The Complainant is The Coryn Group II, LLC, United States of America (“United States”), represented by Norvell IP LLC, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Sergio Soria, Mexico. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2020. On August 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 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 August 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2020. The Center appointed Luca Barbero as the sole panelist in this matter on September 30, 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 Apple Leisure Group (“ALG”) is a North American premier travel, hospitality and leisure management group. ALG has roots dating back to 1969, and is comprised of a collection of entities, including the Complainant, as well as the legal entities that together comprise the Unlimited Vacation Club (“UVC”), including, but not limited to, Club de Descuentos Vacacionales MX, S. de R.L. de C.V., and its affiliated entities. The UNLIMITED VACATION CLUB programs and services offer a wide-variety of benefits, including guaranteed preferred rates, special offers, free nights’ stays, access to premium bars and lounges, professional entertainment, VIP concierge services, in addition to other premium services. The Complainant directly or indirectly uses the trademark UNLIMITED VACATION CLUB 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. The Complainant has provided evidence of ownership of trademarks consisting of, or comprising UNLIMITED VACATION CLUB, including the following: - United States trademark registration No. 4157164 for UNLIMITED VACATION CLUB (word mark), filed on September 27, 2011 and registered on June 12, 2012, in international class 35; and - United States trademark registration No. 4031236 for UNLIMITED VACATION CLUB (figurative mark), filed on January 19, 2011 and registered on September 27, 2011 in International class 35. The Complainant is also the owner of the domain name The disputed domain name The Complainant contends that disputed domain name With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is in no way affiliated with or connected to the Complainant, that there is no evidence that the Respondent may be commonly known by the disputed domain name or that it may have had any rights predating the Complainant’s adoption and use of the trademark UNLIMITED VACATION CLUB. The Complainant further submits that there is no evidence that the Respondent has or is making any legitimate noncommercial or fair use of the disputed domain name without the intent for commercial gain. Moreover, the Complainant asserts that, given the Respondent’s use of the disputed domain name, which fully incorporates the Complainant’s trademark UNLIMITED VACATION CLUB in connection with a fraudulent email scheme, the Respondent was well aware of the Complainant’s well-known trademark UNLIMITED VACATION CLUB and knowingly adopted such trademark in the disputed domain name to create the false impression that the Respondent is associated with the Complainant, and/or an authorized representative of the Complainant for the Respondent’s personal profit and gain. With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent was undoubtedly well aware of the Complainant’s rights in the UNLIMITED VACATION CLUB marks prior to registering the disputed domain name especially since the Complainant had registered the trademark long before the registration of the disputed domain name and has in fact been using the marks since 2010 in connection with its well-known hotel and travel services. The Complainant emphasizes that the Respondent registered the disputed domain name with the intent to gain from it commercially by intentionally creating a likelihood of confusion with the Complainant’s trademark and that in doing so, the Respondent has only confirmed that it is making no conceivable legitimate use of the disputed domain name. Moreover, the Respondent’s use of the disputed domain name in connection with fraudulent emails promoting fake offers, designed to confuse and defraud consumers, would be in itself is evidence of bad faith registration and use. The Complainant further underlines that the Respondent, upon registering the disputed domain name, has also employed a privacy protection service, precluding the Complainant from learning the true identity of the registrant and contacting him/her directly, a conduct which also constitutes bad faith registration. Lastly, the Complainant asserts that the fact that the Respondent registered the disputed domain name to confuse consumers into believing that the Respondent is associated with or authorized by the Complainant, when it is clearly not, also constitutes bad faith conduct. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed 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 disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights over the trademark UNLIMITED VACATION CLUB based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annex G to the Complaint. As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In the case at hand, the Complainant’s trademark UNLIMITED VACATION CLUB is entirely reproduced in the disputed domain name, with the mere addition of a hyphen between the words “unlimited” and “vacationclub” and the Top-Level Domain “.com”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0). Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following: “(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate non-commercial 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.” In the case at hand, the Panel finds that the Complainant has made a prima facie case and notes that the Respondent, by not submitting a Response, has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. The Panel also acknowledges that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks. Moreover, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent, whose name disclosed in the Registrar’s WhoIs records for the disputed domain name is Sergio Soria, might be commonly known by the disputed domain name. As mentioned above, the disputed domain name has been pointed to a parking page with sponsored links and appears to have been used for the creation of email addresses used for the sending of fraudulent emails promoting fake offers. The Panel finds that the Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. See, along these lines, section 2.13.1 of the WIPO Overview 3.0: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith: (i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the disputed domain name; or (ii) the Respondent has registered the disputed 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) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location. As to bad faith at the time of the registration, the Panel notes that, in light of the prior registration and use of the Complainant’s trademark UNLIMITED VACATION CLUB and of the widely known character of the trademark, the Respondent was or should have been aware of the Complainant’s trademark at the time of registration. Moreover, in view of the substantial identity of the disputed domain name with the Complainant’s trademark and the Complainant’s domain name Moreover, the Complainant has provided evidence – which was not challenged by the Respondent – that the disputed domain name was used in connection with the sending of fraudulent email communications promoting fake offers in the same field of activity as the Complainant and providing notice of “expiring bonus weeks” from Unlimited Vacation Club, to coerce customers into paying a “$965 dollar usage fee” per week, either to use the week, or to rent it out. In view of the above, the Panel finds that the Respondent was indeed well aware of the Complainant’s trademark and registered the disputed domain name having said trademark in mind in order to attempt to extort money from the recipients of its email communications by inducing them to believe that the communications were delivered by, or with the approval or endorsement of, the Complainant or one of its affiliated entities. As stated in section 3.4 of the WIPO Overview 3.0, “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. […] Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers”. Furthermore, in light of the redirection of the disputed domain name to a parking page with sponsored links related to houses for rent, spas, and resorts, the Panel also finds that the Respondent intentionally attempted to attract Internet users to its website for commercial gain, by causing a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website according to paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and is using the disputed domain name in bad faith according to 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 Luca Barbero
Sole Panelist
Date: October 17, 2020
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