Complainant is Viajes Beda S.A. de C.V. of Cancun, Mexico, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Scott Schwanke of Northbrook, Illinois, United States of America (“United States” or “U.S.A.”). 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2016. On January 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2016, 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 Complainant on January 8, 2016 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 January 8, 2016.
The Center verified that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 2, 2016.
The Center appointed Roberto Bianchi as the sole panelist in this matter on February 8, 2016. 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. 4. Factual Background
Complainant, a Mexican company founded in 1984, is a leading travel agency in Cancun and the Riviera Maya. Through its websites Complainant offers online travel and booking services, rental car reservations and travel destination research services. In 2013 Complainant received over one million reservations.
Complainant owns the following trademark registrations:
JURISDICTION
TRADEMARK
REG.
NUMBER
REG.
DATE
INTNTL. CLASS
MEXICO
BEST DAY & DESIGN
438508
February 18, 1993
35
MEXICO
BEST DAY & DESIGN
438507
July 30, 1993
39
MEXICO
BEST DAY
1077210
May 13, 2008
35
MEXICO
BEST DAY
1115026
August 13, 2009
39
U.S.A.
BEST DAY & DESIGN
3302208
October 2, 2007
39, 43
U.S.A.
BESTDAY.COM
4572219
July 22, 2014
39, 43
U.S.A.
BEST DAY
4725230
April 21, 2015
39, 43
The disputed domain name was registered on October 14, 2015. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. By virtue of its registrations, Complainant is the owner of the BEST DAY trademarks. In creating the disputed domain name, Respondent has added the generic, descriptive term “Cancun” to Complainant’s BEST DAY trademark, thereby making the disputed domain name confusingly similar to Complainant’s trademark. Complainant was founded in Cancun, Mexico in 1984 and is currently the largest travel agency in Cancun and the Riviera Maya. The fact that the term “Cancun” is closely linked and associated with Complainant’s brand and trademark only serves to underscore and increase the confusing similarity between the disputed domain name and Complainant’s trademark.
Respondent has no rights or legitimate interests in respect of the disputed domain name. The granting of trademark registrations in the United States and Mexico to Complainant for the BEST DAY trademark is prima facie evidence of the validity of the term “best day” as a trademark, of Complainant’s ownership of this trademark, and of Complainant’s exclusive right to use the BEST DAY trademark in commerce or in connection with the goods and/or services specified in the registration certificates.
Respondent is not sponsored by or affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names.
Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests.
The disputed domain name was subject to a phishing suspension request executed December 15, 2015. Here, Respondent had been using a confusingly similar domain name to create the impression that Respondent’s website and email was authorized and administered by Complainant, for the sole purpose of sending emails containing fake purchase offers which had the appearance of coming from Complainant. The emails sent by Respondent thanked recipients for their time and attached a proposal offer to purchase the recipients timeshare condo. In the proposal, Respondent requested recipient’s signature and stated that an escrow service would be in contact to manage the transaction at which point Respondent would then attempt to obtain sensitive financial information from the recipient. By sending emails from the disputed domain name, Respondent is attempting to pass itself off as Complainant, which provides additional evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent currently is using the disputed domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business, such as links for hotels and hotel reservations in Cancun. Presumably, Respondent receives pay-per-click fees from these linked websites. Prior UDRP decisions have consistently held that respondents that monetize domain names using pay-per-click links have not made a bona fide offering of goods or services. Thus, Respondent is not using the disputed domain name to provide a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
The disputed domain name was registered and is being used in bad faith. Complainant and its BEST DAY trademark are known internationally, with trademark registrations across numerous countries. Complainant has marketed and sold its goods and services using this trademark since April 27, 1984, which is well before Respondent’s registration of the disputed domain name on October 14, 2015. By registering a domain name that incorporates Complainant’s BEST DAY trademark in its entirety and adds the generic, geographically descriptive term “Cancun”, Respondent has created a domain name that is confusingly similar to Complainant’s trademark, as well as its domain name. Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. Reinforcing this is the fact that Respondent used the disputed domain name in a phishing attack which involved sending fake purchase proposals via email, from the address “[ ]@”, which has the appearance of being sent by Complainant. In light of the facts set forth within this Complaint, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” Complainant’s brands at the time the disputed domain name was registered. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The mark BEST DAY is so closely linked and associated with Complainant that Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith – where a domain name is “so obviously connected with such a well-known name and products,…its very use by someone with no connection with the products suggests opportunistic bad faith.” See Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226. Further, where the disputed domain name incorporates Complainant’s BEST DAY trademark in its entirety while adding the generic, geographically descriptive term “Cancun”, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its […] trademarks”. See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.
Furthermore, at the time of registration of the disputed domain name, Respondent knew, or should have known, of Complainant’s trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. In addition, performing searches across a number of Internet search engines for “best day cancun” returns multiple links referencing Complainant and its business.
As mentioned above, the disputed domain name was the subject of a takedown request executed on December 15, 2015. Before this, Respondent had registered and used the disputed domain name for purposes of launching a phishing attack, which is clear evidence of bad faith registration and use.
The disputed domain name currently resolves to a website featuring links to third-party websites. By creating this likelihood of confusion between Complainant’s trademarks and the disputed domain name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of Complainant’s trademarks in order to increase traffic to the disputed domain name’s website for Respondent’s own pecuniary gain, as evidenced by the presence of multiple pay-per-click links posted to Respondent’s website.
Respondent has ignored Complainant’s attempts to resolve this dispute outside of this administrative proceeding. Past UDRP panels have held that failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has shown to the satisfaction of the Panel that it owns registrations for the BEST DAY mark in Mexico and the United States, i.e., that it has rights in this mark. See section 4 above.
