The Complainant is Irotama S.A. of Bogota, D.C., Colombia, represented by Triana, Uribe & Michelsen, Colombia.
The Respondent is Mr. Richard Bonn III of Scottsdale, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2010. On October 27, 2010, the Center transmitted by email to GoD Inc. a request for registrar verification in connection with the disputed domain name. On October 27, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details of the WhoIs registry.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2010.
On November 19, 2010, Complainant’s representative filed an additional submission with the Center. The Center acknowledged receipt of the Supplemental filing on November 22, 2010.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on November 26, 2010. 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.
The language of this administrative proceeding is English, being the language of the registration agreement. 4. Factual Background
The Complainant is Irotama S.A., a corporation organized and existing under the laws of Colombia that owns a hotel located near Santa Marta at the Colombian Caribbean coast.
The Complainant owns two trademark registrations for IROTAMA in class 37 (reg. No. 332604 filed on November 10, 2006, granted on May 16, 2007) and class 42 (reg. 168671, filed initially on April 15, 1993, duly renewed) in Colombia. The Complainant also owns a domain name incorporating its mark located at ”www.m“ and registered on February 12, 1997.
The Respondent was a guest in the Complainant’s hotel but decided to leave the hotel after spending one night, considering that the hotel did not fulfill his expectations. The Respondent requested to be refunded for the remaining nights that they had already paid. In is not clear from the record whether the Respondent was completely refunded or not. The Respondent claimed additional refund and as retaliation, the Respondent registered the disputed domain name.
The disputed domain name was registered on July 22, 2010. The disputed domain name contains a web page with the title in Spanish “Críticas al Hotel Irotama” and hosts a Wordpress blog with only one post in Spanish dated August 5, 2010, criticizing the quality of the services of Complainant’s hotel1.
The Respondent has also registered the following other domain names: , , , and . On October 22, 2010, the Complainant filed another UDRP complaint,WIPO Case No. D2010-1784, against the Respondent, related to the registration of those domain names. At the time of this decision there is no decision adopted in theWIPO Case No. D2010-1784. 5. Parties’ Contentions A. Complainant
The following is taken from the Complaint.
The Complainant is a company that has been developing its activities since its incorporation in the year 1969. According to the Complaint, IROTAMA is one of Colombia’s most famous hotels located near Santa Marta, at the Colombian Caribbean coast with all the comfort and facilities of a 5-Star Resort.
The Complainant argues that the Respondent was a guest in the Complainant’s hotel on July 2009. The Respondent, together with the other guests, decided to leave the hotel after spending one night, considering that the hotel did not fulfill their expectations. The Respondent requested to be refunded for the remaining nights that they had already paid. Because the rooms were booked through Aviancatours, it was impossible for the hotel to proceed to the requested refund immediately. The Complainant therefore contacted Aviancatours and requested a refund to the guests including the Respondent. However, it was impossible for Aviancatours to refund the Respondent without an individual request of the Respondent. In addition there was no contact information from the Respondent because the booking was done via one of the other guests. Finally Aviancatours was able to locate the Respondent via one of the other guests and proceeded with the requested refund.
The Complainant contends that the disputed domain name is identical to its registered IROTAMA trademarks in Colombia for classes 37 and 42. The relevant part of the domain name is IROTAMA, since the suffix “.co” corresponds to the country code top level domain, which cannot be considered as distinctive. Concerning the likelihood of confusion, the disputed domain name incorporates the Complainant trademarks in its whole, creating confusion among clients of the Complainant, who seek for the several online services and information offered by the hotel and resort Irotama. The Complainant cites article 155 of Decision 486 of the Commission of the Andean Community as applicable to the marks IROTAMA since those are registered in the Republic of Colombia and any unauthorized use of the mentioned marks should be remedied under these norms.
The Complainant contends that the Respondent lacks rights or any legitimate interests in the disputed domain name. The Complainant has exclusive rights to use its marks IROTAMA and to prevent third parties from doing so without authorization. The Respondent deliberately registered the domain name knowing it lacked any industrial property rights over the domains. According to Complainant, the purpose of the registration is to use the domain names as a defamation and extortion platform against Complainant. There is no license or authorization by the Complainant to use the trademarks in the domain names. The Complainant is not aware that the Respondent is or has been commonly known by the domain name. There are no facts or elements to justify prior rights or a legitimate connection to the mark IROTAMA.
