The Complainant is Anfi Sales, S.L. of Las Palmas, Spain, represented by J & A Garrigues, S.L.P., Spain.
The Respondent is Phil Watson, Worldwide Timeshare Hypermarket Ltd / A of Bournemouth, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Lester Aldridge, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with Webfusion Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2013. On May 31, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 4, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 7, 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 the Respondent of the Complaint, and the proceedings commenced on June 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2013. The Response was filed with the Center on June 25, 2013.
The Center appointed Alfred Meijboom as the sole panelist in this matter on July 4, 2013. 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.
On July 10, 2013 the Complainant sent a supplemental filing to the Center, and the Respondent sent a supplemental filing to the Center on July 11, 2013. 4. Factual Background
The Complainant is part of the ANFI Group, which is a group of companies dealing with, among other activities, the operation of timeshare hotels, apartments and properties.
The Complainant holds the following Community trademarks, registered for real estate affairs and/or travel arrangement and/or services for providing food and drink; temporary accommodation:
- The device mark CLUB GRAN ANFI (No. 2722759), registered since 2003;
- The word mark ANFI (No. 2738441), registered since 2004;
- The word mark ANFI VACATION CLUB (No. 2738425), registered since 2004;
- The device mark ANFI DEL MAR (No. 3848901), registered since 2005;
- The device mark ANFI DEL MAR (No. 4130621), registered since 2006;
- The word mark ANFI DEL MAR (No. 4130605), registered since 2006;
- The device mark ANFI (No. 4130514), registered since 2006.
The Complainant has registered, inter alia, the domain name .
The Respondent is a timeshare re-seller.
According to the WhoIs-information as confirmed by the Registrar, the disputed domain name (hereinafter the “Domain Name”) was registered to the Respondent on November 23, 2010.
Pending these proceedings the Respondent has taken the website linked to the Domain Name offline. At the time the Complaint was filed the Domain Name linked to a website offering consumers the services and facilities of the ANFI Groups resorts. On top of the homepage the ANFI DEL MAR Community device mark (No. 3848901) was displayed together with the text “Powered by Worldwide Timeshare Hypermarket”, displaying the Respondent’s device mark. The Respondent’s address, registered company number and its VAT number were mentioned at the foot of the homepage. 5. Parties’ Contentions A. Complainant
In short the Complainant states that:
- The Domain Name is confusingly similar since it incorporates the ANFI trademark in its entirety and the added word “timeshare” is descriptive of the Complainant’s activities.
- The Respondent has no rights or legitimate interests in the Domain Name. In reply to the Respondent’s Response the Complainant has contested that the Respondent has had any kind of contractual relationship with the Complainant and that the Respondent has had the Complainant’s consent to use the trademark within the Domain Name.
- The Respondent has registered and used the Domain Name in bad faith, since it has deliberately caused confusion among Internet users with the intention of making a good profit by the offering of the same services, in the same industry, in the same geographical area and in the same market as the Complainant. B. Respondent
In reply to the Complaint the Respondent asserts, inter alia, the following:
- In 2008 the Respondent met with a number of people of the Complainant’s company. At that meeting the Respondent showed a dedicated micro-site, hosted at the Domain Name, which it proposed to be dedicated to the re-sale of the Complainant’s products by the Respondent. One of the people present at the meeting, now no longer working for the Complainant, confirmed that such meeting took place “to explore ways of working together more closely to our mutual advantage”.
- After the meeting the Respondent emailed its presentation to Mr. Trujillo of the Complainant’s company.
- The Respondent understood that the individuals to whom it had explained the business model had actual authority to bind the Complainant, or alternatively that they had ostensible authority to do so. Therefore, the Respondent’s position is that the Complainant agreed to the Respondent’s use of the Domain Name.
- In November 2010 the registration of the Domain Name was transferred from the Respondent’s IT company in the name of the Respondent.
