the Respondent's website on that date appeared to consist solely of a picture of a beach resort scene, with numerous (apparently sponsored) links to third party websites. Many of those links incorporated the words “Bahia” and/or “Principe”, but some did not – e.g. “Resorts Mexico”, and “Tulum Resort”. At the foot of the May 5, 2009 printout from the Respondent's website, there was a 2009 copyright claim: “ All rights reserved”.
The Panel visited the Respondent's website on July 3, 2009. It was in substantially the same form as it had appeared on May 5, 2009. Some of the links were links to online travel companies or directories, which appeared to offer other holiday options in addition to promoting the Complainant's resorts. Previous Administrative Proceeding between the Parties
The Complainant referred to a previous administrative proceeding under the Policy against the Respondent, in which it succeeded in obtaining an order for transfer to it of the domain name . The Respondent does not appear to have filed any response in that case. 5. Parties' Contentions A. Complainant
The Complainant contends:
1. The Domain Name is confusingly similar to the Complainant's BAHIA PRINCIPE CLUBS & RESORTS device mark. The significant part of that device mark is the expression “Bahía Príncipe”, and the Complainant is known and recognized by the abbreviated expression “Bahía Príncipe”.
2. The Complainant's service mark is a well-known mark, and is entitled to protection as such. Substantial sums have been invested in promoting the Complainant's service mark, and various prizes have been awarded to Bahía Príncipe hotels.
3. The expression “Clubs & Resorts” is merely descriptive of the Complainant's business, and does not contribute to the mark's distinctiveness. The appropriate comparison is the comparison between the words “Bahía Príncipe” in the Complainant's service mark, and the Domain Name. Descriptive elements of the Complainant's service mark contribute only in a very subordinate manner to the overall impression of the mark. The word “gran” in the Domain Name does not provide any distinctiveness, as its meaning in Spanish is simply “big”, being an adjective which describes the hotel. The addition of such a descriptive word is insufficient to avoid confusing similarity. The “.com” suffix has no bearing on the confusing similarity issue.
4. The consumer will not be able to differentiate the Domain Name from the Complainant's service mark, and will probably conclude that the Domain Name has its origin with the Complainant.
5. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following:
(i) The Complainant has not authorized the Respondent to register the Domain Name, or to use any expression as a domain name which is confusingly similar to the Complainant's service mark.
(ii) The Respondent has no identity or corporate name which is similar to the Domain Name. Nor does the Respondent have any registered trademark corresponding to the Domain Name.
(iii) The Respondent's website offers no goods or services itself, but uses the Complainant's BAHIA PRINCIPE mark to promote hotel services offered by parties who are in competition with the Complainant.
(iv) The Respondent cannot claim any right or legitimate interest under any of the subparagraphs of paragraph 4(c) of the Policy.
(v) The Respondent registered the Domain Name with a speculative intention to take advantage of the Complainant's well-known mark.
6. The Domain Name was registered and has been used in bad faith, having regard to the following:
(i) The Respondent registered the Domain Name with the sole intention of obtaining an economic benefit by attracting confused Internet users.
(ii) It is inconceivable that the Respondent was unaware of the existence of the Complainant's trademark and website, especially as the Complainant has registered 55 domain names which include “bahía” and “príncipe” in various forms. Furthermore, the Respondent's website redirects visitors to other websites which offer hotel services of the type offered by the Complainant, and that could not have been fortuitous. Some of the websites to which visitors to the Respondent's website are redirected, just provide general information on leisure sites.
(iii) The Respondent's intention has been to create confusion, and so attract to the Respondent's website Internet users looking for the Complainant. The fact that the Domain Name does not contain a single word in English is further evidence that the Respondent, who is based in Belize, where the official language is English, could not have registered the Domain Name in good faith.
(iv) Bad faith use of the Domain Name is established by the Respondent redirecting visitors to the Respondent's website to the sites of companies which operate in direct competition with the Complainant.
(v) The Respondent's intention has been to sell or assign the Domain Name to the Complainant or to a competitor of the Complainant. Alternatively, the Respondent intended to prevent the Complainant from owning the Domain Name, to disrupt the business of the party interested in the Domain Name, or to attract users of the Internet, creating a likelihood of confusion with the Complainant.