The word “Irotama” is neither a common word nor a generic expression in Spanish and it is not even listed in the Royal Academy of Spanish language Dictionary (Diccionario de la Real Academia Española). The word IROTAMA is a Tarnow word (a native Indian tribe). The use of the word “irotama” by the Respondent for the disputed domain name must be considered illegitimate, in what would appear to be, either an effort to damage Complainant’s good name and reputation, or an attempt to obtain money from the Complainant and build some kind of revenge.
The Complainant argues that the registration and use of the disputed domain name for defamation and with the perspective of obtaining money from the Complainant through extortion and threats does not constitute a bona fide offering of goods and services or a legitimate noncommercial fair use under the Policy.
The Complainant cites for this purpose the case Council for Refractive Surgery Quality Assurance a nonprofit California corporation (USAEyes) v. Brent Hanson (NAF Claim No. 1237910) where it was held that “The Respondent is using the domain name to criticize and harass Complainant, and to tarnish Complainant’s USAEYES mark. Respondent previously used the , , and domain names in a similar manner, and the UDRP panel in that case found that Respondent lacked rights and legitimate interests in those domain names. … Complainant argues that Respondent simply removed the content from the resolving website of those three domain names and placed it on the website resolving from the domain name. This Panel adopts the reasoning of the panel in the previous case and finds that Respondent’s use of Complainant’s USAEYES mark in the disputed domain name to host a criticism website constitutes a lack of rights and legitimate interests. Therefore, the Respondent is not using the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv) … ”.
The Complainant contends that the Respondent registered and has used the disputed domain name in bad faith. The Complainant cites the four instances of paragraph 4(b) of the Policy as being applicable to this case. The Complainant argues that the Respondent registered the disputed domain name on July 22, 2010. The registration of the disputed domain name took place almost 40 years after the Complainant was incorporated and 15 years after the first IROTAMA trademark was registered. Finally the Complainant argues that the disputed domain name was registered 12 years after the domain name was registered and also used by the Complainant.
The Respondent registered the disputed domain name with the intentional purpose of conducting a defamation campaign against the Complainant and with the clear purpose of obtaining economic benefits as shown in the e-mails the Respondent sent to the Complainant. The Complainant cites correspondence between the parties including electronic mails dated June 1, 2010; September 10, 2010; September 17, 2010 and October 17, 2010. The Complainant characterizes those communications as threatening emails from the Respondent to the Complainant.
During the course of correspondence with a representative of the Complainant, the Respondent stated in an electronic mail dated June 1, 2010 that “[o]ur web sites have age and are ready to be moved up. I have been telling you this is coming. Now is the time. This will affect your business. Wire $ 21,000 USD to Richard Bonn … After the 25th June it will be $ 23, 000. It is a new world and cheating will be exposed”.
As an answer to this email, representative of the Complainant sent a cease and desist letter to the Respondent, requesting immediate transfer of the disputed domain name and to cease all defamation against IROTAMA.
The Respondent response stated in an electronic mail dated September 10, 2010, was the following: “Here is my friendly agreement offer $ 10,000 wired to: Richard Bonn […] The hotel cheated me. I want a full refund from my stay at the hotel and to be paid for all of my inconvenience. Upon full payment will transfer all domain names to the hotel… best regards. Richard Bonn” (the email is also written in Spanish).
The Complainant argues that its representative sent a new letter explaining that the refund had already been made and that the Respondent had no legal reason to keep using the disputed domain name.
After this, the Respondent stated in an electronic mail dated September 17, 2010 that: “I am NOT going to back down. If you want the sites taken down and me to stop you need to wire $10,000 for my refund and all the work I had to do on this. In fact, I am going to pick up the pace of my campaign to get my refund and paid for my time. Keeping this going will cost the hotel more money in lost business that the fair amount I am asking for. The part you do not seem to understand is that I know how to expose what the hotel did to me with or without the domain names. Solving this in a friendly manner like I propose could save the hotel millions” (the email contains a similar text in Spanish).
