The Complainants are Daniel Jesus Chavez Moran of Zapopan, Jalisco, Mexico, and Desarrollo Marina Vallarta, S.A. DE C.V. of Guadalajara, Jalisco, Mexico, represented by Holland & Knight LLC, United States of America.
The Respondent is Registrant of , C/O Private Ranger Limited of Auckland, New Zealand / Hector Rangel of Guadalajara, Jalisco, Mexico. 2. The Domain Name and Registrar
The disputed domain name is registered with Instra Corporation Pty Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 22, 2014. On October 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 2014, 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 October 27, 2014 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 October 30, 2014.
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 November 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 1, 2014.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on December 12, 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.
The proceedings were conducted in English for that is the language of the disputed domain name's registration agreement, as confirmed by the Registrar. 4. Factual Background
The Complainant Desarrollo Marina Vallarta, S.A. de C.V. operates holiday resorts in Acapulco, Puerto Vallarta, Nuevo Vallarta, Mazatlán, Puerto Peñasco, Los Cabos, and Riviera Maya.
The Complainant Daniel Jesus Chavez Moran was the prior holder of trademark registrations in Mexico for VIDANTA and GRUPO VIDANTA, the earliest of which was filed on January 7, 2009, with a claimed date of first use being December 15, 2008, in relation to international classes 35, 37, 41, and 43. These trademark registrations are currently in the name of a third party, as found out by this Panel.
According to the Registrar's verification response, the disputed domain name was registered on August 2, 2014.
The disputed domain name has been inactive since registration. 5. Parties' Contentions A. Complainant
In summary, the Complainant contends as follows:
i. It is the Complainant's belief that it has rights to the service marks VIDANTA and GRUPO VIDANTA, and that those marks are well known;
ii. The disputed domain name has been formed by: a) co-opting the literal portions of the Complainant's VIDANTA and GRUPO VIDANTA marks in their entireties, and b) adding wording which suggests services directed to the Complainant's time share program members;
iii. The disputed domain name immediately conveys the false and misleading impression that it resolves to the Complainant's website, while being confusingly similar to the Complainant's VIDANTA and GRUPO VIDANTA service marks;
iv. The Complainant has not authorized the Respondent to register or use the disputed domain name and there is no connection between the Complainant and the Respondent;
v. The Respondent is not commonly known by the disputed domain name, the names VIDANTA or GRUPO VIDANTA, or any name reflected thereby;
vi. The Respondent has made no legitimate commercial or noncommercial use of the disputed domain name as there is no website available in connection therewith;
vii. The Complainant's VIDANTA and GRUPO VIDANTA marks were well-known prior to the date upon which the Respondent registered and used the confusingly similar domain name incorporating said marks;
viii. The Respondent has been sending fraudulent communications to the Complainant's time share program members from the email address "rentals@", thus creating the appearance of legitimate communications from the Complainant;
ix. The facts and circumstances of this case suggest that the Respondent has registered and used the disputed domain name with the bad faith intent to defraud the Complainant's customers by impersonating the Complainant to obtain, inter alia, payments and banking information from the Complainant's time share program members;
x. In the event that the Respondent denies responsibility for the fraudulent communications at issue, the Panel may conclude that the Respondent's passive holding of the disputed domain name constitutes sufficient evidence of bad faith use and registration according to prior UDRP decisions. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:
(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 is registered and is being used in bad faith. A. Preliminary Question – The Complainants' Legal Standing
Pursuant to paragraph 4(a)(i) of the Policy, in order to bring a UDRP Complaint, a complainant is required to show, as a gateway matter, that it has rights in a trademark or service mark upon which the Complaint is founded.
Only after this is accomplished, can the Panel proceed to examine whether the Complainant has established that: first, the trademark in which the Complainant holds rights is identical or confusingly similar to the disputed domain name (Policy paragraph 4(a)(i)); second, that the Respondent lacks rights or legitimate interests in the disputed domain name (Policy paragraph 4(a)(ii)), and third, that the Respondent registered and used the disputed domain name in bad faith (Policy paragraph 4(a)(iii)).
On the evidence and submissions on file, the Panel did not find any explanation as to the legal title of the Complainant Desarrollo Marina Vallarta, S.A. de C.V. in the VIDANTA and GRUPO VIDANTA service marks upon which the Complaint is based.
The Panel did notice that the panelist in Desarrollo Marina Vallarta, S.A. de C.V. / Daniel Jesus Chavez Moran v. Karla Vallejo,WIPO Case No. D2013-0962, stated (in section 4 of the decision) that the complainant Desarrollo Marina Vallarta, S.A. de C.V. "is a licensee" of the VIDANTA and GRUPO VIDANTA marks upon which the complaint in that case was based.
The panelist in that case however, also stated (in section 6 of the decision) that the trademark registrations for VIDANTA and GRUPO VIDANTA were "allegedly licensed" to Desarrollo Marina Vallarta, S.A. de C.V.
