The Complainants are The Coryn Group II, LLC, United States of America (“United States”) and AMResorts, L.P., United States (collectively the “Complainant”), represented by Norvell IP llc, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Jose Arellano, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2020. On March 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 17, 2020, the Registrar 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 March 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2020. The Center appointed Ellen B Shankman as the sole panelist in this matter on April 22, 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. 4. Factual Background The date of the Domain Name registration is June 6, 2019. The trademark AMRESORTS serves as a house-mark of the Complainant and is protected as a registered trademark in multiple jurisdictions worldwide. The Complainant provided evidence of multiple trademark registrations for the mark AMRESORTS including, inter alia, United States Registration No. 2776812 (registered on October 21, 2003) and Canada Registration No. TMA655292 (registered on December 16, 2005); both word marks (collectively the “AMRESORTS Marks”) predate the date of the Domain Name registration covering hotel administration and booking services. The Complainant provided evidence that the Domain Name has been used in connection with a fraudulent scam. The Panel also conducted an independent search to determine that the Domain Name is currently active, and the website at the Domain Name appears to be a parking page. 5. Parties’ Contentions A. Complainant The Complaint sets forth that Apple Leisure Group (“ALG”) is one of North America’s premier travel, hospitality and leisure management groups. ALG has roots dating back to 1969, and is comprised of collection of entities, including the Complainant, The Coryn Group II, LLC (“Coryn Group”) and AMResorts, L.P. (“AMR”). The Coryn Group is the intellectual property owner for ALG and owns numerous trademarks globally that are used in connection with a wide range of travel-related services, including all-inclusive offerings, entertainment services, and a network of luxury resorts. AMR was founded in 2001 and provides award-winning brand management and marketing services (“AMR Services”) for a collection of branded luxury resorts. AMR provides AMR Services for hotels and resorts that include over 20,000 rooms at several award-winning branded resorts in Mexico, the Caribbean, and Central America, and Europe. AMR operates its website at “www.amresorts.com”, which was registered in 2001, and which has been continuously operated since it first launched more than 15 years ago, connects and informs customers to the Complainant’s vast network of branded travel-related offerings and services. The AMR website also features reservation and booking services for temporary lodging, resort hotel services, hotel reservation services, and personalized information about hotels and temporary accommodations for travel via the Internet and phone. The Complaint contends that the Complainant has undertaken considerable efforts to build the AMR brand’s reputation in the marketplace, and the success of the Complainant’s services is due in part to the Complainant’s extensive use and advertising of the AMRESORTS Mark, which has generated substantial goodwill with AMR customers. In addition, the Complainant directly or indirectly uses the AMRESORTS Marks in advertising, marketing and promotional materials on a nationwide and worldwide basis through various media, including but not limited to, the Internet, direct mail, and magazines. As a result, the Complainant argues that the AMRESORTS Marks are distinctive, widely-recognized, and entitled to a broad scope of protection and the goodwill symbolized by AMRESORTS, in connection with travel-related services, belongs exclusively to the Complainants. The Complaint argues that the Respondent registered and is using in bad faith the Domain Name, which fully incorporates and is identical/confusingly similar to the Complainants’ AMRESORTS Marks and name, simply with the addition of “club” and “vacation”. The Respondent registered the Domain Name on June 6, 2019, well after the Complainants first began using their AMRESORTS Marks. Currently, the Domain Name is not associated with an active website. The Complainants allege that they have a reasonable basis to believe that the Domain Name is being used by the Respondent in connection with a fraudulent scam designed to lure consumers into believing that they are dealing with ALG or the Complainant, to defraud consumers. On September 2, 2019, a consumer received a fraudulent email from an email address associated with the Domain Name, from an individual posing as an unauthorized representative for AMR, and the subject line reads, “¡VIVA MÉXICO, VIVA LA PLAYA AMResorts®!”