The Complainant points out that after this e-mail the Complainant was instructed to prepare the UDRP complaints. In the meantime, the Respondent stated in an electronic mail dated October 17, 2010 that, “You have had times to think about this. I am going to start being more aggressive to get my refund. The resort did wrong. If I do not hear from you this week, I will start my very aggressive campaign. What has been done thus far can be undone. What I am going to start can never be undone and will affect the resort for many years”.
The Complainant points out that from those mails it is clear that the Respondent registered the disputed domain name in bad faith and with the purpose of attacking Complainant, disrupting its business and obtaining economic profits. According to Complainant, this reluctance to negotiate places the Respondent in the situation stated in paragraph 4(b)(iv) of the Policy.
The Complainant requested as a remedy transfer of the disputed domain name.
The Complainant made an Additional Submission on November 19, 2010 requesting the Panel to admit new electronic mails received by the Complainant after filing of the Complaint. According to Complainant, the electronic mails contain the same threatening tone of previous electronic mails. In addition the Complainant states that after filing the complaint in caseWIPO Case No. D2010-1784 (related to the domain names , , and ), the Complainant received another email from the Respondent that it characterized as threatening.
The Complainant attached a copy of an email received on October 26, 2010, as a response to the filing of this Complaint, with the following phrase: “Keep up the good work. I will have more for you soon. Best regards, Richard Bonn”.
In response to the filing of the complaint in caseWIPO Case No. D2010-1784, the Respondent stated in an electronic mail dated October 22, 2010, that: “I own this company We have 30 full time employees in Colombia. Search Google for “reputation management”. I will keep this going for years. The hotel cheated me and there is only one way to stop this. Give me a refund and pay me for my time (now 20K). You cannot win. The world has changed. You can’t just cheat people. All that has been done up to this point can be undone. I am going to start using other sites that can never be undone. I will put two full time people on this. I can do 1000s of these each week. I can push them to the top of Google. I am going to tell the world my Irotama horror story. The longer it takes for you to wake up the more it will cost”. The email contains a list of links to videos and other web sites with commentary critical to the Complainant.
On October 24, 2010, the Respondent sent another email to the Complainant’s lawyer stating: “I took time today to read your complaint. I think you made a big error. You will not be happy when you figure out what it is. We asked for a refund for the time we did NOT stay at the hotel because the hotel did not have the rooms we paid for and put us in really bad rooms. The night manager […] did not agree to the refund and would not meet with us. Now what sense does this make? Ended up we won back the money in our dispute with American Express 9 months after our stay and not the full amount as you stated but about half (attached). Now add legal fees (you and the first lawyer), the $1500 fee and all the lost business and it makes as much sense as a 200 year old civil war. After all this the hotel is still too stupid to stop this. And the war continues. Did you know the first lawyer called me? Seemed like a nice guy and told me he would tell the hotel to give us a refund. We never heard a word again until you. I had to do a lot of work to get a part of the money back and I surely spend more than $2000. The hotel fought us every step of the way. How long do you want this to continue? Do I really need to move some more negative sites to the top of Google? It will take a couple of months but I can do it. I guess the longer this goes on the more money will make right? Best regards. Richard Bonn”.
On November 3, 2010, the Respondent sent another email to the Complainant’s lawyer stating: “We are building new web sites now. We are going to push up other web sites that promote our cause. I will list you a list of both soon. Nothing is going to stop this except the hotel righting the wrong they did”.
The Complainant concludes the supplemental brief arguing that the Respondent is acting in bad faith and that he is conducting an extortive campaign against the Complainant, looking for economic profits and also wants to seriously damage Complainant’s reputation.
The Complainant reiterates its request of transfer of the disputed domain name. B. Respondent
The Respondent has failed to respond to the Complaint, and therefore is in default. In light of the default this Panel may draw such inferences from the default as it considers appropriate, paragraph 14(b) of the Rules. Nevertheless the Panel shall proceed to a decision on the Complaint, paragraph 14(a) of the Rules, based on the statements and documents submitted and in accordance with the UDRP Policy and Rules. Paragraph 15(a) of the Rules. 6. Discussion and Findings A. Procedural Matters
As indicated in the Procedural History, the Complainant has submitted a supplemental filing, without having been required to do so by the Panel, in connection with certain electronic mails received from the Respondent after the filing of the Complaint.
