The Complainant is EPI Gestion, S.L., Spain, represented externally.
The Respondents are Media Insight, United States of America (“United States”) and George Alvarez, United States, represented by Gaebe, Mullen, Antonelli, & Dimatteo, United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2019. On December 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 20, 2019, the Registrar transmitted by email to the Center its verification response disclosing multiple underlying registrants and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 23, 2019, providing the multiple underlying registrants and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint or to file a separate complaint. The Complainant filed an amended Complaint on December 28, 2019, including its comments on consolidation of Respondents. 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 January 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2020. On January 10, 2020, the Center received a communication from the Respondents, and on January 17, 2020, the Center received a communication from the Respondents’ authorized representative. Again, on January 29, 2020, the Center received a communication from the Respondents’ authorized representative, this time requesting for additional time to file a response. On the same day, the Center granted the Respondent’s four calendar day extension for response under paragraph 5(b) of the Rules. The due date for Response was extended to February 3, 2020. On February 3, 2020, the Respondents sent a communication to the Center inquiring about settlement, following which they submitted a settlement form signed by the Respondents on February 4, 2020. On February 7, 2020, the Center sent to the Parties an email regarding possible settlement to which the Complainant did not comment. Accordingly, the Center notified the Parties that it was proceeding to panel appointment on February 20, 2020. On February 21, 2020, the Respondents’ representative sent an email to the Center indicating they did not understand why the Complainant had not accepted the signed settlement form which would have transferred the Disputed Domain Names to the Complainant. The Respondents indicated that if the Complainant wished to proceed with a Panel determination the Respondents would wish to file a Response saying the Respondents have “a valid defense as reflected in the prior proceedings between the parties”2 . On February 23, 2020, the Complainant’s representative filed an email with the Center objecting to the Respondents filing a Response and stating “The Complainant had no interest in reaching an agreement with the other party, since, in Complainant ‘s opinion, the other party has not acted in good faith. Accepting a settlement in this case, without the commitment of the Owner to stop using and registering other domain names which include SANDOS trademark, when there is not a current commercial relation between them, is not useful for the Complainant”. The Center appointed Nick J. Gardner as the sole panelist in this matter on February 24, 2020. 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 February 26, 2020, the Panel issued a Procedural Order which provided as follows: “It appears to the Panel that the settlement agreement proffered by the Respondents would have provided the Complainant all the substantive relief that the Panel can award in this administrative proceeding were the Complainant to prevail, namely transfer of the domain names in issue. It therefore appears that the Complainant also seeks the benefit of a reasoned decision from the Panel, including a finding of bad faith against the Respondents. In those circumstances as a matter of natural justice the Panel considers that the Respondents should be allowed more time to file a Response, having previously failed to do so having instead offered transfer of the domain names in issue. The Panel therefore orders that the Respondent has until March 3, 2020 to file a Response. The Panel will render its decision by March 10, 2020”. On March 3, 2020, the Respondents filed a Response which the Panel will admit. On March 13, 2020, the Complainant lodged an unsolicited supplemental filing under cover of an email stating “Attached please find a Supplemental writ and evidence which tends to refute documents filed by Respondent to prove “current business relationship between the parties”, which were unknown by the Complainant and therefore could not be addressed in the Complaint. Therefore, in the interests of fairness, Complainant asks the Panel for the opportunity to refute, not only the evidence submitted but the statements imputed to Complainant in the Affidavit”. The Response provided by the Respondents contained material which cross referenced to an affidavit of a Rosanna […]. No such affidavit was included with the Response. Following a request for clarification from the Center, the Respondents on March 18, 2020, provided a copy of an affidavit of Rosanna […]. That affidavit in turn cross referred to various exhibits which so far as the Panel can determine have not been provided. For reasons discussed below the Panel does not consider the likely content of these exhibits adds significantly to the material already forming part of the record. For reasons also discussed below the Panel will admit all of the material that has been lodged. 