(vi) It is not possible to purchase hotel services on the Respondent's website.
(vii) The Complainant is being damaged, because it is losing potential customers. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. What the Complainant must prove under the Policy - General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the 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”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate. B. Identical or Confusingly Similar
The Complainant has proved that it is the registered proprietor of the BAHIA PRINCIPE CLUBS & RESORTS service mark in Spain and in the United States of America. The Panel is satisfied that the Domain Name is confusingly similar to that service mark. The Panel accepts the Complainant's submission that the principal part of the Complainant's service mark, being the part which conveys the mark's dominant impression, is the part consisting of the words “Bahía Príncipe”. The “Clubs & Resorts” part of the mark is purely descriptive of the services provided under the mark, and the sun device could not be replicated in a domain name. The “.com” suffix in the Domain Name is not taken into account in the comparison, and (as the Complainant correctly notes) the word “gran” is purely descriptive of the service provided by the Complainant: it simply means big, or large, in Spanish, and that appears to be an apt descriptor of the Complainant's Bahía Príncipe resorts.
The Complainant has therefore established that the Domain Name is confusingly similar to a service mark in which it has rights. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
In this case, there is nothing to suggest that the Respondent is commonly known by the Domain Name, so paragraph 4(c)(ii) of the Policy cannot provide any defence to the claim. Nor does paragraph 4(c)(iii) of the Policy appear to offer any possible defence – the Respondent's website appears to be commercial in nature, providing what are presumably sponsored links to third party commercial websites. The Respondent's use of the Domain Name is therefore not a “non-commercial” use of the kind to which paragraph 4(c)(iii) of the Policy is commonly directed. The Complainant says that it has not authorized the Respondent to use its service mark, or to register the Domain Name.
The foregoing combination of circumstances provides sufficient prima facie proof that the Respondent has no rights or legitimate interests in respect of the Domain Name. The evidentiary onus under this part of the Complaint therefore shifts to the Respondent.
The Respondent has not filed any Response, and has therefore failed to discharge that evidentiary onus. The Complainant therefore also succeeds on this part of the Complaint. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] domain name to the complainant […] or to a competitor of [the] complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the [complainant's trade mark or service] mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent] has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted 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 a product or service on [the respondent's] website or location.
The Complainant also succeeds on this part of its Complaint.
First, the Panel is satisfied that the Respondent must have been aware of the Complainant and its group of hotels when the Domain Name was registered. The numerous click-on links on the Respondent's website which consist of the expression “Bahía Príncipe”, or which incorporate that expression, and the general resort holiday focus of the Respondent's website, make it clear that the Respondent has been aware of the Complainant. In the absence of any Response, the Panel infers that the Respondent was aware of the Complainant and its mark in August 2005, when the Domain Name was registered. The Panel can think of no other sensible explanation for the Respondent's choice of a Spanish-language domain name (the Domain Name) for an English-language website promoting resort holidays, than that the Domain Name was intended to be understood as a reference to the Complainant's hotels. The evidence shows no other plausible meaning for “Gran Bahía Príncipe”.
The Respondent's website provides click-on links to third party websites, which offer travel-related services which might or might not involve the Complainant's hotels. Some of the third party websites appear to be no more than travel booking websites, without any connection with the Complainant. The obvious inference is that the Respondent has chosen the Domain Name because of its confusing similarity to the Complainant's trademark (and to the names of many of the Complainant's hotels), with a view to attracting to the Respondent's website Internet users who are looking for websites associated with the Complainant and its hotels. The Respondent's website appears to be commercial in nature (there would be no point in the Respondent providing click-on links to third party websites operated by commercial organisations if the Respondent was not receiving some remuneration for providing those links), and the circumstances fall squarely within paragraph 4(b)(iv) of the Policy. By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's service mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website (or of the services offered on the third party websites which are directly linked to the Respondent's website). 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.
Warwick Smith
Sole Panelist
Dated: July 9, 2009
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