In view of those conflicting statements, this Panel turned to the Mexican Institute of Industrial Property ("IMPI")'s electronic and publicly accessible database "Marcanet" to validate the Complainant Desarrollo Marina Vallarta, S.A. de C.V.'s alleged licensee interest in the VIDANTA and GRUPO VIDANTA marks.1
Upon review of the electronic dockets for the trademark registrations 1202863 (GRUPO VIDANTA), 1082319 (VIDANTA), 1082320 (VIDANTA), 1135306 (VIDANTA), and 1135307 (VIDANTA) on which the Complaint is based, the Panel did not find any license agreement recorded in the name of the Complainant Desarrollo Marina Vallarta, S.A. de C.V.
In the course of its review, the Panel noticed that the Complainant Daniel Jesus Chavez Moran is not officially recorded as the current holder of the trademark registrations at issue. Instead, the name of a third party ("the third party") appears as the assignee of those trademark registrations.
In light of these findings, and pursuant to paragraph 12 of the Rules, the Panel issued Procedural Order No. 1, dated January 13, 2015, requesting the Complainants to produce evidence that they hold the trademark rights asserted in the Complaint, as required by paragraph 4(a)(i) of the Policy.
In response, the Complainants filed a supplementary submission confirming the Panel's finding that the Complainant Daniel Jesus Chavez Moran no longer holds the trademark registrations asserted in the Complaint as he had assigned his registered trademark rights in VIDANTA and GRUPO VIDANTA to his daughter, who is the current owner of the Mexican trademark registrations upon which the Complaint is based. In support of their explanation, the Complainants produce a Trademark Donation Agreement entered into by Mr. Chavez Moran and a third party (also by the surname Chavez) on December 12, 2013, concerning the trademark registrations at issue and others not relevant to this case. The Complainants further claim in their supplementary submission that the Complaint was filed in the name of Daniel Jesus Chavez Moran due to "inadvertent error", and relying on that admission, the Complainants seek leave from the Panel to amend the Complaint so as to replace Mr. Chavez Moran with the third party as the proper Complainant.
On the other hand, the Complainants submit that Desarrollo Marina Vallarta, S.A. de C.V., has at all times had rights in the VIDANTA and GRUPO VIDANTA marks as the exclusive licensee thereof. To prove that assertion, the Complainants produce a Trademark License Agreement dated October 21, 2014, entered into by the third party as licensor and Desarrollo Marina Vallarta, S.A. de C.V. as exclusive licensee of the trademark registrations at issue, as well as others not relevant to this case.
The Respondent did not reply to the Complainants' supplementary submission, as invited by the Panel in Procedural Order No. 1.
Noting that the assignment of rights over the VIDANTA and GRUPO VIDANTA marks took place on December 12, 2013, that is more than ten months prior to the filing of the Complaint, and finding the Complainants' "inadvertent error" inexcusable, the Panel does not allow the Complainants to amend the Complaint to replace one Complainant since they had plenty of time to prepare the Complaint, and more fundamentally, because they should have known of the trademark rights' assignment before filing the Complaint on behalf of a party without legal standing to pursue its claim under the Policy. See Smart Auctions Inc. v. E, CPR Case No. 0325 (the problem here is that the complainant has failed to prove a threshold issue: that the complainant has rights in and to the trademark SMARTAUCTIONS which can support this complaint).
Accordingly, the Panel finds that the Complainant Daniel Jesus Chavez Moran is not entitled to any remedy afforded by the Policy.
As for the Complainant Desarrollo Marina Vallarta, S.A. de C.V., the Panel has no reason to question the authenticity and effectiveness of the Trademark License Agreement submitted by the Complainants, in the absence of an objection from the Respondent.
Having so established, the Panel acknowledges that the Trademark License Agreement covers the VIDANTA and GRUPO VIDANTA marks asserted in the Complaint, and that said agreement predates the Complaint's filing date, even if just for one day. The Panel is therefore satisfied that at the time of filing the Complaint, the Complainant Desarrollo Marina Vallarta, S.A. de C.V. had rights in the VIDANTA and GRUPO VIDANTA marks in the sense of Policy paragraph 4(a)(i). See paragraph 1.8 of the WIPO Overview 2.0 (in most circumstances, a licensee of a trademark is considered to have rights in a trademark under the Policy).
In sum, the Panel finds that the Complainant Desarrollo Marina Vallarta, S.A. de C.V. alone has standing to pursue its claim under the Policy. As a result, any subsequent reference to "the Complainant" shall be understood as alluding to Desarrollo Marina Vallarta, S.A. de C.V. exclusively. B. Identical or Confusingly Similar
As explained in paragraph 1.2 of the WIPO Overview 2.0, the test for confusing similarity under the Policy involves a straightforward visual or aural comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent Internet user confusion.
To the Panel's eye, VIDANTA and GRUPO VIDANTA stand out in the disputed domain name as the Complainant's distinctive mark in the Mexican holiday industry.
