The Complainants are Paola Stephania Ornelas Magaña and Irma Michelle Ornelas Magaña of Cancun, Quintana Roo, Mexico, represented by Santistevan & Duclaud Abogados, Mexico.
The Respondent is Media Insight of Miami Beach, Florida, United States of America ("United States"), represented by Gaebe, Mullen, Antonelli, Esco & DiMatteo, United States. 2. The Domain Names and Registrars
The disputed domain name is registered with Tucows Inc. The disputed domain name is registered with GoD, LLC. (the "Registrars"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 27, 2017. On June 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 27, 2017, the Registrars 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2017. The Response was filed with the Center July 20, 2017.
The Center appointed Christopher J. Pibus, Luis C. Schmidt and The Hon Neil Brown Q.C. as panelists in this matter on August 20, 2017. The Panel finds that it was properly constituted. Each member of 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
The Complainants operate resorts in Cancun Mexico under the names Golden Parnassus Paradise of the Gods and Great Parnassus Paradise of the Gods. It is unclear from the Complaint exactly when these resorts opened for business, but trademark applications were filed in Mexico for the design versions of each name on November 25, 2005. Both marks were registered on March 16, 2006 (Mexican Trademark Registration Nos. 924268 and 924267 respectively). The trademarks were assigned to the Complainants on February 17, 2015.
Respondent began its business in 2000 as the media division for a wholesale tour operator under the name "Vacation Store". Respondent provides travel packages for destinations outside the United States. These packages typically involve flights and accommodation. As a wholesale tour operator, Respondent enters into contractual relationships with hotels and other providers to create the travel packages. Respondent then sells the packages to travel agencies who in turn sell them to consumers.
In 2006, Respondent (through Vacation Store) began a business relationship with Complainant that involved the booking of rooms at Complainants' Cancun properties as part of travel packages.
The disputed domain names were registered by the Respondent as follows:
on January 23, 2006; and on October 16, 2006.
Respondent's booking services for the Complainants' resorts used the disputed domain names to support promotional websites for the resort properties. Complainants and Respondent entered into contracts for these booking services.
Respondent actually owns registered trademarks in the United States for the disputed domain names as follows:
GOLDENPARNASSUSCANCUN.COM Registration No. 4,484,907
GREATPARNASSUSCANCUN.COM Registration No. 4,278,601
for use in association with travel booking and reservation services. 5. Parties' Contentions A. Complainant
Complainants claim registered rights in the design trademarks GOLDEN PARNASSUS PARADISE OF THE GODS and GREAT PARNASSUS PARADISE OF THE GODS, by virtue of the Mexican Registrations set out in paragraph 4. The disputed domain names are alleged to be confusingly similar to those registrations.
In terms of rights and legitimate interests, Complainants argue that Respondent is using their trademarks without their consent, and that Respondent's use is not legitimate because they had applied to register their marks before Respondent registered the disputed domain names. Complainants submit that Respondent is unfairly misleading consumers to believe Complainants' hotel services are the same or related to the advertising services offered by Respondent on its website, which the Complainant characterizes as "totally false".
In their submissions, Complainants do not mention their pre-existing commercial arrangements with Respondent to provide booking services for their hotels.
With respect to bad faith, Complainants claim that Respondent acquired the disputed domain names in 2006 primarily for the purpose of "renting" the domain names to Complainant for significant amounts of money. This claim arises out of a negotiation in 2015 when Complainant attempted to "recuperate" the ownership of the domain names from Respondent.
Complainants argue that Respondent was fully aware of Complainants' hotel services and is disrupting Complainants' business by using confusing domain names. Complainants claim to be losing clients and consumers, and do not acknowledge the prior history of customers referred to their properties by virtue of Respondent's booking services. B. Respondent
The Respondent contests all grounds of the Complaint, relying on a number of facts which were not disclosed by Complainants relating to the long history of business dealings between the parties.
With respect to trademark rights, Respondent submits that the registered trademarks of Complainants are different from the disputed domain names, and are comprised of generic words. Respondent itself actually holds its own trademark registrations in the United States for the disputed domain names.
In terms of rights and legitimate interests, Respondent asserts that it has been making fair use of the domain names since 2006, with the full approval and consent of Complainants, by providing hotel booking services which brought significant benefits to Complainants' hotel properties. Respondent has provided sworn evidence in the form of two affidavits from its senior executives, supported by documents, to show the long standing business relationship between the parties. These documents include annual contracts for hotel room rates, and agreements to share advertising expenses for the Cancun properties in question. The evidence includes e-mail correspondence whereby Respondent and Complainant discuss the contents and approved up-dates of the Respondent's websites for the hotels.
