Complainant is Desarrollo Marina Vallarta, S.A. de C.V. of Guadalajara, Mexico and Daniel Jesus Chavez Moran of Zapopan, Mexico, represented by Holland & Knight, LLP, United States of America.
Respondent is Karla Vallejo of La Paz, Mexico. 2. The Domain Name and Registrar
The disputed domain name is which is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2013. On May 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 31, 2013, 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 June 4, 2013.
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 June 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2013.
On June 7, 2013, the Center received an email communication from Respondent. The Center acknowledged receipt of this email communication on the same day, reminding Respondent of the Response due date and explaining that if the parties were interested in settling the dispute, Complainant should send a suspension request to the Center. No further filings from either party were received by the Center by the specified Response due date. Accordingly, on June 27, 2013, the Center notified the parties that it shall proceed with the panel appointment.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on July 5, 2013. This Panel finds that it was properly constituted. This 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 Daniel Jesus Chavez Moran has rights over the VIDANTA trademark for which he holds a number of trademark registrations with the Mexican Institute of Industrial Property (“MIIP”), such as: No. 1135307, registered on December 11, 2009, class 41; and No. 1082320, registered on February 4, 2009, class 43.
Complainant Daniel Jesus Chavez Moran also has rights over, among others, the GRUPO VIDANTA (and design) trademark for which he holds the following trademark registration with the MIIP: No. 1202863, registered on February 22, 2011, class 43.
Complainant Desarrollo Marina Vallarta, S.A. de C.V., is a licensee of the abovementioned trademarks and, additionally, has rights over several trademarks which include the characters “vida” (such as VIDABREEZE and VIDAFEL) and for which it holds a number of trademark registrations with the MIIP.
The disputed domain name was created on March 25, 2013. 5. Parties’ Contentions A. Complainant
Complainant’s assertions may be summarized as follows:
Complainant Daniel Jesus Chavez Moran is a controlling member and founder of Complainant Desarrollo Marina Vallarta, S.A. de C.V. The latter has been operating as the exclusive licensee of Complainant Daniel Jesus Chavez Moran.
Desarrollo Marina Vallarta, S.A. de C.V., is one of Mexico's leading developers of hotels and resorts and vacation ownership and tourism infrastructure, and is the largest golf course operator in Mexico, with more than 12,000 employees. Between 1975 and 1980, it opened three resort facilities in Mexico, and increased the number of its facilities to twenty in the following years in the main tourist destinations in Mexico. In addition to providing traditional resort facilities to the public, Desarrollo Marina Vallarta, S.A. de C.V., is also the largest timeshare resort developer in Mexico and one of the largest in the world, with over 185,000 timeshare members, and also a major developer of whole ownership condominiums, villas and residences.
Desarrollo Marina Vallarta, S.A. de C.V., promotes its services, inter alia, through websites accessible through the domain names , , , and , and on print and other materials.
Daniel Jesus Chavez Moran and Desarrollo Marina Vallarta, S.A. de C.V., are entitled to bring a consolidated Complaint against Respondent since they have a common grievance against Respondent and it would be equitable and procedurally efficient to permit the consolidation. Both assert to have a common legal interest in the trademark rights on which the Complaint is based, Respondent’s conduct has affected their individual legal interests in a similar fashion, their substantive arguments made under each of the three elements of the Policy are common to the disputed domain name, and both are represented by a single representative.
The disputed domain name is confusingly similar to Complainant’s trademarks. The disputed domain name includes the entire wording from the GRUPO VIDANTA (and design) mark with the only difference that the Spanish term for group “grupo” in the disputed domain name is misspelled as “groupo”. In addition, the disputed domain name consists of the descriptive term “customer service”. Complainant’s mark VIDANTA cannot be found in a dictionary, neither in the English nor the Spanish languages.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent to register or use the disputed domain name and there is no connection between Complainant and Respondent.
Respondent is not commonly known by the disputed domain name, the terms “grupo vidanta”, “groupo vidanta”, “vidanta”, “vida” or any name reflected thereby. Complainant conducted a trademark search in the records of the MIIP which disclosed no pending applications or registrations by Respondent for a mark under those terms or incorporating any of those words. Complainant also conducted a trademark search in the records of the Office for Harmonization in the Internal Market of the European Union database and the records of the United States Patent and Trademark Office, with the same results.
