The Complainant is Blue Diamond Hotels and Resorts Inc. of St. Michael, Barbados, represented by Akerman LLP, United States of America.
The Respondent is Media Insight of Miami Beach, Florida, represented by Gaebe, Mullen, Antonelli, Esco & Dimatteo, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2014. On March 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 21, 2014, the Registrar transmitted by email to the Center its verification response confirming that the 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” 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 March 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2014. The Response was filed with the Center on April 16, 2014. The Complainant submitted a Supplemental Filing on April 25, 2014.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 1, 2014. 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 May 1, 2014, the Respondent also submitted a Supplemental Filing in response to the Complainant’s Supplemental Filing. 4. Factual Background
The Complainant is a hotel management company that owns and operates a number of resorts under the brands “Royalton”, “Memories” and “Grand Lido”. Before June 2012, it owned and operated five resorts in two countries.
From the Complaint, it appears that the Complainant has been operating the Royalton Panama Luxury Resort since the summer in 2010. In February 2013, it announced its intention to open the Royalton White Sands in Montego Bay, Jamaica and the Royalton Punta Cana in the Dominican Republic later that year in October or November 2013. It registered the domain name on December 2, 2005.
The Complaint also states that the Complainant has been operating 5-star MEMORIES resorts “for years” prior to 2012. In July 2012, it announced its purchase of the Grand Paradise Bavaro Beach Resort, Casino and Spa; a 1,029 room hotel in Punta Cana, the Dominican Republic. The announcement indicated the Complainant’s intention to rename the hotel as the Memories White Sands Beach Resort & Spa. It registered the domain name on January 25, 2010.
The Grand Lido resort in Negril, Jamaica has been operating since 1989. The Complainant acquired this resort and the associated trademark registrations in 2013. This acquisition also included the transfer to the Complainant of the domain name .
The Complainant estimates it spent approximately USD 1 million on advertising and promotion in 2011 2012 rising to USD 2 million in 2012-2013.
The Complainant has registered trademarks for ROYALTON LUXURY RESORTS as part of device marks in Panama since October 13, 2011 in respect of services in International Classes 35 and 43. The Complainant has also registered ROYALTON LUXURY RESORTS in a stylized form for services in International Class 43 in both the Dominican Republic and Jamaica. It also has pending applications in Canada.
The Complainant has registered MEMORIES HOTELS & RESORTS in stylized form or as part of a device mark as trademarks in Panama, Dominican Republic, Jamaica and Mexico. There are registrations in each country for services in International Class 43 and also, in Panama and Mexico, in International Class 35. The earliest of these registrations was registered on August 22, 2011.
The Complainant owns registered trademarks for GRAND LIDO (either in plain script or stylized or as part of a design mark) as a Community Trademark, in the United States of America, Benelux, Germany and the United Kingdom of Great Britain and Northern Ireland. The earliest of these (apart from the device marks) date from 1999.
The Complainant owns registered trademarks for BLUE DIAMOND HOTELS & RESORTS (either in plain script or as part of a design mark) in Jamaica in International Class 35. These trademarks were registered on October 10, 2011. The Complainant also registered the domain name on November 1, 2010.
The Respondent is a wholly owned subsidiary of Vacation Store. Vacation Store is a wholesale and retail travel agency. It sells and offers for sale vacation packages, hotel accommodation and other travel related services. The Respondent is Vacation Store’s “media division”. It registers domain names and operates websites on behalf of Vacation Store.
The Respondent registered the disputed domain names at various times between 2012 and 2013, starting with , and . As set out in Section D of the Complaint, the Respondent registered each disputed domain name within a few months (and sometimes as little as one month) of the Complainant’s announcements of the purchase of the hotels or plans to open the hotels referred to above. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(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 respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the 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.
Before addressing the substantive requirements under the Policy, the Panel deals with the Complainant’s request to file a Supplemental Filing.
Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.