. In addition to use of the Complainant’s AMRESORTS Marks, the email is fraught with unauthorized use of the Complainant’s intellectual property, including registered trademarks, and photographs that are protected by the United States copyright registrations, and appear on the Complainant’s websites. On September 3, 2019, the consumer that received the email contacted the Complainants to inquire as to the legitimacy of the message, prompting the Complainant’s investigation into the Domain Name. The Complainant is also aware of an email that a consumer received on September 5, 2019, also by an individual posing as an unauthorized representative for AMR, with the same subject line as the above-referenced, September 2, 2019 email. The September 5, 2019 email is nearly identical to the September 2, 2019 email, and advertises vacation deals at the Complainant’s resorts, using the Complainant’s AMRESORTS Marks and intellectual property, including registered trademarks, and photographs that are protected by United States copyright registrations. The Complaint argues that the individuals operating the scam related to the Domain Name at issue utilize the AMRESORTS Marks to defraud consumers, and lure them into providing their financial information to a fraudulent institution, all under the guise of a travel company that is associated with the Complainant. Based on the investigations conducted by the Complainant, the Complainant argues that it has a reasonable basis to believe that the Domain Name is connected to a larger fraudulent email scheme and that the Respondent registered the Domain Name and is using it in connection with a larger fraudulent scam involving multiple infringing domain names and email addresses. The Complaint maintains that the Respondent is not affiliated with or connected to the Complainant in any way. At no time has the Complainant licensed or otherwise endorsed, sponsored, or authorized the Respondent to use any of the Complainant’s AMRESORTS Marks or to register the Domain Name. Moreover, the Respondent cannot show any facts that establish any rights or legitimate interests in the Domain Name. As demonstrated by the Respondent’s use of the Complainant’s identical AMRESORTS Marks in connection with a fraudulent scam, the Complaint argues that the Respondent was aware of the Complainant’s well-known AMRESORTS Marks, and knowingly adopted the Complainant’s AMRESORTS Marks in the Domain Name to create the false impression that the Respondent is associated with the Complainant, and/or is an authorized representative of the Complainant, to defraud unsuspecting consumers to provide their financial information to the Respondent for the Respondent’s personal profit and gain. To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark AMRESORTS, in respect of a broad range of hotel management and booking services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the generic or descriptive words “club” and “vacation” to the mark AMRESORTS does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent by the Complainant, especially for competing goods and services. Further there is evidence that the Domain Name is being used to defraud consumers. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The burden for the Complainant under paragraph 4(a) of the Policy is to prove: (i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for AMRESORTS. The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the mere addition of the dictionary terms “club” and “vacation” to the Domain Name does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating “[t]he incorporation of a Complainant’s well-known trademark in the registered domain name is considered sufficient to find the domain name confusingly similar to the Complainant’s trademark.” Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests 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, UDPR panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may 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) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the disputed 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. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks or to register the Domain Name. The Panel is persuaded that, given the long prior use by the Complainant of the AMRESORTS mark and name, there is no evidence that the Respondent was commonly known by the Domain Name or a name corresponding to the Domain Name, and that the Domain Name was likely chosen to seek to create an impression of association with the Complainant. Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name. Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel is persuaded that there is a reasonable basis to believe that the Domain Name was registered and is being used by the Respondent in connection with a fraudulent scam designed to lure consumers into believing that they are dealing with the Complainants to defraud consumers. The addition of the terms “club” and “vacation” to the trademark of the Complainant enhances that impression. The record supports the Panel’s finding that the Respondent registered and is using the Domain Name in bad faith for commercial gain by intentionally creating a likelihood of confusion with the Complainants’ AMRESORTS Marks, and there is no legitimate use by the Respondent, and that the Respondent used the Domain Name in connection with a fraudulent scam which appears to come from someone who claims to be employed or authorized by the Complainant. That the Respondent employed a privacy protection service to register the Domain Name is consistent with this conclusion. The Panel agrees with the Complainant that the Respondent’s continued ownership of the Domain Name poses a real threat that the fraudulent use of the Domain Name will continue in the future, which is sufficient to demonstrate bad faith use. See Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. Limited,WIPO Case No. D2014-1564 (“the presence of the Domain Name in the hands of the Respondent represents […] an abusive threat hanging over the head of the Complainant […] and therefore a continuing abusive use.”). Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant, as well as the evidence of fraudulent emails, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under 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 Domain Name Ellen B Shankman
Sole Panelist
Date: April 30, 2020
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