The disputed domain name is inaccessible. When the disputed domain name is typed into the browser search window, the user is directed to a page indicating that the associated website cannot be displayed because it does not have an Index File. When the disputed domain name is typed into the search engine Google, the results do not yield any different result, but instead merely display unrelated search hits.
Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but intends to mislead customers and tarnish Complainant’s trademarks. Respondent has sent several fraudulent emails from the “[…]@” domain to customers of Desarrollo Marina Vallarta, S.A. de C.V., where Respondent asks for payments in the name of Grupo Vidanta in the form of allegedly due closing fees for re-sale of timeshare units customers previously purchased from it. Those emails depict Complainant’s GRUPO VIDANTA (and design) mark in the signature block and provide wire information for the requested dollar amounts. In addition, Respondent also contacts customers of Desarrollo Marina Vallarta, S.A. de C.V., by phone to discuss payments, all this to create the false impression that Respondent is acting on behalf of Desarrollo Marina Vallarta, S.A. de C.V., to defraud the latter’s customers, and to tarnish Complainant’s marks, name and business.
Because of such emails, customers are deceived into believing that a condition for re-selling their timeshare units is the payment of a closing fee despite the fact that Desarrollo Marina Vallarta, S.A. de C.V., does not charge such any such fee for closing on sale and assignment of timeshare units. Customers are likely to make the suggested payments to Respondent in the mistaken belief that such payments are necessary for the re-sale. From this follows that Respondent not only was aware of Complainant’s marks at the time Respondent registered the disputed domain name, but also intended to tarnish Complainant’s trademarks, and defraud customers.
The disputed domain name should be considered as having been registered and being used in bad faith.
Respondent had notice of Complainant’s well-known marks when Respondent registered the disputed domain name, but still registered and is using it without any legitimate purpose. Respondent registered the disputed domain name on March 25, 2013, over four years after Complainant’s registrations of the VIDANTA marks in 2009.
It is well settled 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.
Respondent sent emails from the “[…]@” domain to customers of Desarrollo Marina Vallarta, S.A. de C.V., to defraud such customers, to enrich Respondent, and to tarnish Complainant’s marks, name and business. Respondent’s actual and constructive notice of Complainant’s marks, the publicity of Complainant’s marks, and the fact that Respondent has been sending false emails to customers asking for payments is compelling evidence of Respondent’s bad faith.
Complainant requests that the disputed domain name be transferred to Complainant Desarrollo Marina Vallarta, S.A. de C.V. B. Respondent
Respondent did not formally reply to Complainant’s contentions. Respondent’s informal email communication to the Center on June 7, 2013, stated: “it has been removed”. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs 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”.
The filing of a single complaint by several complainants has been dealt with in some UDRP panel decisions. The issue is that the Policy uses the term “complainant” throughout, although it does not preclude the filing of a single complaint by several persons. This Panel has decided to accept the joint Complaint filed by both Desarrollo Marina Vallarta, S.A. de C.V., and Daniel Jesus Chavez Moran, taking into account that the latter (i) states to be a controlling member and founder of the first; and (ii) is the holder of the trademark registrations for VIDANTA and GRUPO VIDANTA (and design) which are allegedly licensed to the first.1 Further, this Panel points out that under the Policy it is not always necessary for a complainant to be the holder of trademark registrations, being generally accepted that a licensee may also assert rights over trademarks for purposes of these proceedings.2
The informal email communication from Respondent referred to above cannot be deemed as an official response since it does not comply with the requirements set forth in the Rules, paragraph 5(b). Even though after receiving said email communication the Center reminded Respondent of the due date to file a Response, Respondent chose not to make any further submission. Thus this Panel has decided not to take into account such email communication from Respondent.3 In any event, even if the Panel had considered this communication, it would not have changed the Panel’s findings.
The lack of a formal Response from Respondent does not automatically result in a favorable decision for Complainant. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed 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 disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.4 A. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the VIDANTA and the GRUPO VIDANTA (and design) trademarks.
The disputed domain name incorporates in its entirety the VIDANTA trademark.
Further, the disputed domain name incorporates almost identically the GRUPO VIDANTA (and design) trademark5. The only differences between this trademark and the disputed domain name are the addition of (i) the letter “o” in the disputed domain name resulting in a misspeling of “grupo” as “groupo”in the disputed domain name; and (ii) the words “customer” and “service”.