4. Factual Background The Complainant is a Spanish company which owns and/or manages hotels and resorts, a number of which are branded SANDOS. Five of its SANDOS-branded hotels are located in Spain and four in Mexico. The names of the hotels in Mexico are Sandos Caracol Eco Resort, Sandos Finisterra Los Cabos, Sandos Playacar Beach Resort, and Sandos Cancun Lifestyle Resort. The names of its hotels in Spain are Sandos El Greco Beach Hotel, Sandos Monaco Beach Hotel & Spa, Sandos Papagayo Beach Resort, Sandos San Blas Nature Resort & Golf, and Sandos Benidorm Suits. The Complainant is the owner of a number of trademarks which include the term “Sandos” with other descriptive words (e.g “Sandos Hotels & Resorts” and “Sandos Select Club”) - see for example United States Trademark Registration No. 3901899 SANDOS HOTELS & RESORTS registered on January 4, 2011. The earliest such trademark in evidence is United States Trademark Registration No. 3385787 SANDOS SELECT CLUB, registered on February 19, 2008, which is based upon the International Registration No. 0925396, registered on February 6, 2007 and which claims a priority date of November 27,2006. Some of these trademarks include device but in all cases the word “sandos” is prominent. These trademarks are referred to in this decision as the “SANDOS trademark”. The Respondents are in effect a travel agency business based in Florida. For reasons discussed below there is generally no need to distinguish between the individual Respondents. The Disputed Domain Names were registered on various dates between 2008 and 2018: The Disputed Domain Name The Disputed Domain Names The Disputed Domain Name As appears from the reference in the Respondents’ representative email of February 21, 2020 (above) there have been previous proceedings between essentially the same parties, see EPI Gestion, S.L. v. Media Insight,WIPO Case No. D2018-0402, which is a case which also concerned a number of domain names which each included the term “sandos”. This case is discussed further below. There have also been a significant number of other UDRP cases between third party complainants and the Respondents. These all involve domain names which contain a hotel or brand name belonging to the relevant complainant which is then linked to a website operated by the Respondents promoting the hotel in question. These are discussed further below. There has also been litigation in the United States against in effect the Respondents in relation to their activities concerning certain domain names. This is discussed further below. 5. Parties’ Contentions A. Complainant The Complainant says that its hotels are well known and highly regarded. It says the Disputed Domain Names are each confusingly similar to trademarks in which it has rights. It says the term “sandos” is the key distinguishing feature in its trademarks and also in each of the Disputed Domain Names. The Complainant says that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names. It says (i) the Respondents have not been commonly known by the Disputed Domain Names, (ii) the Respondents have acquired no trademark or service mark rights for the term “sandos”; and (iii) the Respondents are not making a legitimate noncommercial or fair use of the Disputed Domain Names. The Complainant acknowledges that “The Respondents and the Complainant have had a previous commercial relationship derived of agreements executed by third parties parented to them, which authorized Vacation Store Miami to resell rooms of the hotels operated by the Complainant under SANDOS trademark” and exhibits various agreements. This issue is discussed further below. The Complainant says that the previous commercial relationship does not give the Respondents any legitimate interests because: i) The commercial relationship between the parties ended in 2017, and Complainant has no intention to renew it. ii) The Disputed Domain Names (with the exception of the Disputed Domain Name iii) The Complainant never authorized the Respondents to use its SANDOS trademark as a component of the Disputed Domain Names. iv) The websites to which the Disputed Domain Names point to, do not disclose the Respondents’ relationship with the Complainant. v) The Disputed Domain Names are not pointing to websites promoting the Complainant’s hotels (except for the Disputed Domain Name The Complainant says that the Disputed Domain Names The Complainant says the Disputed Domain Name In the case of the Disputed Domain Name (i) The respondent must actually be offering the goods or services at issue. In this case, the Internet users cannot book through the webpage, since the commercial relationship has ended. The following wording appears after making click to the search for availability field: “Unable to process your request, please fill in the above fields and search again!”. (ii) The respondent must use the site to sell only the trademarked goods or services. (iii) The site must accurately and prominently disclose the registrant’s relationship with the trademark holder. In this case, the website to which the disputed domain name points do not make it clear that the websites are operated by a company other than the Complainant; save for the words “Vacation Store Miami” which appear in small grey font at the top of each web page, there is nothing in the website content which would enable the Internet user to appreciate that the websites are not actually those of the Complainant. (iv) The respondent must not try to “corner the market” in domain names that reflect the trademark. In this case, the Respondent has registered multiple domain names, containing the SANDOS trademark. In conclusion, the Complainant says that despite the fact that the Disputed Domain Name points to a webpage that “promotes” the Complainant hotel, Sandos Palm Bay Playacar, the case does not meet the requirements settled in the “Oki Data test”. The Complainant says the Disputed Domain Names were registered and are being used in bad faith. It says the Disputed Domain Names fall into two broad categories: i) The Disputed Domain Names which