It will be necessary to discuss the content of the Complainant’s Supplemental Filing further below. In broad terms, however, it contends that the Response contained doctored evidence. That is, it seeks to correct an error or to address something raised in the Response that could not reasonably have been anticipated in the Complainant. Accordingly, the Panel admits it into the record.
The proposed Supplemental Filing by the Respondent seeks to rebut that allegation of doctored evidence. Given the seriousness of the allegation made by the Complainant and the admission of the Complainant’s Supplemental Filing into the record, the Panel also admits the Respondent’s Supplemental Filing into the record. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trade mark.
The Complainant has proven ownership of the registered trademarks referred to in section 4 above. It is unnecessary in the circumstances to consider the Complainant’s claims to common law rights as well or the pending applications.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of each disputed domain name itself to the Complainant’s proven trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking that comparison, it is permissible in the present circumstances to disregard the “.com” component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc.,WIPO Case No. D2001-0252.
Apart from the “.com” component, the Complainant contends that each of the disputed domain names follows the formula:
[one of the Complainant’s trademark] + [a location and/or other descriptive feature].
So, for example, consists of the Complainant’s registered trademark, ROYALTON, the location, PUNTA CANA and the descriptor “resort”; consists of the words BLUE DIAMOND from the Complainant’s trademark and Punta Cana, a location where the Complainant operates hotels or resorts.
In each of the disputed domain names, the term from the Complainant’s relevant trademark serves as a key distinguishing feature and the relevant term is also an essential feature of the Complainant’s corresponding trademark. Some of the disputed domain names also include the element “splash”. The Complainant points out that its “Memories” resort in Punta Cana is actually advertised and promoted as the Memories Splash Punta Cana. So the inclusion of the “splash” element in the disputed domain name serves to reinforce the connection or association with the Complainant.
Accordingly, the Panel finds that the Complainant has established that each disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in each disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] 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) [the Respondent] (as an individual, business, or other organization) has been commonly known by the domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
The Complainant states that it did not authorize the Respondent to register any of the disputed domain names. In its Complaint, it states that it has never conducted any business with the Respondent. It stated further that it does contract with a number of parties (presumably tour operators and travel agents) to sell accommodation and services at its hotels. It did provide its rate contracts to Vacation Store with a proposal to enter into a contract, but that offer was never taken up until, according to the Complainant, after it was withdrawn when the Complainant sent a cease and desist letter to the Respondent. The Complainant also points out that the Respondent is not known by any of the disputed domain names. Nor are the disputed domain names derived from the Respondent’s name or any name by which it is commonly known. The Complainant then makes further submissions based on the use which is being made of the disputed domain names.
The disputed domain names fall into two broad categories: those which resolve to an active website and those which resolve to a “parking” page. For reasons which will become apparent, the Panel will deal with the two categories separately.
The disputed domain names which resolve to an active website are:
- ,
- ,
- ,
- ,
- ,
- ,
- ,
- ,
- ,
-
(collectively, the “active” disputed domain names).
The disputed domain names which resolve to a “parking” page are:
- ,
- ,
- ,
- ,
- ,
- ,
- ,
- ,
- ,
- .
(collectively the “parked” disputed domain names). C. The disputed domain names which resolve to an “active” website
Each of the active disputed domain names resolves to a website which promotes and offers for sale accommodation and other services at the Complainant’s relevant hotel.
For example, the disputed domain name resolves to a website promoting and offering bookings at the Complainant’s Royalton White Sands Resort in Montego Bay, Jamaica. The expression “Royalton White Sands Resort” is used very extensively on the website; so extensively that the Panel agrees with the Complainant’s allegation that a person arriving at the page could very well think they are dealing with the website operated by the hotel itself. This impression is reinforced by the frequency and prominence of the use of the expression “Royalton White Sands Resort” and the use of other phrases such as “[o]ur exclusive All-In Luxury concept”.
The Respondent points out that each of these websites actually offers and sells bookings at the Complainant’s relevant hotel.