Such variations are not enough to avoid confusing similarity. Prior UDRP panel decisions support this Panel’s view (Pfizer Inc., A Delaware Corporation v. Phizer’s Antiques and Robert Phizer,WIPO Case No. D2002-0410; Sanofi-aventis v. Transure Enterprise Ltd, Host Master,WIPO Case No. D2008-1636; Société Air France v. Nice Whois Protection,WIPO Case No. D2012-1514).
Therefore, this Panel finds that the disputed domain name is confusingly similar to the trademarks over which Complainant has rights. B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that Respondent does not have any trademark or intellectual property rights in the disputed domain name, that it has no relationship with Respondent, that Respondent is not commonly known by the disputed domain name or by Complainant’s trademarks, and that it has not authorized Respondent to register or use the disputed domain name.
From the documentation that is on the file there is no indication that may lead to consider that Respondent might have rights or legitimate interests in the disputed domain name, but rather the opposite may be validly inferred.
Complainant asserts that Respondent is using the disputed domain name as an email address for sending emails to Complainant’s customers. The evidence in the file shows that such email communications reproduce Complainant’s GRUPO VIDANTA (and design) trademark and convey the impression that the sender is associated with Complainant. This Panel considers that Respondent is using the disputed domain name to misrepresent a relationship between Respondent and Complainant in order to deceive Complainant’s customers. Such use demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
In the aggregate, this Panel concludes that Complainant has met the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant contends that Respondent has registered and used the disputed domain name in bad faith.
The evidence in the file leads this Panel to infer that Respondent’s choice of the disputed domain name was deliberate with the intention of profiting from Complainant’s customers. It is clear to this Panel that Respondent should have been aware of the existence of Complainant’s trademarks and activities at the time she obtained the registration of the disputed domain name.
The fact that the disputed domain name incorporates Complainant’s GRUPO VIDANTA trademark with just a minor typographical error variation (practice commonly known as typosquatting6) followed by the words “customer” and “service”, coupled with the fact that Respondent’s email communications from the disputed domain name reproduce Complainant’s GRUPO VIDANTA (and design) trademark and that such email communications were sent to Complainant’s customers requesting some kind of payment, lead this Panel to conclude that Respondent registered and used the disputed domain name in bad faith.
Although there is no evidence that an active website is associated to the disputed domain name, this Panel considers that Respondent’s use of the disputed domain name might well be characterized as “phishing”, that is, the deceitful obtention of sensitive information or, in this case, of a payment, by trying to impersonate another by using a domain name confusingly similar to that another’s trademark.7
In light of all the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name be transferred to Complainant Desarrollo Marina Vallarta, S.A. de C.V.
Gerardo Saavedra
Sole Panelist
Date: July 19, 2013
1 See Asprey & Garrard Limited and Garrard Holdings Limited v. /domainnames.html,WIPO Case No. D2001-1501 and L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. See also paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0), available at /amc/en/domains/search/overview2.0/index.html.
2 See paragraph 1.8 of the WIPO Overview 2.0, Id.
3 Similar situations in LEGO Juris A/S v. Charlie Carmichael,WIPO Case No. D2010-1507 and in OLX Inc. and OLX S.A. v. Anis Ahmad,WIPO Case No. D2012-2416, where this Panel also declined to take into account an email communication as an official response.
4 See Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465, where it is established: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
5 It is well explored that a domain name can only consist of an alphanumeric string, and cannot incorporate figurative or device elements of a mark. See Duvetica S.r.l. v. xmyilong company / davis lin,WIPO Case No. D2011-1944.
6 See Go Daddy Software, Inc. v. Daniel Hadani,WIPO Case No. D2002-0568: “Typosquatting is virtually per se registration and use in bad faith”.
7 See BinckBank N.V. v. Helo Holdings LTD,WIPO Case No. DNL2010-0014: “Respondent in the present case apparently targeted Dutch students by pretending to be the Complainant and sending them an offer from an e-mail address associated with the Domain Name, with the objective of acquiring personal data. Phishing activities pose a severe threat to customers, trademark holders and third parties”.; The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado,WIPO Case No. D2012-2093: “Use of a disputed domain name for the purpose of defrauding Internet users by the operation of a “phishing” website is perhaps the clearest evidence of registration and use of a domain name in bad faith. The fact that the website is currently inactive does not negate such a finding”.
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