Complainant is Desarrollo Marina Vallarta, S.A. DE C.V. and Daniel Jesus Chavez Moran of Chapalita Guadalajara, Mexico and Camino Real, Zapopan, Mexico respectively, represented by Holland & Knight, LLP, United States of America.
Respondent is Domains by Proxy, Inc. / Matthew Devellano of Scottsdale, Arizona, United States of America and Puerto Vallarta, Jalisco, Mexico, respectively. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2012. On July 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 1, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 1, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 2, 2012.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on August 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2012. The Response was filed with the Center on August 17, 2012.
The Center appointed Luis C. Schmidt as the sole panelist in this matter on September 20, 2012. 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.
Complainants asked for a consolidation of the two Complaints in the Complaint since the case concerns a licensor and licensee, and where both are bringing a single claim against Respondent. The Panel permits the consolidation of Complaints for the purpose of the present proceedings under the Policy (herein after, “Complainant”). 4. Factual Background
Complainant introduced their services to the leisure market between 1975 and 1980, by opening three resort facilities in Mexico. In the following years it opened twenty facilities, in the main tourist destinations in Mexico. Complainant is one of Mexico’s leading developers of hotels, resorts, vacation ownership, timeshare and tourism infrastructure, with over 12,000 employees. Complainant also operates several golf courses in Mexico. Complainant claims that in 2011, its group had sales in the nine digit U.S. dollar range, promoting their services through Internet websites accessible through the domain names and and diverse printed promotional materials.
Complainant Daniel Jesus Chavez Moran holds the following trademark registrations and licenses their use to Complainant Desarrollo Marina Vallarta, S.A. de C.V.:
MARK
NUMBER
CLASS
COUNTRY
FILING DATE
1
VIDA VACATION
1166336
41
Mexico
June 8, 2010
2
VIDA VACATION CLUB
1126814
35
Mexico
September 11, 2009
3
VIDANATURE
1166968
41
Mexico
June 4, 2010
4
VIDANTA
1082319
37
Mexico
January 7, 2009
5
VIDANTA
1135307
41
Mexico
January 7, 2009
6
VIDANTA
1082320
43
Mexico
January 7, 2009
7
VIDANTA
1135306
35
Mexico
January 7, 2009
Complainant Desarrollo Marina Vallarta, S.A. de C.V. holds the following trademark registrations, among others:
MARK
TYPE
CLASS
COUNTRY
FILING DATE
1
VIDABREEZE
1137702
36
Mexico
August 27, 2009
2
VIDABREEZE
1127690
43
Mexico
August 27, 2009
3
VIDAFEL CLUB MARINA
928351
36
Mexico
February 18, 1986
4
VIDAFEL
534792
36
Mexico
October 7, 1996
5
VIDAFEL (and design)
414871
42
Mexico
September 9, 1991
Complainant claims to be the holder of the following domain names:
DOMAIN NAME
REGISTRATION DATE
1
www.
October 28, 2009
2
www.
October 20, 2009
Upon further investigation by the Panel into the publicly available WhoIs information, no further information about Respondent, including any link to Complainant, has been found due to the fact that “Domain Discreet Privacy Service” appears as the Registrant of the Domain Name. This privacy service hides the registrant personal information and its website, is no longer working. A visit to the website to which the Domain Name directs provides information on the services rendered by Complainant under the trademark VIDA VACATIONS, referenced above. 5. Parties’ Contentions A. Complainant
Complainant contends that the Domain Name is identical or confusingly similar to a trademark or service mark in which it has rights.
Complainant relies on its trademark rights including its registrations of the mark VIDA VACATION and the wide consumer recognition of that mark, as well as the trademarks cited on section, above. It contends that “vida” is the distinctive part of the Domain Name and that the terms “group” and “resorts” are merely descriptive. Citing Emmis Television Broadcasting, L.P., d/b/a KHON-TV v. Henry Chan,WIPO Case No. D2004-0366, and arguing that, "by incorporating the distinctive part of the registered mark, and using it as the first element of the domain name, the Respondent has clearly adopted a confusingly similar mark”. In addition, Complainant claims that, “the addition of the descriptive terms ‘group’ and ‘resorts’ does not change this result, in particular because they also describe Complainants' core business”. (Complaint, page 8).
Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Name.
Complainant has never authorized Respondent to use its trademarks or to register the Domain Name. The Respondent was not known by the term “Vida” prior to the registration of the Domain Name and has not made any use of Complainant’s trademarks otherwise in connection with the Domain Name. The Complainant claims that the Respondent is not using the Domain Name in connection with any bona fide offering of goods or services:on the contrary, the use of the Domain Name for a pay-per-click website, including links to competing hospitality, vacation/travel and resort services providers, is evidence of an attempt to capitalize upon and gain revenue from Complainant’s well-known marks.
Complainant contends that the Domain Name was registered and is being used in bad faith.
Respondent registered the Domain Name over 25 years after Complainant’s first trademark registration in 1986. The Complainant claims that “the registration and use of a domain name that is confusingly similar or identical to a well-known trademark is indicative of bad faith”, citing Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403, that states that, “the domain name is so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith”.
Furthermore, Complainant claims that:
“Registrant [Respondent] has sent numerous emails from the @ domain to customers of Complainant Desarrollo…In these emails, Registrant asks for payments in the name of Vida Group and Vida Group Resorts, and/or agrees on payments on contracts that exist between Complainant Desarrollo and its customers. In addition, Respondent also offers ‘discounts’ to customers for early payment, and contacts customers of Complainant by phone to discuss payments, all this to create the false impression that Respondent is acting on behalf of Desarrollo, to defraud Desarrollo's customers, and to tarnish Complainants' marks, name and business”.