The Respondent says its parent company, Vacation Store, has been registering domain names related to the hotels it promotes through its packages since the mid-1990s. According to the Respondent, the volume of business Vacation Store is able to direct to hotels and other travel related businesses is such that the hotels etc. are willing to offer it very preferential rates. In the course of this practice, in 1999 Vacation Store registered to promote its offerings for that hotel. This was done with the consent of the hotel operator at the time. When Vacation Store set up the Respondent, the Respondent took over and continued this part of the business although the bookings etc. continued to be made through Vacation Store.
According to the Respondent, in 2012 it was advised by Ms. Valenzuela of the impending sale of the Grand Paradise hotel to the Complainant. According to the Respondent, Ms. Valenzuela and others at the Complainant proposed that Vacation Store should register new domains to reflect the change in ownership and name. This appears also to have occurred in respect of the other hotels to which the active disputed domain names relate. At all events, the Respondent claims it specifically informed the Complainant of the disputed domain names or that the Complainant’s officers were well aware of them and from time to time submitted media kits for use on the websites or requested other changes to the content of the websites. After the Complainant sent its first cease and desist letter, it also stopped allowing Vacation Store to make bookings at its hotels. Vacation Store, however, made arrangements to continue buying accommodation and packages through another wholesaler. As a result, it is able to continue to offer bookings at the Complainant’s hotel from the relevant website.
While the precise details in respect of each active disputed domain name are not clear, the Panel notes that one or other of the emails submitted by the Respondent evidencing communications between officers of Vacation Store and Ms. Valenzuela refer to at least eight of the active disputed domain names.
In its Supplemental Filing, the Complainant contends that at least one of the emails, which refers specifically to four of the disputed domain names, has been doctored from the original email as sent and received by the insertion of the disputed domain names. This allegation was supported by production of a print out of an email that was said to be the original “undoctored” email supported by a declaration made by Ms. Valenzuela and another officer of the Complainant, Mr. Vega. The Complainant also denied that Ms. Valenzuela had any authority to bind or act on behalf of the Complainant.
In its Supplemental Filing in response to the Complainant’s Supplemental Filing, the Respondent submitted an affidavit from Mr. Blanco who the Respondent claims is an independent IT expert. In his affidavit, Mr. Blanco deposes that he has examined the emails in question (i.e., the emails as in possession of Vacation Store) and considers that they are the originals and not altered.
Of course, none of the witnesses have been tested by cross-examination. The Panel has to decide as best it can on the papers in the record.
The affidavit provided by Mr. Blanco, admittedly provided in a very short time, is in some respects not very detailed. For example, it does not set out in any detail his qualifications or experience. Nor does it disclose whether he has any pre-existing relationship with the Respondent or Vacation Store. The Panel is not in a position, however, simply to reject his evidence on technical grounds or as inherently improbable. It provides some, on the face of it, independent corroboration of the Respondent’s claims.
The declarations of Ms. Valenzuela and Mr. Vega, the Complainant’s commercial director to whom she apparently provided a copy, are opposed to the affidavits of Ms. Rosanna Metz-Mendez, who is the president of Vacation Store, and Mr. Alvarez, who is a vice-president of Vacation Store and president of the Respondent.
The documents provided by Mr. Vega and Mr. Alvarez do not really add anything probative to what is said by, respectively, Ms. Valenzuela and Ms. Metz-Mendez.
The emails in question are in Spanish and translations have not been provided by either party. It is plain from the emails (apart from the wording alleged to have been added by the doctoring), however, that what is being discussed is the content of materials to go on a website or websites being operated by the Respondent relating to the Complainant’s hotels. It seems unlikely that Ms. Valenzuela would have been discussing content on a website or websites and providing material for those websites in this manner without reviewing the website or websites in question. Ms. Valenzuela’s declaration does not address this point. The Complainant does not suggest it was dealing with the Respondent or Vacation Store in relation to other, authorized websites.
To the contrary, in its Complaint, the Complainant presented Vacation Store and the Respondent as people with whom it had not had any dealings before other than the provision of an (unaccepted) offer to enter into a contract.
