The Complainant is Lopesan Hotel Management of Las Palmas, Spain, represented by PONS IP, Spain.
The Respondent is Domain Administrator, See PrivacyG of Phoenix, Arizona, United States of America / ekim irmak of Ankara, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2018. On November 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 2018, the Registrar transmitted by email to the Center its verification 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 November 19, 2018 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 November 19, 2018.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2018.
The Center appointed William R. Towns as the sole panelist in this matter on December 18, 2018. 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
The Complainant, founded in Spain in 1972, owns and operates a number of hotels and resorts located in Spain, Germany, Austria, and the Dominican Republic. Some of the Complainant’s hotel and resort products and services are offered under the ABORA, ABORA BY LOPESAN and ABORA BY LOPESAN HOTELS marks (collectively “the Complainant’s marks”).
The Complainant owns Spanish trademark registrations for the following marks: ABORA, No. 3655838, applied for March 8, 2017, and registered September 4, 2017; ABORA BY LOPESAN, No. 3662150, applied for April 19, 2017, and registered September 25, 2017; and ABORA BY LOPESAN, No. 365851, applied for March 8, 2017, and registered September 4, 2017. The Complainant owns a European Union trademark registration for ABORA BY LOPESAN HOTELS, EUTM No. 17887958, applied for April 13, 2018, and registered August 7, 2018. The Complainant also owns a Dominican Republic trademark registration for ABORA BY LOPESAN, No. 2017-8227, applied for March 6, 2017, and registered June 16, 2017.1
The Respondent registered the disputed domain name on April 13, 2018, coinciding with the date the Complainant applied to register its European Union mark for ABORA BY LOPESAN HOTELS. The Respondent has attempted to sell the disputed domain name for USD 980 on the Registrar’s NameSilo aftermarket platform. The disputed domain name presently resolves to a parking page. 5. Parties’ Contentions A. Complainant
The Complainant submits the disputed domain name is identical to the Complainant’s ABORA BY LOPESAN HOTELS mark. The Complainant explains that the generic Top-Level Domain (“gTLD") “.com” generally is disregarded when assessing identity or confusing similarity of the disputed domain name to a complainant’s mark. The Complainant asserts that its ABORA-formative marks have acquired a global and international character, and are generally well-known and famous in the relevant public sector due to their duration, the intensity and geographical scope of use, value, and the prestige achieved in the market.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant alleges that its marks were all registered prior to the creation date of the disputed domain name. The Complainant avers that the Respondent has not been commonly known by the disputed domain name, has no relationship with the Complainant, and has not been licensed or otherwise authorized to register and use the disputed domain name. The Complainant notes that the Respondent has not used the disputed domain name in connection with a bona fide offer of products or services, and further explains that the Respondent must demonstrate rights or legitimate interests in respect of the disputed domain name.
The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. The Respondent reiterates that the Complainant’s ABORA BY LOPESAN HOTELS and ABORA- formative marks are well-known and famous, and concludes that the respondent was aware or should have been aware of the Complainant’s marks when registering the disputed domain name.
According to the Complainant, had the Respondent acted in good faith he would have conducted a domain name and trademark search and thus would have known that the registration of the disputed domain name would infringe the Complainant’s prior trademark rights. The Complainant submits that the Respondent’s intention when registering the disputed domain name was to prevent the Complainant from registering the disputed domain name, having in mind the purpose of selling the disputed domain name to the Complainant well in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is identical to the Complainant’s registered ABORA BY LOPESAN HOTELS mark and confusingly similar to the Complainant’s registered ABORA and ABORA BY LOPESAN marks. In considering this issue, the first element of the Policy serves essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name. In this case, each of the Complainant’s marks are clearly recognizable in the disputed domain name.3 gTLDs generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.4
While the Policy makes no specific reference to the date on which the holder of a trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed. Accordingly, the fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the paragraph 4(a)(i) of the Policy.5
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to register or use the Complainant’s marks. The Respondent notwithstanding registered the disputed domain name, which is identical to the Complainant’s ABORA BY LOPESAN HOTELS mark, and has offered to sell the disputed domain name for the sum of USD 980.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it 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 has been commonly known by the domain name, even if he 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.
The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Respondent has not brought forward any evidence of rights or legitimate interests in the disputed domain name. In the absence of any explanation by the Respondent, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Nor is there any indication that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name within the contemplation of paragraph 4(c)(iii) of the Policy. It is undisputed that the Respondent has not been authorized to use the Complainant’s marks, and there is nothing in the record to suggest that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Respondent registered the disputed domain name on the same day the Complainant filed its application to register the ABORA BY LOPESAN HOTELS mark. The disputed domain name is identical to the Complainant’s mark, and the attendant circumstances in this case suggest that the Respondent’s in all likelihood also was aware of the Complainants previously registered ABORA and ABORA BY LOPESAN marks. The Panel concludes that the Respondent’s aim when registering the disputed domain name was to exploit or otherwise capitalize on the Complainant’s trademark or nascent rights. See WIPO Overview 3.0, section 3.8.2. The Respondent’s attempt to sell the disputed domain name for an amount well in excess of the Respondent’s out-of-pocket costs reflects that such was the case. The Panel concludes that the Respondent registered and has used the disputed domain name in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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.
William R. Towns
Sole Panelist
Date: December 23, 2018
1 The Complainant also has registered the Spanish Trademarks ABORA CATARINA BY LOPESAN HOTELS and ABORA CONTINENTAL BY LOPESAN HOTELS, nos. 3715018 and 3715027, each applied for April 18, 2018, and registered October 10, 2018.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
3 See WIPO Overview 3.0, section 1.8 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
4 See WIPO Overview 3.0, section 1.11 and cases cited therein. The meaning of a particular gTLD, however, may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.
5 See WIPO Overview 3.0, section 1.1.3 and cases cited therein.
Full & Egal Universal Law Academy