The Complainant is Centro de Promociones Los Cabos San Lucas, S.A. de C.V., Mexico, represented by CAYAD, S.C., Mexico.
The Respondent is National Realty Group, Inc., United States of America (“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 October 15, 2020. On October 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 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 October 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2020. On November 11 and 15, 2020, the Center received two email communications from the Respondent. The Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on November 29, 2020. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on December 6, 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 Complainant is a Mexican hotel group founded in 1973, presently operating five hotels: Playa Grande, Solmar, Grand Solmar, The Ridge, and Quinta del Sol as well as a real estate developer in Los Cabos. It operates, amongst others, the domain names - Mexican trademark registration No. 541422 for the word & design mark SOLMAR, filed on December 3, 1996, registered on January 31, 1997 and subsequently renewed, in International class 43; and The disputed domain name The Complainant asserts to be a hotel group and real estate developer operating more than 1,000 rooms and villas in the region of Los Cabos in Mexico. In the Complainant’s view, the disputed domain name reproduces the Complainant’s trademark with the geographic term “cabo” that refers to the location where the Complainant’s properties are located, thus creating a likelihood of confusion with the Complainant’s trademark. Moreover, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name given that: (i) the webpage that resolved from the disputed domain name promoted rental, reservation and concierge services displaying the Complainant’s trademarks and copyrighted contents such as photographs of the Complainant’s resorts located in Cabo San Lucas, as well as a framed video from the Complainant’s YouTube channel, which creates a likelihood of confusion with the Complainant’s trademark and does not characterize a bona fide offering of goods and services; (ii) the Complainant has not consented or licensed the Respondent, nor is the Respondent associated with the Complainant in any way; (iii) the Respondent has not been commonly known by the disputed domain name, nor does it hold trademarks relating to the disputed domain name in the United States or Mexico (Annexes 15 and 16 to the Complaint); (iv) the Respondent is not making a legitimate or fair use of the disputed domain name since it is intentionally using the disputed domain name to redirect Internet users to a webpage offering competing services and unlawfully diverting the Complainant’s consumers. As to the registration and use of the disputed domain name in bad faith the Complainant argues that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant and/or by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Complainant’s web sites or locations. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. On November 11, 2020, the Respondent sent an email communication stating that the website associated with the disputed domain name had been closed and suggesting that “any consideration that [might be extended] regarding compensation related to abandoning [the disputed domain name] would be welcome”. On November 15, 2020, the Respondent sent a second email message requesting the suppression of an email address that was “not a live address”. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant: (i) the disputed 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 in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name. In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar The Complainant has established its rights in the registered SOLMAR trademark. The Panel finds that the disputed domain name reproduces the textual components of the Complainant’s mark SOLMAR in its entirety and is therefore confusingly similar to it. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), sections 1.7 and 1.10). The first element of the Policy has therefore been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are: (i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent. In that sense, and as the evidence submitted clearly indicates, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, given that the Respondent has used the disputed domain name to redirect Internet users to a webpage offering competing services and unduly reproducing the Complainant’s copyrighted promotional materials. Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name or the absence of any trademarks registered by the Respondent corresponding to the disputed domain name, corroborates with the indication of the absence of a right or legitimate interest in the disputed domain name. Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. The second element of the Policy has therefore been established. C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of: (i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’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 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. The registration and use of the disputed domain name in bad faith can be found in the present case in view of the following circumstances: (i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name; (ii) the Respondent’s use of the disputed domain name to redirect Internet users to a webpage offering hotel reservations displaying the Complainant’s trademarks and photographs of the Complainant’s resorts as well as copyrighted promotional material; and (iii) the suggestion of a potential compensation for the disputed domain name in the message sent by the Respondent, corroborates with a finding of the Respondent’s intention of unduly profiting from the value in the Complainant’s trademark, and is an indication of the Respondent’s registration and holding of the disputed domain name in bad faith, with implausibility of any good faith use to which the disputed domain name may be put. For the reasons as those stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(b)(i) of the Policy. The third element of the Policy has therefore been established. 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 Wilson Pinheiro Jabur
- Mexican trademark registration No. 1149459 for the word & design mark SOLMAR, filed on November 20, 2009, registered on March 19, 2010 and subsequently renewed, in International class 43.
Sole Panelist
Date: December 20, 2020
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