The allegation that the email in question has been doctored is plainly a very serious matter. In the circumstances, the Panel is unable to accept the Complainant’s allegation that the email has been doctored by the Respondent. The Panel is not able to make a final determination one way or the other on this point given the limitations of these proceedings. There was on the record in this case, however, a course of dealing between Ms. Valenzuela and Vacation Store in relation to the contents of an active website or websites. Although the Complainant contends Ms. Valenzuela was not authorized to bind it in relation to these matters, the emails she sent, even in the “undoctored” form the Complainant relies on, identify her as the “Contract & Rates Manager, Inventory Control” at Blue Diamond Hotels and Resorts Inc.
The significance of this for present purposes is that the Complainant cannot succeed in establishing that the Respondent registered the active disputed domain names in bad faith as, on the record in this case, it appears that the Respondent (as agent for Vacation Store) believed it was registering them with the knowledge and concurrence of the Complainant.
This finding makes it strictly unnecessary to consider whether the nature and content of the Respondent’s websites qualifies as a bona fide offering of goods or services for the purposes of the second limb or use in bad faith for the purposes of the third limb. This is because under the Policy the requirements under the third limb of registration in bad faith and use in bad faith must be satisfied conjunctively. The way a domain name is used may enable inferences to be drawn about the purpose of registration, but the Panel must be satisfied the registration was in bad faith as well as the use being in bad faith: see Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470, InnoGames GmbH v. B, Inventory Management,WIPO Case No. D2011-0085 and the cases there discussed. D. The disputed domain names which resolve to a “parking” page – rights or legitimate interests
It is not clear from the Response whether the Respondent claims it was authorized to register and use these disputed domain names also. If it does, the materials it submitted do not appear to refer to them specifically. Moreover, if it (or Vacation Store) was encouraged to register them, it does not explain on what basis or why they do not resolve to active websites.
Instead, shortly before the Complaint was filed, the parked disputed domain names resolved to a “parking” page which included click-through advertising links to hotels and resorts which competed with the Complainant’s business.
The Respondent says it did not authorize this; it was something done by the Registrar. The preponderance of views under the Policy, however, is that a respondent will normally be held responsible for content appearing on a website which its domain name resolves to even if it does not exercise direct control over that content: WIPO Overview 2.0 paragraphs 2.6 and 3.8. The Respondent has not provided any evidence of the steps, if any, it took to try to have the links removed. The absence of such evidence is all the more compelling as the “parking” pages in question do not have such links at the time this decision is being prepared.
The use of the parked disputed domain names to generate click through revenues from advertising by competitors to the Complainant does not qualify as a bona fide offering of goods or services under the Policy. Accordingly, paragraph 4(c)(i) is not available to the Respondent. The other sub-paragraphs of paragraph 4(c) also do not apply. In these circumstances, the Respondent has failed to displace the Complainant’s prima facie case of lack of rights or legitimate interests in the parked disputed domain names. The Complainant, therefore, has established the second requirement under the Policy in respect of the parked disputed domain names. E. The disputed domain names which resolve to a “parking” page – bad faith registration and use
As discussed in section 5D above, the way in which the Respondent has used the parked disputed domain names constitutes use in bad faith under the Policy. The parked disputed domain names have been used to generate revenues from click through advertising; that is, to take advantage of the trademark significance of the parked disputed domain names.
Similarly, as explained in section 5D above, the justification advanced by the Respondent for registration of the active disputed domain names does not apply to the parked disputed domain names.
In the absence of that justification and having regard to the way they have been used, the Panel finds that the parked disputed domain names were registered in bad faith.
Accordingly, the Complainant has also established the third requirement under the Policy in respect of the parked disputed domain names. 6. Decision
For the foregoing reasons
(a) in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , , , , , , , , and be transferred to the Complainant; and
(b) the Complaint is otherwise denied.
Warwick A. Rothnie
Sole Panelist
Date: May 15, 2014
Full & Egal Universal Law Academy