According to the criteria set out in previous decisions adopted under the Policy (see, for example, decisions in Delikomat Betriebsverpflegung Gesellshcaft m.b.H. v. Alexander Lehner,WIPO Case No. D2001-1447; Autonation Holding Corp. v. Rabea Alawneh,WIPO Case No. D2002-0058), unsolicited supplemental filings should be accepted by the Panel if the following two circumstances are met: (i) the eventual acceptance of such filings should not breach the guarantee to both parties to be treated equally, so each one has a fair opportunity for presenting its case; and (ii) the supplemental filings should address relevant issues which were not known by the filing party at the time that it filed its documents, and that could affect the outcome of the decision.
After having made a summary review of the content of the Complainant’s additional filing the Panel finds that it does pertain to new documents and also new circumstances that were previously unknown to the Complainant at the time of filing of this Complaint. Such filing was also communicated by the Center to the Respondent by email dated November 19, 2010. Accordingly, the Panel considers that the Complainant’s additional submission fulfills the above-mentioned criteria and, therefore, the Panel will consider it in its decision. B. Substantive Matters
Pursuant to paragraph 4(a), the Complainant must prove that each of the following three elements are present if the Complaint is to prevail:
(i) The Respondent’s 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 domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. 1. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in IROTAMA as evidenced by the trademark registrations in Colombia submitted with the Complaint, as mentioned above.
The Panel considers that the domain name is identical and confusingly similar to the Complainant’s trademark IROTAMA. The suffix “.co” being inconsequential, see Imperial Tobacco Canada Limited v. Nicholas Bulgin,WIPO Case No. DCO2010-0020.
Furthermore, the Respondent elected to use the IROTAMA trademark as a domain name in the ccTLD for Colombia that uses the suffix “.co”, that is the jurisdiction where Complainant’s hotel is located. Internet users may expect to find the Complainant’s web site in the ccTLD for Colombia, and not the Respondent web site.
The Complainant has established this element of its case. 2. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to 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:
(a) that it has 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 prior to the dispute; or
(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(c) that it is making a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Policy places the burden on the complainant to establish the absence of the respondent rights or legitimate interest in the disputed domain names. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lack rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1). If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Respondent has failed to show that it has acquired any trademark rights in respect of the domain name or that the domain name is used in connection with a bona fide offering of goods or services. The Complainant has not licensed or otherwise consented to the Respondent's use of the trademark IROTAMA in connection with the disputed domain name which the Panel has found for the purposes of this case to be identical to the trademark.
From the submitted evidence in this case, the Panel finds that it is established that the Respondent is using the disputed domain name for a website containing general criticism of the Complainant's business. Under the Policy the Respondent has a right to make a legitimate, noncommercial or fair use of a domain name provided that there is no intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. Thus the Policy protects the practice of genuine, noncommercial criticism (see, e.g., TUI AG v. Andrej Gajdar,WIPO Case No. D2009-1371).
The Respondent has chosen not to provide a Response to the Complaint, so we are left with the inferences we are able to draw from the Complainant’s case. In the instant case, the Panel does not dispute the Respondent’s right to establish and maintain an Internet website critical of the Complainant (without prejudice to any claims the Complainant may have regarding the truthfulness and intent of such criticism). In addition, whether the Respondent is entitled to more than he was refunded or whether the refund was appropriate, enough or inadequate is out of the scope of this proceeding.
However, several decisions have stressed the potential legitimacy of criticism independent of choosing a third party’s mark as a domain name for the web site under on which such criticism is posted (see Compagnie de Saint Gobain v. Com-Union Corp,WIPO Case No. D2000-0020; SA International a.k.a. Canadian Standards Association v. John O. Shannon and Care Tech Industries, Inc,WIPO Case No. D2000-0071; G Corporation v. William E. Merritt,WIPO Case No. D2000-0266; Monty and Pat Roberts, Inc. v. Bill Keith,WIPO Case No. D2000-0299; Bandon Dunes L.P. v. DefaultD,WIPO Case No. D2000-0431; Sears, Roebuck and Co. v. Hanna Law Office,WIPO Case No. D2000-0669).