point to a parking page: ii) The Disputed Domain Names which point to an active site: (a) The Complainant also says that the Respondents, on separate occasions, has registered trademark-abusive domain names, showing a pattern of abuse and identifies following UDRP cases: Grupo Posadas, S.A.B. de C.V. v. Media Insights,WIPO Case No. D2019-0196; Levantur, S.A. v. Media Insight A/K/A Media Insights,WIPO Case No. D2010-0623; Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International Inc., Societe des Hotels Meridien, Westin Hotel Management L.P. v. Media Insight a/k/a Media Insights,WIPO Case No. D2010-0211; Unique Brands Enterprises, LLC v. Media Insights, Media Insight,WIPO Case No. D2008-1749; Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774; Barceló Corporación Empresarial, S.A. v. Media Insights,WIPO Case No. D2008-0152; Riu Hotels S.A. v. Media Insight,WIPO Case No. D2006-1563; Gorstew Limited v. Media Insight,WIPO Case No. D2006-1467; Quiroocan, S.A. DE C.V (Barceló) v. Media Insights,WIPO Case No. D2006-0801; ACCOR v. Media Insights,WIPO Case No. D2004-0043. These are discussed in more detail below. The Complainant says it sent a cease and desist letter addressed to Respondents in November 2018. The Complainant’s supplementary filing disputes the relevant facts the Respondent relies upon as to consent having been given by the Complainant, and as to there being post 2017 an ongoing business relationship between the Parties. This material is discussed further below. B. Respondents It is convenient to note that the Response appears to the Panel to be based at least in part on what the Panel assumes was the Response filed in the EPI Gestion, S.L. v. Media Insight,WIPO Case No. D2018-0402. As such, it advances a number of arguments which were relevant to the domain names in issue in that case, but which are of little or peripheral relevance to the Disputed Domain Names. The Respondent Media Insight says that it is the media division of a wholesale tour operator, Vacation Store, who provides tour operations and travel packages for travel to destinations outside the United States. In its Response it uses “Respondent” to refer to both itself and Vacation Store. The Respondent George Alvarez is the President of Vacation Store. The Respondents say it does not own or operate any hotels but, as a tour operator, books rooms in third party hotels, including those of the Complainant. Vacation Store and the Complainant have had a long-standing business relationship which began in 2006 when the Respondents were first authorized to sell rooms in the Complainant’s hotels. The contracts provide for reduced rates in return for the large numbers of bookings made by the Respondents. The websites to which the Disputed Domain Names point do not divert users from the Complainant’s business but, in fact, result in substantial bookings for them. For the purpose of responding to the Complaint, the Respondents do not really provide any substantive challenge to the Complainant’s assertion that the Disputed Domain Names are confusingly similar to trademarks in which it has rights. It says that it accepts that “most of” the Disputed Domain Names are similar. The Respondents say that they are using the Disputed Domain Names in connection with a bona fide offering of goods and services. They have rights or interests in respect of the Disputed Domain Names and the Complainant has licensed or otherwise authorized them to use its trademarks and the websites to which the Disputed Domain Names point. The Respondents have had business dealings with the Complainant for over 12 years. The Respondents produce copies of contracts between the Complainant and Vacation Store, starting in 2012, at a time when the Respondents operated web pages on behalf of the Complainant and the Complainant was aware of, and approved, the Respondents’ use of those web pages. The Respondents produce copies of a number of documents to support their contentions. These are important and need to be considered in some detail - the Panel does so in its discussion below. In addition, an affidavit is produced from the Respondent George Alvarez as President of Vacation Store confirming and amplifying the Respondents’ assertions (see below). It also produces an affidavit from a Rosanna […]. which is discussed below. The Respondents say that the Disputed Domain Names were not registered nor used in bad faith. The Complainant has known the Respondents’ use of the disputed domain names for 12 years and has provided funding for them. The Respondents reasonably believed that they had the authority to register and use the Disputed Domain Names; see The Bank of Nova Scotia v. Working Word Co-operative Ltd,WIPO Case No. D2010-0167, where bad faith was not made out when the complainant’s agents had been aware of the respondent’s registration of the domain name and provided it with information to update web pages. 6. Discussion and Findings 6.1. Procedural Matters A. Multiple Respondents This is a case which is in formal terms brought against two Respondents. George Alvarez is the registrant of the Disputed Domain Name The Panel has not found the present case straightforward. It has found all of the material that has been lodged by the Parties useful in understanding the overall background to the case and in assisting it to come to a decision. The Panel will therefore exercise its discretion to admit everything that has been lodged. C. Delay and/or Acquiescence The Respondents in effect say that the Complainant’s case is barred given the length of time it has been aware of the Disputed Domain Names and/or its acquiescence to the Respondents’ activities. This argument seems to be something of a hangover from the previous UDRP case between the Parties EPI Gestion, S.L. v. Media Insight,WIPO Case No. D2018-0402 - where it was of some importance. The Panel in the present case is not satisfied it is applicable here. The evidence is unclear as to when the Complainant became aware of the Disputed Domain Names, and the only one of those names which is actually pointed to a website promoting one of the Complainant’s hotels was only registered in 2018. In any event, the Panel agrees with the generally accepted approach of panels as set out in WIPO Overview 3.0, section 4.17 as follows: “Does ‘delay’ in bringing a complaint bar a complainant from filing a case under the UDRP? Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. Panels have noted that the UDRP remedy is injunctive rather than compensatory, and that a principal concern is to halt ongoing or avoid future abuse/damage, not to provide equitable relief. Panels have furthermore noted that trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of, particularly when cybersquatters face almost no (financial or practical) barriers to undertaking (multiple) domain name registrations. Panels have therefore declined to specifically adopt concepts such as laches or its equivalent in UDRP cases. Panels have however noted that in specific cases, certain delays in filing a UDRP complaint may make it more difficult for a complainant to establish its case on the merits, particularly where the respondent can show detrimental reliance on the delay.” The Panel therefore declines to find that delay or acquiescence is applicable and does not provide any reason for denying the Complainant its remedy. 6.2. Substantive Matters Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondents have no rights or legitimate interests 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 The Complainant has established that it has rights in the SANDOS trademark. Each of the Disputed Domain Names includes the distinctive element of that trademark (the term “sandos”) and is coupled with descriptive content which does not prevent the confusing similarity with the SANDOS trademark . Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662). It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694). It is also established that the addition of a descriptive term to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253); furthermore, mere addition of a descriptive term does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189). In any event the Respondents do not really dispute this issue (they say “However, for the limited purposes of the policy, Respondent is prepared to acknowledge that some of the domain names are similar”). The Panel cannot see any difference in principle between any of the Disputed Domain Names and finds that all of the Disputed Domain Names are confusingly similar and hence the Complainant has established this element. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out, without limitation, three circumstances by which a respondent might show that it has rights or legitimate interests in a domain name, namely; (i) before any notice to it of the dispute, it had used or made 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) it had been commonly known by the domain name, even if it had acquired no trademark or service mark rights; or (iii) it was 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 Respondents’ activities do not fall within the circumstances outlined at paragraph 4(c)(ii) or 4(c)(iii) of the Policy; it has not been commonly known by any of The Disputed Domain Names and the Respondents’ activities are clearly commercial in character. It accordingly follows that the relevant issue is whether 4(c)(i) above applies. Paragraph 4(c) is a non-exhaustive list but there are no other circumstances arising which the Panel considers applicable (save for the question of consent by the Complainant which is discussed further below). So far as the Disputed Domain Names “Do “parked” pages comprising pay-per-click links support respondent rights or legitimate interests? Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. The Panel also concludes that the Respondents’ case that the Complainant has consented to this activity is not credible and should not be accepted - see discussion under bad faith below. So far as the Disputed Domain Name The Disputed Domain Name “The essence of the Respondent’s case is that it has traded with the Complainant over a lengthy period and has the Complainant’s permission to use its trademarks in connection with the sale of package holidays to the Complainant’s resort. As the Respondent acknowledges, this alleged use of the Complainant’s mark by a reseller would allow the Respondent to claim rights and legitimate interests in the disputed domain name provided that the criteria laid down in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 were established. The criteria are, first, that the Respondent must be offering the goods or services at issue, secondly, that the Respondent must use the site only to sell the trademarked goods or services, thirdly, that the site must accurately and prominently disclose the registrant’s relationship with the trademark holder and, fourthly, that the Respondent must not try to “corner the market” in domain names that reflect the trademark. It is clear to the Panel that the Respondent is unable to fulfill the terms of the third of the Oki Data criteria. Neither on the previous nor on the current iteration of the Respondent’s website is the Respondent’s relationship with the Complainant clearly set out. On the contrary, the copy on the said website seems calculated to confuse visitors into believing that the Respondent is the actual owner of