The Panel notes that the disputed domain name includes this mark in its entirety, just adding the geographic term “Cancun”, and the “.com” Top-Level Domain. It is well established that the addition of a generic and geographic term to a mark generally is inapt to distinguish the domain name from the mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9. Moreover, in the instant case the addition of “Cancun” to Complainant’s mark rather reinforces the association of the disputed domain name with the mark since Complainant is based precisely in Cancun, Mexico.
The Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark BEST DAY. B. Rights or Legitimate Interests
Complainant has shown that on November 25, 2015, the disputed domain name was used in the email address “[ ]@” to send an email to a couple of owners of time-sharing in a condo, offering them to purchase their 6-weeks share for USD 238,600, and asking them to put their signature in an attached form. This email address appeared on the attached proposal sheet next to “www..mx”, i.e. the official website of Complainant, thus creating the impression that both are related. The authors of the proposal presented themselves as acting on behalf of “BestD©, formerly known as (VIAJES BEDA CANCUN S.A. DE C.V.)”. In the Panel’s opinion, this evidence shows that whoever was in control of the disputed domain name at the time of the proposal, used it to fake an identity as Complainant’s successor, impersonating Complainant.
Thus, at a minimum, Respondent used the disputed domain name by creating confusion amongst Internet users presumably looking for Complainant, and to unfairly compete with Complainant in providing services similar to those offered by Complainant. The Panel believes that Respondent’s behavior also constituted phishing, and possibly a preparatory action to commit fraud. The Panel believes such use cannot be in connection with a bona fide offering of goods or services under Policy, paragraph 4(c)(i), nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy, paragraph 4(c)(iii). See Jupiter Investment Management Group Limited v. N/A, Robert Johnson,WIPO Case No. D2010-0260 (“[t]he adoption and use of a domain name for the purposes of such impersonation does not provide a right or legitimate interest under the Policy”.); see also Thomas Sabo GmbH & Co. Schmuckhandel KG v. A&L, Ran Hill,WIPO Case No. D2010-0731 (“it is established that the Respondent commercially used the disputed domain names without the Complainant’s consent or authorization to divert Internet traffic to commercial websites through which it apparently identified itself as the Complainant. Such use is not a bona fide offering of goods or services or a legitimate noncommercial use or fair use of the domain names”).
The Panel also notes that according to the relevant WhoIs data the Respondent is the registrant of the disputed domain name, and there is no evidence whatsoever that it is known – commonly or otherwise – by the disputed domain name, which precludes the application of Policy, paragraph 4(c)(ii).
In the Panel’s opinion, Complainant’s contentions and evidence are sufficient to make out a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain name. Once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. Otherwise, a complainant is deemed to have satisfied the Policy, paragraph 4(a)(ii). See WIPO Overview 2.0, paragraph 2.1. In the instant case Respondent is in default, and has not provided any evidence in its own favor.
For these reasons the Panel finds that the second element of the Policy is met. C. Registered and Used in Bad Faith
Complainant has shown that the disputed domain name was registered in 2015, over thirty years after the first use of the BEST DAY mark by Complainant’s predecessors (1984). In the Panel’s opinion, Respondent’s use of the disputed domain name in a phishing scheme as shown above, also demonstrates that Respondent not only knew of Complainant, its business and its BEST DAY marks, and that it targeted them at the time of registering the disputed domain name, but also attempted to pass itself off as Complainant. In the circumstances of this case this means that the registration of the disputed domain name was in bad faith.
The Panel agrees with previous UDRP panels that phishing is a use in bad faith of the disputed domain name. See for instance The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado,WIPO Case No. D2012-2093 (“[u]se 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”). See also MasterCard International Incorporated v. Jose Carlos Bisognin Panzenhagen,WIPO Case No. D2009-0864 (“[i]n addition, Complainant has shown that on May 22, 2009, Respondent posted, on a web page imitating Complainant’s original website, and under a legend in Portuguese which may be translated as ‘Welcome to MasterCard Brazil’, a form that Internet users were induced to fill with personal information related to their credit cards, such as full name, name as printed on the card, card number, expiration date, verification code, etc. Although this alone might not be sufficient to conclude that Respondent is in fact involved in a ‘phishing’ scam, in the context of these proceedings there is little room for this Panel to infer anything else than Respondent most likely attempted to deceive inadvertent Internet users, by inducing them to believe that they were connected with a legitimate MasterCard website, and thus to provide personal financial information to the operator of this fake website, which is a behavior in bad faith consistent with “phishing” and/or identity-theft purposes. See Halifax plc v. Sontaja Sunducl,WIPO Case No. D2004-0237 (‘[E]vidence of duplication in the Complainant’s trading get-up, branding and imagery is direct any evidence of the domain name in being used in bad faith. In particular, the availability of the online registration pages, and the apparent potential for ‘phishing’ and obtaining information by deception, is not just evidence of bad faith but possibly suggestive of criminal activity. It is accepted that on this basis there is no other possibility than the site being registered in bad faith)’”).
Presently, the website at the disputed domain name only displays a legend stating, “Bluehost, Affordable, Reliable Web Hosting Solutions – Courtesy of ”. In the Panel’s opinion, this suggests that Respondent does not contemplate any different use for the disputed domain name other than in a phishing scheme. Further, according to the courier entrusted with delivering the written notice of the Complaint at the address furnished by Respondent at the time of the domain name registration, the parcel could not be delivered on the ground of “wrong address”, which suggests that Respondent either furnished a false address at the time of registration, or that it later failed to provide a correct address, as it was bound to. Finally, the Panel notes that Respondent failed to respond to Complainant’s cease and desist letter, as it also failed to submit a response in this proceeding. In the Panel’s view all these facts considered together also suggest bad faith.
For these reasons, the Panel finds that the disputed 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 disputed domain name be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: February 16, 2016
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