- From 2008 until receipt of the Complainant by the Respondent in 2013 the Respondent deployed the same business model under the Domain Name. Since the Complainant has never objected to the Respondent’s use, knowing that the Respondent was operating the website under the Domain Name, the Complainant seemed to have provided continuing agreement to the Respondent’s use of the Domain Name.
- After receipt of the Complaint the Respondent approached the Complainant expressing surprise about the Complaint. Firstly, because the Complainant had agreed with the use of the Domain Name in the past. Secondly, because the Respondent felt that parties had a good relationship and this problem could have been solved without the lodging of a formal complaint with the Center. The Respondent offered to transfer the Domain Name to the Complainant.
- By email of June 6, 2013, Mr. Trujillo answered: “The Anfi legal department is in charge of this issues and honestly I am not aware of this matters. I am copying Mr. Emilio and I am completely sure you will find the proper solution taking into account of our good business relationship”.
- For all of these reasons, the Respondent is a licensee of the Complainant’s trademark and is entitled to use it in the context of the Domain Name.
- Furthermore, the Complainant has consented to the Respondent’s use of the Domain Name.
- Moreover, the use of the trademark in the Domain Name is for the purpose of identifying the Complainant’s goods or services. As such the Respondent’s use is in accordance with honest commercial practice and does not take unfair advantage of or cause damage to the distinctive character of the Complainant’s trademarks. 6. Discussion and Findings A. Remedy Sought
The Complainant has requested the Panel to issue a decision that the Domain Name be transferred to the Complainant.
In its Response under paragraph III “Response to Statements and Allegations Made in Complaint” the Respondent has requested the Panel to deny the remedies requested by the Complainant. However, under paragraph IV “Consent to Remedy” the Respondent states: “Without prejudice to the position set out in paragraph 5 above, and without any admission to liability in respect of the matters complained of, the Respondent consents to the remedy requested by the Complainant and agrees to cancel the disputed domain name on the basis of Party agreement, without need for a decision being rendered by the Administrative Panel”.
Considering that the Complainant has requested the transfer of the Domain Name and the Respondent has offered to cancel the registration of the Domain Name, while the Complainant in reply to the Response has not withdrawn the Complaint nor submitted a request for suspension of the proceeding, but instead has submitted a supplemental filing as to the heart of the matter, the Panel concludes that the Parties have not (yet) reached an agreement on either transfer or cancellation of the Domain Name so that a decision needs to be rendered. B. Complainant’s Supplemental Submission
In previous UDRP cases it has been decided that panels as an exception may accept unsolicited supplemental filings under paragraph 10(a) of the Rules, which provides the Panels with a broad power to conduct the administrative proceeding in the manner it considers appropriate under the Policy and Rules. Whether it is appropriate to submit a supplemental submission will depend on its relevance to the issues in the case, whether the panel considers the content of the submission essential to reaching a fair decision on the facts, and whether the submission could have been made earlier and, if so, why it was not (see, inter alia, NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A.,WIPO Case No. D2008-1984).
In this case, the Complainant’s supplemental submission is its reply – dated June 25, 2013 – to the Respondent’s letter of June 13, 2013, submitted by the Respondent. The Respondent stated that when filing its Response on June 25, 2013 it had not yet received a reply from the Complainant. The Complainant’s reply is relevant to the issue whether or not the Respondent holds any rights or legitimate interests in the Domain Name and could obviously not be submitted when filing the Complaint on May 31, 2013. Therefore, the Panel admits the Complainant’s supplemental submission into the proceeding.