the hotels concerned. The fact that the latest iteration now appears to have the words “VACATION STORE MIAMI®” in small grey letters at the top of the page does not assist the Respondent as it is insufficiently prominent, nor in any event is the relationship with the Complainant disclosed. Furthermore, the previous iteration shown in the Complainant’s screenshot showed no such qualification and even employed the Complainant’s stylized typeface. The Panel notes in addition that the website is couched in terms of offering a “unique and innovative hotel experience” at a “‘Be Yourself’ hotel” without any suggestion that the Respondent is, more probably than not, one of a multitude of package tour providers who may make bookings at the Complainant’s hotel. In any event, the website does not identify with sufficient clarity that it is operated by a company other than the Complainant. As the panel observed in EPI Gestion, S.L. v. Media Insight,WIPO Case No. D2018-0402, another case involving the Respondent, the failure to meet the Oki Data criteria is not necessarily the end of the matter for the Respondent’s case. It is a matter of consensus among panels under the Policy that this test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark (see section 2.8.1 of the WIPO Overview 3.0).” The present Panel concludes that exactly the same reasoning applies to the website that the Respondents have linked to the Disputed Domain Name Accordingly, the Panel concludes that the Respondents have not established a right or legitimate interest in any of the Disputed Domain Names. C. Registered and Used in Bad Faith The substance of the Respondents’ case as to bad faith is that they registered the Disputed Domain Names pursuant to their business relationship with the Complainant, the Complainant knew they were doing so and agreed to them doing so, and the Complainant provided assistance to the Respondents to do so, both financially and with material to be included on relevant websites. As noted above this appears to the Panel in large measure to be a repeat of the arguments that the Respondents advanced in the Grupo Posadas, S.A.B. de C.V. v. Media Insights,WIPO Case No. D2019-0196 (see below) but is of significantly less relevance to the Disputed Domain Names. Be that as it may, if what the Respondents say is correct the registrations in question were not made in bad faith. In order to assess this issue it is necessary to consider carefully the material that is before the Panel and the relevant chronology. Before doing so, the Panel thinks it is helpful to analyse the broader background to the Respondents’ activities which is shown by the various UDRP cases it has been involved in, as well as litigation before the United States district court. In addition to the cases the Complainant has identified, the Panel has identified some other UDRP cases also involving in effect the Respondents. For completeness, the Panel notes that in many cases the precise names or identity of the respondent(s) of record is/are not identical to the Respondents in the present case. The Panel is however satisfied they are either the same entities or are under the same control as the present entities. All of the cases involve the registration of domain names which combine a hotel or brand name with a geographic and/or descriptive term and are then linked to a website promoting a hotel associated with the name and geographic or descriptive term in question. The cases can be divided into various categories, as follows. 1) Cases where no response was filed and the decision was that the domain name(s) had been registered and were being used in bad faith: ACCOR v. Media Insights,WIPO Case No. D2004-0043 Quiroocan, S.A. DE C.V (Barcelo) v. Media Insights,WIPO Case No. D2006-0801 Gorstew Limited v. Media Insight,WIPO Case No.D2006-1467 Riu Hotels S.A. v. Media Insight,WIPO Case No. D2006-1563 Barcelo Corporacion Empresarial, S.A. v. Media InsightsWIPO Case No. D2008-0152 Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774 Unique Brands Enterprises, LLC v. Media Insights, Media Insight,WIPO Case No. D2008-1749 2) Cases where a response was filed raising an affirmative case (usually that the complainant had consented to the respondent’s activities) and the decision was that the domain names had been registered and were being used in bad faith: Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International Inc., Societe des Hotels Meridien, Westin Hotel Management L.P. v. Media Insight a/k/a Media Insights,WIPO Case No. D2010-0211 Levantur, S.A. v. Media Insight A/K/A Media Insights,WIPO Case No. D2010-0623 Grupo Posadas, S.A.B. de C.V. v. Media Insights,WIPO Case No. D2019-0196 3) Cases where a response was filed and the respondent succeeded: Levantur, S.A. v. Media Insight,WIPO Case No. D2009-0608 EPI Gestion, S.L. v. Media Insight,WIPO Case No. D2018-0402 Paola Stephania Ornelas Magaña and Irma Michelle Ornelas Magaña v. Media Insight,WIPO Case No. D2017-1235 It is also appropriate to consider the Unites States court case the Complainant has introduced in evidence. This is a case in the United States District Court For the Southern District Of Florida, Case Number: 16-20683-CIV-MORENO between Heron Development Corporation, and Palace Resorts, S .A. D E C .v., Plaintiffs, vs. Vacation Tours, Inc., Media Insight Group Inc., Rosanna M. Mendez, and George A. Alvarez, Defendants. It concerned some 40 domain names all combining the term “palace” with a descriptive and/or geographic term (e.g. Taking this material as a whole the Panel considers it establishes the following: 1) The Respondents are in business as a tour operator. 