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Barcelу Corporaciуn Empresarial, S.A. v. KPYR / Svetlana Zubovich
Case No. D2005-1335
1. The Parties
The Complainant is Barcelу Corporaciуn Empresarial, S.A., Palma de Mallorca, Baleares, Spain, represented by Herrero & Asociados, Spain.
The Respondent is KPYR / Svetlana Zubovich, Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <barcelobavaropalace.com> is registered with
WGB Registry, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2005. On December 23, 2005, the Center transmitted by email to WGB Registry, Inc. a request for registrar verification in connection with the domain name at issue. On December 26, 2005, WGB Registry, Inc. transmitted by email to the Center its verification response pointing out that the Registrant of the disputed domain name was Svetlana Zubovich and not the subject indicated by the Complainant in its Complaint; then WGB Registry, Inc provided the contact details for the administrative, billing, and technical contact of the domain name. The Center sent the Complainant a notification of Complaint Deficiency on December 29, 2005, since according to the information received from the concerned Registrar the registrant of the disputed domain name was not the entity specified in the Complaint as the Respondent. In response to the above notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 29, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 January 4, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2006.
The Center appointed Alessandra Ferreri as the Sole
Panelist in this matter on February 3, 2006. 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 BARCELУ CORPORACIУN EMPRESARIAL, S.A. which belongs to Barcelу Group, one of the most famous and important hotel groups in Spain with hotel business in all the world.
The Complainant submitted documents that BARCELУ Group is one of the 30 largest hotel companies in the world in terms of number of rooms and it currently has more than 32000 rooms in 19 countries all over the world with hotels in ownership, management and franchising regimes.
The Complainant is the owner of a broad range of trademark registrations worldwide consisting of or including the word BARCELУ. Said trademarks are used for different kinds of goods and services and, in particular, for services related to the hotels, boarding houses and other establishments providing temporary accommodation (and for the goods and services connected to said activities). The Complainant’s trademarks are registered in many different countries in Europe, in the United States and in Latin America.
The Complainant submitted documents that BARCELУ Group owns 14 hotels in the Dominican Republic, six of which are located in Playa Bavarу. The most luxurious hotel of the complex is named Barcelу Bavarу Palace opened in 2001.
The Respondent registered the domain name <barcelobavaropalace.com> on
June 3, 2005.
5. Parties’ Contentions
The Complainant contends that BARCELУ is the name of one of the 30 largest hotel companies in the world and one of the ten best regarded brands in Latin America in all business sectors. It currently has more than 32000 rooms in 19 countries all over the world with hotels in ownership, management and franchising regimes. The name BARCELУ is today associated with one of the most prestigious holiday groups.
In light of the above factual arguments, the Complainant contends that BARCELУ is a very well-known mark, at least within its sector.
The Complainant contends that:
- the domain name <barcelobavaropalace.com> registered by the Respondent is very similar to the trademarks held by the Complainant and is identical to the business name Barcelу Bavarу Palace under which the Complainant operates one of the most prestigious hotels in the Dominican Republic;
- the Respondent has no rights or legitimate interests in respect of the Domain Name. As a matter of fact, the Respondent was not authorized by the Complainant to use the BARCELУ trademarks or to register a domain name incorporating said trademarks. The Respondent is not making a legitimate non-commercial or fair use of the domain name and prior to any notice of the Complaint the Respondent had not used the domain name in connection with a bona fide offering of goods or services. The Respondent has no rights in the trademarks BARCELУ and in the domain name <barcelobavaropalace.com>;
- the domain name <barcelobavaropalace.com> has been registered and is being used in bad faith for the following reasons:
Since the domain name can identify only the Complainant, and in particular the resort “Barcelу Bavarу Palace” owned by the Barcelу Group, the Respondent has registered said domain name with the sole aim of attracting a “misleaded” public in search for information concerning the above resort.
The domain name is currently resolving to a website where information concerning other hotels as well as general information about the Dominican Republic are offered. The website to which the domain name <barcelobavaropalace.com> is resolving includes many links to tour operators, such as ‘Trip Advisors’, ‘Orbitz’ and ‘Hotel Super Portal’ offering information about other hotels with a clear unfair advantage for them.
The Respondent did not reply to the Complainant’s
contentions and should therefore be considered in default. The Panel, in compliance
with paragraph 14 of the Rules, shall draw such inferences therefrom, as it
considers appropriate and shall proceed to a decision on the Complaint.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the domain name registered by the respondent 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 domain name registered by the respondent has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <barcelobavaropalace.com> is confusingly similar to the Complainant’s BARCELУ trademark, a well-known mark in which the Complainant has established rights through registration and extensive use, at least, in connection with the sector of hotels business and management.
The disputed domain name incorporates the Complainant’s BARCELУ trademark in its entirety or, in anyway, the distinctive and dominant partof all the trademarks held by the Complainant, i.e. the word BARCELУ.
The addition of the geographical indicator ‘BAVARУ’ (that is the
name of the most famous and popular beach of the Dominican Republic) or of the
generic term ‘Palace’ (that, rather, relates to Complainant’s
business activity, meaning in hotel business a particularly prestigious hotel)
to a well-known trademark does not prevent a confusing similarity between the
domain name and said trademark (see America Online Inc. v. Yetech Communication
Inc., WIPO Case No. D2001-0055,
GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO
Case No. D2002-0195, Volkswagen AG v. Emir Ulu, WIPO
Case No. D2005-0987, for the addition of a geographical indicator
see Rolls-Royce Plc v. Hallofpain, WIPO
Case No. D2000-1709, PepsiCo Inc. v. QWO, WIPO
Case No. D2004-0865).