Given the outcome of the decision, and since the Parties will not be prejudiced, and procedural efficiency will be better served, the Panel has decided not to provide the Respondent with an opportunity to reply to the Complainant’s supplemental submission in this case. C. Analysis of Complaint
In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. D. Identical or Confusingly Similar
It is not in dispute between the Parties that the Domain Name is confusingly similar to the Complainant’s ANFI Community trademarks. The Domain Name incorporates the ANFI Community word mark (No. 2738441) in its entirety and the added word “timeshare” is descriptive of the Complainant’s activities and therefore does not decrease the confusing similarity. For these reasons, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights. E. Rights or Legitimate Interests
The Complainant is part of the ANFI Group which deals in timeshare hotels, apartments and properties. The Respondent is active in the re-sale of timeshare properties. The Complainant states that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent, however, has put forward that it should be considered to be a licensee, because the Complainant has consented to its use of the Domain Name. In this respect the Respondent refers to a meeting with people of the Complainant’s company in 2008. One of the people that was present during the meeting, according to the Respondent, has confirmed that the meeting took place and that the Parties discussed working together. The Respondent states that it was very surprised to receive the Complaint, since it had been using the Domain Name since 2008 without the Complainant ever mentioning that there was a problem. After receipt of the Complaint the Respondent approached Mr. Trujillo of the Complainant’s company expressing its surprise. The Respondent has the impression that the Complaint may have been a misunderstanding, since the deal was agreed upon in 2008 and the Parties’ good relationship ever since. To solve the matter the Respondent offered to cancel the Domain Name. By email of June 6, 2013, Mr. Trujillo referred the matter to the legal department writing “I am completely sure you will find the proper solution taking into account of our good business relationship”.
In reply to the Respondent’s statements that the Complainant had consented to its use of the Domain Name over the years and that therefore this is not a matter of infringing use, the Complainant has simply denied that there is any kind of contractual relationship between the Parties. However, the Complainant has not contested that a meeting between the parties took place in 2008 during which the Domain Name in relation to the Respondent’s business model was discussed.
Furthermore, the Complainant asserts that it is “absolutely intolerable” to interpret Mr. Trujillo’s email of June 6, 2013 as a confirmation that there was an agreement about the Domain Name. However, the Complainant fails to explain how to interpret the mentioning of “our good business relationship” by Mr. Trujillo and the fact that he does not in any way refute the facts presented by the Respondent.
Moreover, the Panel wonders why the Complaint was filed in May 2013, while the Domain Name was registered to the Respondent in 2010, and according to the Respondent has been used since 2008. The Parties are both active in the timeshare business and the email contact between them shows that they at least knew each other before the Complaint was filed. In that light the Panel finds it hard to imagine that the long-term use of the Domain Name by the Respondent would have gone unnoticed by the Complainant for all these years. The Panel is of the opinion that the Complainant has failed to give a reasonable explanation for this time course.
Lastly, the Panel takes into account that the Respondent appears to have used the Domain Name in line with what in previous UDRP decisions has been considered as a bona fide offering of goods or services (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, which many panels have interpreted as applying not only to authorized but also unauthorized resellers). The Respondent has used the Domain Name only for the actual offering of the Complainant’s products and services. While the website did not appear to contain a prominent disclosure regarding the Respondent’s relation with the Complainant, in this Panel’s view, the presentation of the website made it clear that it is powered by the Respondent and the presentation did not suggest that it was the Complainant’s official website. No other domain names incorporating the Complainant’s trademark appear to be held by the Respondent and the Complainant itself holds, inter alia, the domain name , so this is not a case of depriving the trademark owner of reflecting its own trademark in a domain name or of trying to “corner the market” in domain names that reflect the ANFI trademark.
For the reasons as set forth above, the Panel is not convinced that the Respondent is untruthful. As a result, the Panel comes to the conclusion that there is a serious question to be tried as to whether or not the Respondent has rights or legitimate interests in the Domain Name (or had rights or legitimate interests given that pending the current proceedings the Respondent has taken down the website). On the basis of the evidence put forward in these proceedings, that question cannot be decided in the Complainant’s favor. Consequently, the Panel holds that the Complainant has failed to satisfy the second element in paragraph 4(a) of the Policy. F. Registration and Use in Bad Faith
For similar reasons as those set out above, the Panel is not convinced that the Domain Name has been registered in bad faith and is being used in bad faith either. 7. Decision
For the foregoing reasons, the Complaint is denied.
Alfred Meijboom
Sole Panelist
Date: July 24, 2013
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