2) They have developed a business practice whereby they identify popular hotels and register a domain name which combines the hotel name or a relevant brand associated with the hotel and a geographic and/or descriptive term. 3) That domain name is then linked to a website which the Respondents develop which promotes the hotel, but solicits bookings for the hotel through the Respondents as a tour operator. 4) There is nothing wrong per se with making such bookings and the tour operator earns a commission with the hotel owner no doubt being paid the bulk of the relevant fee as paid by a customer. 5) It seems clear to the Panel that the domain name registrations are undertaken entirely speculatively by the Respondents without the express consent of the relevant hotel owner - even in the cases above where the Respondents succeeded these were on the basis of subsequent conduct between the parties. There is no instance the Panel can see of the Respondents ever having an express agreement in place before effecting the registration. 6) The Respondents presumably hope as a matter of business practice that the hotel owner will accept the situation when it discovers it - because the arrangement in question is of mutual benefit to the hotel owner and the Respondents as a tour operator. The Respondents presumably hope that the hotel owner does not object (or better still expressly agrees or assists). The Panel has no knowledge of how many arrangements the Respondents may have in place where hotel operators are content with the arrangement. It is however clear from the above listing of cases that there are numerous cases where hotel operators have objected to the Respondents’ business model. 7) It would seem that the Respondents have been engaged in this business model since at least 2004. It appears that up until 2009 if challenged by way of a UDRP complaint the Respondents chose not to file a response and allowed the domain name(s) in question to be transferred. With effect from 2009 that practice seems to have changed and the Respondents have since then taken to filing responses raising affirmative defences, generally based upon the course of conduct between the parties. These responses have met with mixed success - in three cases panels have been persuaded that the Complaint has not discharged its burden of showing the respondents lacked a legitimate interest. In three other cases, the complaint succeeded. The Respondents have also lost a case in the United States Detract Court which was, as far as the Panel can see, also based on facts arising out of the Respondents use of the business model described above. In more general terms it seems to the Panel that the Respondents by at least 2009, if not before, must have become well acquainted with the Policy and the principles that will apply if any complaint is filed as to their activities. They must realise that the registration of the types of domain name their business model involves carries a high risk of being found to be in bad faith if complaint is made. Despite this risk, there is no evidence of them ever having asked for consent before registering any of the domain names. The question arises as to why not? The obvious inference, which the Panel accepts, is that they assess that such consent is unlikely to be forthcoming and they are better off proceeding without consent and presenting the hotel owner with a “fait accompli” and hope it retrospectively consents - or at least does not object. This Panel takes the view that a registration of a domain name in such circumstances amounts to a registration in bad faith. So far as the Policy is concerned, it is an attempt “….to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location”. The combination of another party’s trademark with descriptive terms, without the consent of that party, to generate business is in the Panel’s opinion a registration in bad faith, notwithstanding that it may be the Respondent’s intention that both the Respondent and the trademark owner benefit. The same principle is likely to apply to ongoing use of the domain name in question unless the hotel owner provides its consent to such use. The circumstances which might amount to such consent, and the question of whether acquiescence or delay is also relevant, are fact specific questions which need to be addressed on a case by case basis. In this respect the Panel agrees with the analysis of the panel in Grupo Posadas, S.A.B. de C.V. v. Media InsightsWIPO Case No. D2019-0196 supra. In that case, the panel stated: “What is clear on the record is that the Complainant’s Mexican trademark was in existence some two years before the disputed domain name was created. The Respondent does not and could not deny that it was fully aware of the nature and extent of the Complainant’s hotel operations, given that its alleged purpose in registering the disputed domain name was in order to sell accommodation in those hotels. Bearing in mind the nature of the Respondent’s business, it seems more probable to the Panel than not that the Respondent would have known of the existence of the Complainant’s mark or that this may reasonably be inferred from the circumstances. In the absence of substantive evidence of a permissive relationship between the Parties, it appears to the Panel that the Respondent probably turned a blind eye to the Complainant’s rights in order to improve its position with regard either to the Complainant’s interests in receiving direct business via its own website or to other agents who might be selling packages relating to the Complainant’s hotels. There is a possibility that the Respondent intended that its actions might have been legitimized by subsequent acquiescence of the Complainant (as, for example, is described in Levantur, S.A. v. Media