Complainant claims that, “As a result, customers inadvertently enrich Respondent while receiving nothing in return. Moreover, it is probable that such customers will contemplate legal action against Complainants, or at the very least publicly announce that they were defrauded by Complainants”, and that “Complainant has already received multiple complaints from its customers”.
Complainant contends that Respondent is also using the Domain Name to divert Internet traffic to a pay-per-click website, including links to competing hospitality, vacation/travel and resort services providers, and has intentionally attempted to attract for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website. The creation of a false association in this way amounts to bad faith use.
Complainant requests a transfer of the Domain Name. B. Respondent
On August 2, 2012, in a communication to the Center Respondent claims that he operates a web studio and that the Domain Name was bought on behalf of a client, and asked the Center for instructions on responding the Complaint.
In a second communication, received by the Center on August 17, 2012, which this Panel considers the formal response to the Complaint, Respondent claims that Complainant abandoned its trademark registrations in the United States Patent and Trademark Office (“USPTO”), prior to the commencement of this proceeding under the Policy. Respondent annexed evidence of a trademark search for the word “vida” in the USPTO database. Respondent claims that a company, unconnected to the current Complainant is the owner of the VIDA mark in the United States. Respondent finally declares that “since the person which (sic.) in fact owns the trademark to the word VIDA has not commenced these proceedings, I move for a complete dismissal of claim”. 6. Discussion and Findings
In order to succeed in its Complaint, Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) that Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant has established that it is the owner of registered trademarks in Mexico, whose dominant element is the term “vida”, amongst others VIDA VACATION and VIDA VACATION CLUB, and that it has acquired substantial goodwill in those marks in the field of leisure, hospitality, vacation, travel and resort services. Accordingly, the Panel finds that the Complainant has rights in the trade mark VIDA VACATION and VIDA VACATION CLUB, which is sufficient for the purposes of paragraph 4(a) of the Policy. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.1: “If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use)…and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.”) The Panel accepts in the circumstances of this particular case the Complainant’s contention that the disputed domain name is confusingly similar to the Complainant’s trademarks.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademarks, listed above in section 4, since the addition of the related terms “group” and “resorts” in the Domain Name is of a subsidiary nature and does not change the overall impression being created by the dominating element “vida” being used identically in both the Complainant’s VIDA VACATIONS and VIDA VACTION CLUB trademarks and the Domain Name (see Joint Stock Company “Aeroflot - Russian Airlines” v. Koba Gigineishvili,WIPO Case No. D2012-1181). .Additionally, this Panel considers that since in practice Complainant consolidates a group of over twenty hotels or leisure destinations, it is in fact, a group of resorts and that these terms could, in the minds of Internet users, be linked as they are nearly synonymous. Therefore, the Domain Name includes Complainant’s core business. This impression is further strengthened by the Respondent’s use of the website to target customers of the Complainant as discussed further in section C, below (see Schering-Plough Corporation, Schering Corporation v. Dan Myers,WIPO Case No. D2008-1641).
Accordingly the Panel finds that the Domain Name is confusingly similar to trademarks in which Complainant has rights. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, there are three sets of circumstances in particular (but without limitation) to which a respondent may point to demonstrate rights or legitimate interests in a disputed domain name. These are:
(i) before any notice to the respondent of the dispute, its use of, or 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) that the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) that the 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.
The Panel accepts the Complainant’s submissions with regard to “rights or legitimate interests”. The Respondent has provided no evidence in this case to support any of the above circumstances, or any other circumstances that would tend to indicate any rights or legitimate interests of Respondent in the Domain Name. From all the circumstances, the Panel infers that Respondent registered and is using the Domain Name with the intention of diverting Internet users who intend to access a website operated or endorsed by the Complainant to a pay-per-click website offering links to providers of goods and services, including those of the Complainant’s competitors. This Panel considers that Respondent is taking advantage of the Complainant’s goodwill. To the extent that Respondent is using the Domain Name to offer goods or services, the Panel finds that any such offering is not bona fide in these circumstances. There is no evidence that the Respondent has been commonly known by the Domain Name, and the circumstances set out in subparagraph (iii) above plainly do not apply.
The Panel therefore concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
The Panel finds that the conclusion it has reached under “rights or legitimate interests” above are also indicative of bad faith on the part of the Respondent.
Moreover, this Panel considers the fact that Respondent, either by itself of through its client – as Respondent argued in his first response to the Center – is sending emails to Complainant’s clients using the an email address @, the Domain Name, asking for payments, offering discounts for early payments and even contacting customers by phone to discuss payments is a grave case of fraud and evidence bad faith. This Panel further investigated Complainant’s fraud claim, and found that “Trubaesc Mexico, S.A. de C.V.”, one of the companies whose bank information is forwarded to Complainant’s customers via the @ email address, for customers to deposit certain amounts of money (along with “Global Consulting B1791, S.A. de C.V.”), has been involved in this timeshare fraud before, as seen on the website “/law/63wkc-contacted-resort-development-consultants-purchase.html”.
The Panel finds that, by Respondent’s use of the Domain Name, Respondent is intentionally attempting to attract Internet users who intend to access a website operated or endorsed by Complainant to Respondent’s pay-per-click website and that the Respondent must have had the Complainant in mind when registering the Domain Name. Further, Respondent is taking unfair advantage of Complainant’s goodwill by diverting those Internet users to websites including those operated by the Complainant’s competitors.
The Panel therefore concludes accordingly that the Domain Name was registered and is being used in bad faith. 7. Decision
For 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.
Luis C. Schmidt
Sole Panelist
Dated: October 8, 2012
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