In the Panel's opinion, the presence of the term "members" in the disputed domain name reinforces rather than lessens the likelihood of association of the Respondent's domain name with the Complainant's marks in the minds of the Internet users precisely because the Complainant operates a membership-based business. See Members Equity PTY Limited v. Unasi Management Inc.WIPO Case No. D2005-0383 (where a domain name includes generic or descriptive terms directly relevant to the complainant's business, the public is likely to assume that the domain name is that of the complainant or that it is somehow connected to the complainant's business).
It is widely accepted that a generic Top-Level Domain ("gTLD") such as ".com" may be excluded from the comparison of a complainant's trademark and a domain name.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's marks in the sense of Policy, paragraph 4(a)(i).
The Complainant has thus passed through the first gateway of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that "[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii you are 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."
As noted in paragraph 2.1 of the WIPO Overview 2.0, the burden is on the Complainant to establish the absence of the Respondent's rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306).
The Complainant represents not having any connection with the Respondent, and not having authorized use of its VIDANTA formative marks to the Respondent.
The Complainant further submits that the Respondent is not using the disputed domain name, either in relation to a bona fide offering of goods or services, or for a legitimate noncommercial purpose.
Finally, having conducted a trademark search on TMview, the Complainant asserts that the Respondent does not hold a trademark by the name of "Grupo Vidanta Members", nor is it known by the disputed domain name.
The foregoing representations and submissions are deemed credible by the Panel, and to the extent that the Respondent has failed to rebut any of the allegations against it, the Panel construes the Respondent's default in the instant proceedings as an admission of its lack of rights and legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000-1221 (finding that the respondent's failure to respond can be construed as an admission that it has no rights or legitimate interests in the disputed domain name) .
Furthermore, the Panel finds that the Respondent's use of the disputed domain name to defraud Complainant's customers, as elaborated in section 6.D infra, negates rights or legitimate interests within the meaning of the Policy.
Consequently, the Complainant has satisfied the second prong of paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a complainant to show that the domain name has been registered and is being used in bad faith in order to be successful in its complaint. Paragraph 4(b) of the Policy sets forth a number of non-exclusive grounds of bad faith registration and use:
"(i) circumstances indicating that you [the respondent] have registered or […] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your [the respondent's] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [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 your [the respondent's] website or location or of a product or service on your [the respondent's] website or location."
The Panel accepts that the Complainant holds registered trademark rights in Mexico over VIDANTA and GRUPO VIDANTA, dating back to January 7, 2009. On the contrary, the Panel does not accept the Complainant's "belief" that its VIDANTA and GRUPO VIDANTA marks are well-known.
That is because the Complainant failed to proffer suitable evidence in order for this Panel to assess the purported notoriety of the Complainant's marks through the parameters of the Mexican Industrial Property Act, which applies to both the Complainant and the Respondent by reason of their country of incorporation and/or domicile, as well as to the VIDANTA and GRUPO VIDANTA Mexican trademark registrations by reason of their country of grant and use.2
In spite of it, considering i) the inactivity of the website associated with the disputed domain name; ii) the goodwill attaching to the Complainant's VIDANTA and GRUPO VIDANTA marks; and iii) the fact that the Respondent is domiciled in the city where the Complainant has its corporate seat, the Panel finds plausible the Complainant's evidence showing that the Respondent has been using the email address "[…]@" to offer rentals of accommodation space supposedly pertaining to Complainant's time share program members, in Complainant's resorts without the Complainant's consent.
Because the Respondent's personalized email communications to Complainant's time share program members may involve deception, consumer fraud, phishing, passing off, trademark infringement and/or unfair competition, the Panel is persuaded that the Respondent registered and used the disputed domain name in bad faith within the meaning of the Policy. See Tetra Laval Holdings & Finance S.A. v. VistaPrint Technologies Ltd,WIPO Case No. D2014-1387 (the respondent has used the disputed domain name in scam email correspondence with a customer of the complainant creating the impression that the email was sent by an employee of the Complainant).
Lastly, as further indication of bad faith, it is to be noted that the Respondent is a repeat cybersquatter considering the decision of this Panelist in Desarrollo Marina Vallarta, S.A. DE C.V. v. Hector Rangel,WIPO Case No. D2014-1856, under identical facts, but with the Respondent targeting the Complainant's MAYAN RESORTS mark instead.
The Complainant has therefore discharged its burden in connection with 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, the Panel orders that the disputed domain name be transferred to the Complainant Desarrollo Marina Vallarta, S.A. de C.V.
Reynaldo Urtiaga Escobar
Sole Panelist
Date: January 28, 2015
1 According to paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0), a panel may conduct its own research into matters of public record if it deems this necessary to reach the right decision. Public sources include, notably, trademark online databases such as Marcanet.
2 In this regard, it has been reported that Mr. Chavez Moran's group markets seven brands, the best known of which is 'Mayan Palace'. See Gustavo Armenta's column published in El Financiero on January 14, 2015.
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