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Quiroocan, S.A. de C.V. Barcelу Group v. Anton Chekkov
Case No. D2006-0672
1. The Parties
The Complainant is Quiroocan, S.A. de C.V., Barcelу Group, Palma de Mallorca, Baleares, Spain, represented by Herrero & Asociados, Spain.
The Respondent is Anton Chekkov, Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <barcelomayaresort.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2006. On May 31, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. The same day, eNom transmitted by email to the Center its verification response in which it indicated that the Registrant was not the person set forth in the Complaint, and provided the Respondent’s details for administrative, billing, and technical contacts. In response to a notification by the Center that the Complaint was formally deficient, the Complainant filed an amendment to the Complaint identifying the correct Respondent on June 6, 2006. 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 June 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for a Response was July 3, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2006.
The Center appointed Stefan Naumann as sole panelist in this matter on July 19, 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.
In a procedural order of July 31, 2006, the Panel
requested the Complainant to submit copies of the trademarks on which the Complaint
is based, and requested both Parties to submit any comments on the Complainant’s
evidence by August 14, 2006. On August 2, 2006, the Complainant submitted copies
of trademark certificates. As of August 16, 2006, no further comments were received
from the Parties.
4. Factual Background
The Complainant indicates that it is an affiliated company of the Barcelу Group, an international hotel group that operates in 19 countries including Spain, and in particular in Latin America and the Caribbean.
The Complainant has submitted proof that it owns the following three trademarks amongst others :
- Mexican word and device mark “Barcelу Hotels & Resorts” (number 831 310) filed on December 10, 2003, and currently in effect;
- Mexican word and device mark “Barcelу Comfort” (number 831 311) filed on December 10, 2003, and currently in effect;
- Mexican word and device mark “Barcelу Premium” (number 831 312) filed on December 10, 2003, and currently in effect.
All three trademarks designate hotel and restaurant related services in class 43, and are in effect for a period of 10 years as of their date of filing.
The Complaint refers to seven other trademarks with the term “Barcelу” alone or in combination with other terms, including a Mexican trademark BARCELУ MAYA BEACH RESORT (number 800 593). For three of these seven trademarks, the Complainant has submitted a computer print-out on Complainant’s counsel’s letterhead dated December 13, 2005. The Complainant has submitted no evidence for the remaining four trademarks. Copies of the registrations and/or renewals of these seven marks, or print-outs from the trademark registries’ databases, were not included in Complainant’s evidence.
On June 3, 2005, the Respondent registered the domain
5. Parties’ Contentions
The Complainant argues that the Respondent’s domain name is confusingly similar to the Complainant’s BARCELУ trademarks. According to the Complainant, the Respondent has no rights or legitimate interest in the domain name <barcelomayaresort.com> because the Respondent has not and cannot possibly demonstrate any of the circumstances enumerated under paragraph 4(c) of the Policy. In particular, the domain name is used to provide information about third party hotels, there exists no third party trade names in Mexico with the terms “Barcelу Hotels”, nor do any companies operating in the hotel industry use the trade name “barcelomayaresort”, and the Respondent is not authorized or licensed to use the Complainant’s trademarks.
The Complainant considers that the Respondent registered and used the domain name in bad faith because the Complainant’s hotels are well known worldwide, the term “barcelomayaresort” identifies only the Complainant and is not linked to any other person or entity, the Respondents’ choice of domain name can only be the result of an attempt to mislead the public, and the Respondent’s website refers to third party hotels.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
The Complainant has established that it has acquired trademark rights in the term “Barcelу” and that these rights are prior to the registration of the disputed domain name.
The Complainant has indicated in its response to the procedural order that it bases its Complaint on the trademarks for which it submitted copies of the registration certificates, and has invited the Panel to carry out further verifications with the OHIM and Spanish trademark office. The Complainant has the sole burden of proof as to the existence and ownership of its registered trademark rights. The Panel considers that (i) the mere unsubstantiated assertion of trademark rights is not sufficient to support a Complaint, and (ii) documents prepared by a party’s counsel cannot replace copies of documents from the trademark registries or the trademark registry databases as evidence of the existence and ownership of trademark registrations. On this issue, the Complainant cannot rely on the Panel to carry out independent verifications.
In reaching its decision in the present matter, the Panel will consider only the three trademarks for which the Complainant provided adequate proof of registration and title.
A. Identical or Confusingly Similar
Under general trademark law principles, the addition of common or descriptive terms to a distinctive sign does not diminish the risk of confusion.
In the present matter, the Respondent added the terms “maya” and “resort” to the term “Barcelу”, which is phonetically and visually similar to the Complainant’s “Barcelу Hotels & Resorts”, “Barcelу Premiums”, “Barcelу Comfort” word and device marks set forth above. Both in the prior trademarks and in the litigious domain name, the terms that are added to “Barcelу” are mostly descriptive and do not diminish its distinctiveness.
In this context, the Complainant shows that one of its flagship hotels located on the “Mayan Riviera” is the “Barcelу Maya Beach Resort”. The terms “resort” and “maya” are arguably both descriptive when used to designate a large hotel on the Mayan Riviera. The Panel finds that the addition by the Respondent of the terms “maya” and “resort” to the term “Barcelу” does not diminish the risk of confusion, but instead actually increases, or is intended to increase, the risk of confusion.
The Panel therefore finds that the domain name <barcelomayaresort.com> is confusingly similar to the Complainant’s “Barcelу” trademarks.
B. Rights or Legitimate Interests
In order to establish that it has rights or legitimate interests in the domain name <barcelomayaresort.com>, the Respondent could attempt to demonstrate that he has made preparations to use, or actual use of the domain name, or of a name corresponding to the domain name, in connection with a bona fide offering of goods or services, or that he has been commonly known by the domain name or is making a legitimate, non-commercial or fair use thereof without intent of commercial gain and without misleadingly diverting consumers or tarnishing the trademarks.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest with respect to the domain name.
The Respondent has not offered any explanation or observations in the present matter.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the domain name <barcelomayaresort.com>.
C. Registered and Used in Bad Faith
For the Complainant to prevail, the Panel must be persuaded that the domain name at issue was both registered and used in bad faith.
In the present matter, the Respondent registered the term “ barcelomayaresort” as domain name in bad faith insofar as he has not shown any right or legitimate interest in this term, and likely was aware of the Complainant’s prior rights in the term “Barcelу”. The panel finds that the fact that the Respondent combined the term “Barcelу” with “mayaresort” constitutes strong evidence, absent any explanation by the Respondent, that he was specifically aware of the Complainant’s use of these terms.
The Respondent has not submitted any evidence or observations as to whether he could legitimately have been unaware of the Complainant’s prior rights, and the Panel finds that the domain name was registered in bad faith.
The Complainant further alleges that the domain name is used in bad faith. The Complainant’s evidence of use is a printout of May 30, 2006, of a website under the domain name <www.barcelomayaresort.com>. The printout of the web page shows that the site provides links to various types of hotels and resorts under the heading “top searches”, “recommended listings” and “popular topics”. Links include descriptive names such as “Ranch vacation”, “Luxury Hotel”, “Beaches Resort” (sic) and “Dude Ranches”, but also misspelled third party names such as “Raddison Hotel” and “Radison Hotel”.
The use of a confusingly similar domain name for a website offering, links to competitors, recommendations and information in the specific field in which the Complainant operates and uses its trademarks clearly constitutes a bad faith use of the domain name.
The Panel therefore finds that the Respondent has registered and used the domain
name <barcelomayaresort.com> 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 <barcelomayaresort.com> be transferred to the Complainant.
Dated: August 30, 2006