Insight, supra) but any such alleged acquiescence has not been established to the Panel’s satisfaction on the present record. In these circumstances, the Respondent’s conduct is suggestive of registration in bad faith” Having established the general principles as set out above the Panel now turns to the facts of the present case. The Panel considers the evidence before it establishes the following. There are invoices and/or booking arrangements (set out at Annex 2 to the Response) between the Respondents and retail customers for stays in the Complainant’s Mexican hotels. They are at various dates during 2019 save for the most recent which is dated in January 2020. These would seem to show the Respondents are booking rooms for customers in the Complainant’s hotels. Presumably, the Respondents pay the Complainant for the rooms in question at a wholesale rate. The documentation in question is all in the name of “Vacation Store Miami” and does not contain any references to the Disputed Domain Names (or any other “sandos” related domain names). It is not clear to the Panel that this correspondence proves anything one way or another as to the Respondents use of the Disputed Domain Names or the Complainant’s alleged knowledge of and/or consent to such use. Correspondence (set out at Annex 3 to the Response) passed between the Respondents and the Complainant at various dates between 2014 and 2016. This shows the Complainant providing material for the Respondents to use on various websites linked to “sandos” related domain names, none of which are any of the Disputed Domain Names. This correspondence shows a business relationship at the relevant time and would appear to indicate that the Complainant was apparently content that the Respondents were promoting the Complainant’s hotels via various websites whose domain names combined the term “sandos” with geographic and/or descriptive terms, none of which were any of the Disputed Domain Names. It is not clear to the Panel that this correspondence has any real relevance to the Respondents use of the Disputed Domain Names or the Complainant’s alleged knowledge of and/or consent to such use. Correspondence (set out at Annex 5 to the Response) passed between the Complainant and the Respondents at dates between 2014 and 2016. It appears to show the Complaint agreeing to pay the Respondents a 3% fee to be used by the Respondents in promotional activity. Although the documentation refers to “internet” as one type of activity to be undertaken it does not specifically reference any particular domain names. Again, it is not clear to the Panel that this correspondence has any real relevance to the Respondents use of the Disputed Domain Names or the Complainant’s alleged knowledge of and/or consent to such use. A large number of contracts (set out at Annex 6 to the Response) are in evidence - these are between individual hotels owned by the Complainant and the Respondents. The most recent of these are dated in 2016. The contracts appear to primarily deal with room rates and discounts. Some of the contracts contain clauses in standard form reserving intellectual property rights and in some of the contracts the Respondents agree to promote the hotel in their publicity material. None of the contracts, so far as the Panel can see, contain any provisions dealing with the use of domain names containing the term “sandos”. Again, it is not clear to the Panel that these contracts have any real relevance to the Respondents use of the Disputed Domain Names or the Complainant’s alleged knowledge of and/or consent to such use. The Panel notes that Annex 7 to the Response seems to contain the same material as Annex 3 The Respondents have provided (Annex 4 to the Response) an affidavit from Mr. Alvarez. It is relatively short. It appears to be structured in a manner which is more relevant to the applicable facts in theWIPO Case No. D2018-0402 case supra than the present facts. Ignoring factual background matters not in dispute the main points it makes are as follows. a) The Respondents as part of their business register domain names which include the names of hotels they promote. b) They have done this in connection with the Complainant since 2006 and received no complaint about this till 2018. c) The Complainant was aware of the websites operated by the Respondents which featured the Complainant’s hotels and requested the Respondents to add the words “Vacation Store Miami” to the websites concerned, which the Respondents did. d) The Respondents were “specifically authorized to register 4 of five of the [Disputed Domain Names]”. This was done as the Complainants anticipated opening further hotels. Mr. Alvarez does not identify which four Disputed Domain Names he is referring to. He says that it was the Complainant’s “Jacques […] and other representatives” who provided this authorization “in anticipation of the Complainant opening hotels” and that this was done at the time the Complaint was paying the Respondent to promote its hotels. It would appear to follow that the Disputed Domain Names he means are What strikes the Panel as unconvincing about the alleged authorization from the Complainant is the fact that Mr. Alvarez has not produced a single document corroborating his account. If the Complainant really was contemplating opening hotels at other locations, and wanted the Respondents to register domain names in this regard, one would have expected at the very least for there to be correspondence backwards and forwards discussing the plans in question and confirming what was being done. No such material has been produced. Further the registrations took place at three different dates many years apart - it seems to the Panel this would