In addition, the Panel considers that the Respondent cannot register numerous domain names bearing Complainant’s trademarks for the purposes of populating the web and the results in search engines with critical comments to the Complainant and then make a request to the Complainant of a payment to stop such “disparagement campaign”2. Based on the evidence available in the record of the case, the Panel considers that those actions cannot be considered as a fair or legitimate use of the Complainant’s trademark under the Policy. The disputed domain name and all other domain names registered by the Respondent are being used to criticize and harass the Complainant, and to tarnish the Complainant’s trademark (see Council for Refractive Surgery Quality Assurance a nonprofit California corporation v. Brent Hanson, NAF Claim No. 1237910). Therefore, in this Panel’s view, under the circumstances of this case, the Respondent is not using the domain name in connection with a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii).
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. 3. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.
At the time of registration of the disputed domain name the Respondent had already been a guest in Complainant’s hotel so he knew of the existence of the IROTAMA Hotel and its distinctive trademark in Colombia. Therefore the disputed domain name was registered with knowledge of the existence of the IROTAMA trademark.
In addition, there is evidence before the Panel establishing that the disputed domain name was registered primarily for the purpose of transferring the domain name registration to the Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name. The Respondent is requesting the payment of a sum of money (initially USD 10,000, at some point more than USD 23,000) to stop the negative campaign and to transfer the domain name and other related domain names.
This view is confirmed with the Respondent’s answer via e-mail to the Complainant’s request for transfer of the disputed domain name. In such e-mail dated September 10, 2010, the Respondent stated the following: “Here is my friendly agreement offer $ 10,000 wired to: Richard Bonn ….The hotel cheated me. I want a full refund from my stay at the hotel and to be paid for all of my inconvenience. Upon full payment will transfer all domain names to the hotel… best regards. Richard Bonn” (emphasis added).
The Panel determines that the Respondent registered the disputed domain name for the purpose of selling or otherwise transferring proprietary interests in the disputed domain name to the Complainant for consideration in excess of his out-of-pocket costs directly related to the domain name. This constitutes bad faith within the meaning of paragraph 4(b)(i) of the Policy.
As discussed above the Respondent has also registered four other domain names , , , , all bearing the trademark IROTAMA, which are the subject of another UDRP proceeding,WIPO Case No. D2010-1784. The Respondent’s registration of the disputed domain name with full knowledge of Complainant’s trademark, and the Respondent’s subsequent registration of numerous confusingly similar domain names with related websites to publish the Respondent’s negative comments with the objective to tarnish Complainant’s service mark are to this Panel strong evidence of bad faith.
The Panel concludes that the disputed domain name was registered and is being used in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Dated: December 17, 2010
1 The disputed domain name contains the following title: “Irotama Colombia: Blog del hotel Irotama” which conveys the idea that the website is the Blog of the Irotama Hotel. This is misleading to Internet users and there is no disclaimer explaining that the blog does not belong to the Hotel Irotama. The original text in Spanish provides: “Critica al Hotel Irotama en Santa Marta By admin | Published: August 5, 2010 El Hotel Irotama no es nada de lo que muestra en su pagina Web, muestra Bungalós playas gimnasios y zonas muy lindas pero la verdad es muy decepcionante puesto cuando llegamos al Hotel Irotama no encontramos nada de lo que vimos en el web site empezando por la recepción no nos recibieron de muy buena forma tras de eso el botones no disimula para pedir la propina las habitaciones de los bungalós hechas nada… Humedad puertas oxidadas y olores desagradables fue lo que encontramos en este hotel además de pagar una suma desorbitada por lo que me queje con la gerencia del hotel y nunca me dieron un reembolso o alguna clase de bonificación por la mala estadía en su hotel en definitiva si me pregunta si recomiendo el hotel irotama dejemen decirles que no ahí muchos hoteles mejores al Irotama en colombia donde te pueden hacer sentir como un rey y por menor precio creanmen….”.
2 The merits of the Complainant’s defamation and tarnishment claims are, however, like the Respondent’s claims against the Complainant for refund or payment of a sum of money for the time not spent in the hotel, beyond the scope of jurisdiction of the Panel in this administrative proceeding.
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