On the contrary, the circumstance that the disputed domain name is identical to the business name Barcelу Bavarу Palace under which the Complainant operates one of the most prestigious hotel in the Dominican Republic, increases the confusing similarity between the domain name and the Complainant’s trademark.
The Panel believes that people viewing the disputed domain name without awareness
of its content may think that the domain name is in some way connected and associated
with the Complainant: this situation is known as “initial interest confusion”
(see Covance, Inc. and Covance Laboratories Ltd v. The Covance Campaign,
WIPO Case No. D2004-0206, CBS Broadcasting
Inc., f/k/a CBS Inc. v. Nabil Z. aghloul, WIPO
Case No. D2004-0988).
Thus, the Panel finds that the domain name <barcelobavaropalace.com> is confusingly similar to Complainant’s trademarks.
For all the foregoing reasons, the Panel finds that the Complainant has met its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel notes that the Center employed reasonably available means to notify the Complaint to the Respondent in accordance with paragraph 2(a) of the Rules. However, due to the incorrect contact information provided by the Respondent to the registrar, the Center was unable to make actual notice of the proceeding to the Respondent.
In the circumstances, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the domain name, such as:
(i) use or preparation 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 notice of the dispute, or
(ii) being commonly known by the domain name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making 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.
There is no evidence in the record that the Respondent has any rights or legitimate interests in the domain names.
The Complainant states that there is and has never been a relationship between the Complainant and the Respondent. The Respondent is not a licensee of the Complainant and no authorization has been granted to the Respondent to use the trademark BARCELУ or to apply for any domain name incorporating the Complainant’s trademarks. The Respondent’s name does not coincide with the domain name and both on the market and in Internet the name Barcelу Bavarу Palace identifies only the resort of Barcelу Group.
Therefore, based on the case file, the Panel is satisfied that the second condition is met.
C. Registered and Used in Bad Faith
The Panel finds that the domain name was registered and is being used in bad faith.
In light of the evidence filed by the Complainant, the Panel finds that the Complainant’s trademarks and activities are known throughout the world, at least in the sector of hotels and holiday business and management.
Accordingly, in the Panel’s belief, the Respondent must have known about the Complainant’s existence and rights at the time of the registration of the domain name <barcelobavaropalace.com>. And indeed, the Respondent’s awareness of Complainant’s activity and rights is proved by the fact that the Respondent registered a domain name identical to the business name Barcelу Bavarу Palace under which one of the most prestigious hotels of the Caribbean area is operated by the Complainant.
As the Respondent has no rights or interests in this
trademark, in line with other prior decisions (Banca Sella S.p.A. v. Mr.
Paolo Parente, WIPO Case No. D2000-1157;
Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO
Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas
and Christiandior.net, WIPO Case No. D2000-0226;
Ferrero S.p.A. v. Mario Pisano, WIPO
Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l., WIPO
Case No. D2002-0395) the Panel believes that, in the absence of any right
or legitimate interest and lacking any contrary evidence by the Respondent,
the Respondent’s registration of a domain name confusingly similar to
the Complainant’s known trademark may be proof of bad faith.
The Complainant produced two webpage printouts which demonstrate that on December 19, 2005, the disputed domain name resolved to a website where information concerning other hotels as well as general information about the Dominican Republic were offered. The website to which the domain name <barcelobavaropalace.com> resolved, included many links to tour operators, such as ‘Trip Advisors’, ‘Orbitz’ and ‘Hotel Super Portal’ offering information about other hotels than the Barcelу Bavarу Palace.
In the Panel’s opinion the Respondent, by such use, intentionally attempted to attract Internet users, expecting to reach the website corresponding to the Complainant’s resort and to obtain information about the Barcelу Bavarу Palace, to other online locations by creating a likelihood of confusion with the Complainant’s trademarks and business.
By exploiting the renown the BARCELУ trademark and the name of one of the most prestigious hotels of the Dominican Republic, the Respondent seeks to gain profit out of the domain name by providing sponsored links on the corresponding website.
In addition, the Panel finds that the Respondent’s bad faith is also demonstrated by the provision of false information about Respondent’s address provided to the Registrar.
Indeed, the Respondent provided incorrect details to the Registrar, as is proved by the fact that the e-mail addresses on the whois database page had permanent fatal errors and the delivery of the Notification of Complaint to the Respondent by courier was not possible due to the incorrect or non existent Respondent’s address.
In prior UDRP decisions, it has been established that the use of false contact
information is an indication that the Respondent registered the domain name
in bad faith (See Chanel v. 1, WIPO
Case No. D2003-0218; Action Instruments, Inc v. Technology Associates,
WIPO Case No. D2003-0024; Wachovia
Corporation v. Peter Carrington, WIPO
Case No. D2002-0775; Royal Bank of Scotland Group v. Stealth Commerce,
WIPO Case No. D2002-0155; Oxygen Media,
LLC v. Primary Source, WIPO Case No. D2000-0362;
Home Director, Inc. v. Home Director, WIPO
Case No. D2000-0111).
In light of all the above circumstances, the Panel is satisfied that the third
condition is met and that the domain name <barcelobavaropalace.com> was
registered and is being used in bad faith.
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 <barcelobavaropalace.com> be transferred to the Complainant.
Dated: February 17, 2006