mean that at each such date relevant correspondence would have been generated increasing the probability that Mr. Alvarez should have been able to produce at least some corroborating evidence. It also seems relevant to the Panel that in fact no such hotels have ever been developed by the Complainant. Why would it have asked the Respondents to register domain names for non-existent hotels? Further, the Respondents allege that the Disputed Domain Names were parked at the express request of the Complainant. It seems difficult to imagine why it would want this if it was not proceeding with development of the hotels in question. Again, if this was the case the Panel would expect documentation to exist. None has been provided. The Panel also bears in mind that the Respondents normal business model would seem to involve the regular registration of domain names containing a third party’s trademark without the consent of the third party. The Panel thinks it more likely than not that is what happened here. The affidavit of Rosanna […] also provided by the Respondents does not really provide any evidence relevant to this issue or the Disputed Domain Names - it deals primarily with the previous business relationship between the Parties. It also appears to have been prepared in a manner which reflects the issues in the previous caseWIPO Case No. D2018-0402 supra. As such, the Panel does not consider it adds anything of significance to the record. As indicated above it cross-refers to various exhibits which do not appear to have been provided - but the Panel does not consider these would alter the Panel’s analysis. The Complainant for its part has provided a notarized statement in Spanish from a Mr. Ortiz, who is described in the provided translation as a “joint administrator” of the Complainant. He says that the claims that the Complainant requested the Respondents to register these domain names are “false”. Beyond this, he provides little useful information. Looking at the evidence as a whole the Panel on the balance of probabilities does not accept the explanation offered by the Respondents. The Panel is conscious that proceedings under the UDRP are of a limited and restricted nature, do not involve oral hearings, discovery or cross examination, and hence are only applicable to clear cut cases, and it is not usually appropriate to decide disputed questions of fact or matters of truth or falsehood. That does not however mean the Panel cannot reach a conclusion as to the veracity of a case that is being advanced where the only evidence that is provided is in the form of conclusory statements that are inherently not credible, and which are not supported by relevant corroborative or third party evidence. The Panel considers this to be such a case. The Respondent’s case is simply not credible and the Panel concludes that on the balance of probabilities the Respondent’s claim that the Disputed Domain Names were registered at the request of the Complainant is not true. Having reached that conclusion the Panel turns to consider other relevant factors. Taking all of the evidence as a whole the Panel reaches the following conclusions. The Complainant and the Respondents have had a long-standing business relationship where the Respondents, acting as a tour operator, booked rooms in the Complainant’s hotels. That arrangement appears to date back to at least 2012 and possibly earlier. It appears to have come to an end in 2017. The Panel has no real information as to how or why it came to an end. While the arrangement was in force the Respondents registered a number of domain names which combined the term “sandos” with a geographical or descriptive term which provided a reference to one of the Complainant’s hotels. It linked those domain names to websites promoting the hotel in question and thereby developed business for both itself and the Complainant. The previous caseWIPO Case No. D2018-0402 supra, has dealt with a number of these domain names (the Panel does not know whether or not there are any others apart from the Disputed Domain Names). The panel in that case concluded that the Respondents had established a legitimate interest in the names in question given the dealings between the Parties. The present case is with one exception different in that the domain name registrations do not correspond to actual hotels that the Complainant own or operate but are other permutations of the term “sandos” with descriptive or generic words. It is convenient to deal first with the exceptional case, namely the Disputed Domain Name Each of the Disputed Domain Names See also WIPO Overview 3.0 section 3.5: “Can third-party generated material “automatically” appearing on the website associated with a domain name form a basis for finding bad faith? Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith”. Since the Panel has concluded that there is no consent by the Complainant (see above) the Panel accordingly concludes that each of the Disputed Domain Names The remaining Disputed Domain Name is For the above reasons the Panel finds that all of the Disputed Domain Names have been registered and are being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 Names Nick J. Gardner 1 The body of the Complaint also contains a reference to a further domain name 2 The prior proceedings were not identified but this would appear to be a reference to EPI Gestion, S.L. v. Media Insight,WIPO Case No. D2018-0402, which is a case between essentially the same parties and which also concerned a number of domain names which each included the term “sandos”.
and Annex 8 seems to contain the same material as Annex 5.
Sole Panelist
Date: March 24, 2020
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