With respect to bad faith, Respondent relies on the evidence set out above to establish that it registered and used the disputed domain names in good faith and with the full approval and active co-operation of Complainants. Respondent submits that its practice of registering domain names related to hotel properties is justified by its business model which primarily involved the promotion of travel packages to those resorts, by means of commercial arrangements with hotel owners. Respondent points to at least 9 years of mutually beneficial business referring customers to Complainants' resorts with the support and assistance of Complainants themselves. Complainants' conduct in actively working with Respondent in this commercial relationship, without complaint, is not consistent with the recently raised objection of bad faith. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, Complainant must establish each of the following elements:
(i) The disputed domain names are identical or confusingly similar to the trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interest in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Complainants have established ownership of two relevant design trademarks, registered in Mexico, which include the word elements GRAND PARNASSUS and GREAT PARNASSUS among other features. The Panel is prepared to find that these word elements constitute distinctive subject matter which has been replicated in the disputed domain names. The Panel is mindful that Respondent holds its own trademark registrations in another jurisdiction (United States) for its domain names, and those rights may well be relevant if this dispute is pursued in other forums. However, for the limited purposes of the Policy, the Panel is prepared to find that the Complainants' own trademark rights which are sufficient to support this proceeding, and that the disputed domain names are confusingly similar therewith.
The Panel concludes that Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
As a general comment, the Panel notes that the Complainant has framed its case by way of statements and allegations, which are not supported by tangible evidence of any probative value. By way of contrast, Respondent has filed affidavits in the name of two senior executives, along with documentary support which demonstrate and prove in a compelling manner the central tenets of its arguments. The weight and quality of the evidence is strongly in favour of the Respondent.
Beyond these inadequacies, the Complainants' case is also fundamentally flawed by material non−disclosure. The Complaint completely fails to reveal the critical fact that the parties had participated in a long business relationship, whereby the Respondent had been contractually engaged to arrange bookings and host websites promoting Complainants' resort properties with their full blessing. Complainants have the temerity to seek remedies under the Policy for allegedly abusive conduct, without disclosing that they had actively supported that conduct, and benefitted from the promotions and bookings generated through the disputed domain names for many years. Material non-disclosure of this nature and to this extent is completely unacceptable.
The Panel finds that Complainants have failed to establish the absence of rights or legitimate interests on the part of the Respondent.
In reaching this conclusion, the Panel highlights the following facts established in the evidence:
(1) Respondent has actively carried on its booking business in good faith since 2006, providing services through the disputed domain names and associated website promotions for travel packages to the Cancun resorts, to the direct benefit of the Complainants, and with their approval;
(2) Respondent did not divert business away from Complainants, it directed customers to their properties;
(3) Respondent carried out its booking services through the disputed domain names in co-ordination with the Complainants, by way of annual contracts and regular exchanges about the contents and promotions featured on the associated websites;
(4) Complainants never challenged Respondent's rights to the domain names or associated websites from 2006 to at least 2015;
(5) Respondent actually registered the disputed domain names as trademarks in the United States, where it carries on business, so it holds its own registered trademark rights to the names in question.
As a result, the Panel finds that the Complainants have failed to satisfy the required element under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
In light of the findings under rights or legitimate interest, the Panel does not find it necessary to consider the arguments on bad faith. Reverse Domain Name Hijacking
In light of the non-disclosure issues described above, the Panel wishes to consider the issue of reverse domain name hijacking. Although Respondent has not specifically asked for this relief, the Panel is entitled to pursue this inquiry if circumstances warrant. The Rules provide (para. 15(e)):
"If after considering the submissions the Panel finds that the Complainant was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding."
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name."
Non-disclosure of material facts is among the circumstances cited by prior Panels as a basis for a finding of reverse domain name hijacking: G.A. Modefine S.A. v. A.R.-Mani,WIPO Case No. D2001-0537; Timbermate Products Pty Ltd. v. Barry Gork,WIPO Case No. D2013-1603; JJGC Industria E. Comercio de Materiais Dentarios S.A. v. Yun-Ki Kim,WIPO Case No. D2013-1838; iPayment, Inc. v. Domain Hostmaster, Customer IP: 83314393006017, Whois Privacy Services Pty Ltd. / Kwangpyo Kim, Mediablue Inc,WIPO Case No. D2015-1014.
After reviewing all the evidence, the Panel has come to the conclusion that the Complainant has failed to disclose a number of material facts, including the existence of the long standing business relationship between the parties and the specific facts recited in this decision at paragraph 6.B, which were critical to the Panel's finding that Respondent holds legitimate rights and interests in the disputed domain names, and which were obviously known to the Complainants before they began these proceedings. In these circumstances, the filing of the Complaint represents an abuse of process which the Panel finds entirely unacceptable. Accordingly, the Panel finds that the Complainants have engaged in reverse domain name hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied, and the Panel makes a finding of reverse domain name hijacking.
Christopher J. Pibus
Presiding Panelist
Luis C. Schmidt
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: September 6, 2017
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