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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

BARCELУ CORPORACIУN EMPRESARIAL v. Mode L

Case No. D2006-1528

 

1. The Parties

The Complainant is BARCELУ CORPORACIУN EMPRESARIAL, of Palma de Mallorca, Baleares, Spain, represented by Herrero & Asociados, Spain.

The Respondent is Mode L, of Geneva, Switzerland.

 

2. The Domain Name and Registrar

The disputed domain name <barcelopuntacana.com> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2006. On December 1, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On December 1, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 December 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2007.

The Center appointed Ian Blackshaw as the sole panelist in this matter on January 8, 2007. 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

Barcelу Corporaciуn Empresarial is the name of one of the largest hotel companies in the world. Grupo Barcelу is a group of companies operating in the tourist sector with hotel management as their central and primary activity. Its hotel establishments are found both in cities and holiday resorts, especially in the medium-high fare range.

As a hotel manager, Grupo Barcelу competes in the same segment as major multinational hotel chains. Grupo Barcelу manages both its own and other hotels. Grupo Barcelу holds shares in tourist activities other than hotel management—such as, transport, travel agencies, hotel property development, etc.—for strategic, historic or opportunity-related reasons.

The Panel has been provided with a copy of the 2005 Annual Report of the Complainant, which includes a list of BARCELУ hotels and resorts in Latin America and the Caribbean.

Also Grupo Barcelу currently has more than 32,000 rooms in 19 countries all over the world with hotels in ownership, management and franchising regimes.

The “Barcelу Punta Cana” is a resort which is located in Punta Cana, Dominican Republic. The Panel has been provided with information on the “Barcelу Punta Cana” hotel to be found at “www.barcelo.com”

The Complainant holds a number of trademarks in each country where it owns a hotel (North and South America, Europe, Africa). The Complainant has provided the Panel with a list of these trademarks and domain names. These marks include one for BARCELУ PREMIUM PUNTA CANA in the Dominican Republic in class 43.

In particular, the Complainant holds the following trademarks:

- Community Trademark no. 2.093.722 BARCELУ HOTELS in class 42;

- USA Trademark no. 2.557.091 BARCELУ HOTELS & RESORTS in class 42 registered by one of the companies, which belongs to the Barcelу Group;

- Trademark in France no. 13.104.032 BARCELУ HOTELS & RESORTS in classes 38, 41 and 42;

- Trademark in Honduras no. 5.336 BARCELУ HOTELS in class 42; and

- Trademark in Costa Rica no. 94008 BARCELУ HOTELS in class 42.

The Panel has been provided with copies of the official registration documents corresponding to these trademarks.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

In view of the trademark registrations for BARCELO HOTELS and BARCELO HOTELS & RESORTS cited above, the Complainant concludes that the disputed domain name is very similar to the Complainant’s registered trademarks and also coincides with one of the Complainant’s hotels with an identical name in Punta Cana, Dominican Republic.

Thus, the first requirement of the Uniform Dispute Resolution Policy is complied with.

A2. The Respondent has no rights or legitimate interests in respect of the domain name

The Respondent has no legitimate right to the name “Barcelу Punta Cana” which is the name of one of the Complainant’s hotels in the Dominican Republic.

Neither the Barcelу Group nor the Complainant has licensed or otherwise authorized the Respondent to use its trademark or to apply for any domain name incorporating the trademark.

There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name. In fact, the Complainant is using the disputed domain name to offer information about hotels that belong to the Complainant as evidenced by what appears on the Respondent’s website incorporating the disputed domain name, a copy of which has been provided to the Panel.

There is no holder of rights to the name BARCELO HOTELS other than the Complainant. The Respondent’s name does not coincide with the disputed domain name.

A search on the Internet with Google search engine does not show a single reference to a company other than the Complainant so that, both on the market and on the Internet, “Barcelo Punta Cana” identifies only the resort of the Barcelу Group.

Therefore prior to any notice of this Complaint, the Respondent had not used the disputed domain name in connection with any bona fide offering of goods or services.

It is clear that the defendant holds no legitimate rights to the domain name <barcelopuntacana.com> since in this sector (hotels) there is no other company with this name other than the Complainant.

A3. The domain name was registered and is being used in bad faith

The foregoing implies that the domain name, identifying only the Complainant and not linked to any other individual or legal entity in the world, can only have been registered in bad faith by the Respondent, with the sole aim of attracting a “misled” public to the website in the search for information on the referred resort.

Besides, the current website of “www.barcelopuntacana.com” offers information of other hotels as well as general and hotels information of the Dominican Republic.

The Respondent has a clear purpose of disrupting the business of the Complainant since the Complainant takes care of its hotel quality and is one of the 30 largest hotel companies in the world. That is why the registration of this domain name cannot be accidental.

If anyone searches the expression “Barcelo Punta Cana” on the Internet, it is very easy that someone would enter <barcelopuntacana.com> in order to obtain information about this resort. In that case, the website “www.barcelopuntacana.com” may induce confusion in the public.

Before filing this Complaint, the Complainant, through its trademark attorneys in Spain, tried to contact the Respondent to settle this issue, but no reply was received from the Respondent. A copy of the ‘cease and desist letter’ dated November 10, 2006 sent to the Respondent has been provided to the Panel.

The Complainant, therefore, believes that the three requirements in the Policy apply in this case.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any part in them.

 

6. Discussion and Findings

To qualify for cancellation or transfer of the domain name at issue, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous WIPO UDRP cases in which the respondent failed to file a Response, the Panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default (Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well-established in previous WIPO UDRP cases that, where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The disputed domain name incorporates the name “Barcelo”, which is the corporate name of the Complainant and also the essential and distinctive part of the Complainant’s trademark BARCELO HOTELS, which is owned and has been commercially used and extensively and financially promoted by the Complainant in and for the purposes of its well-established hotel and tourist business for many years in many parts of the world. The use of the words “puntacana” is purely descriptive and not distinctive, referring to a resort in the Dominican Republic where the Complainant has one of its leading hotels. Indeed, the use of such descriptor adds confusion (as this decision will later discuss) rather than avoiding it. Thus, the disputed domain name is confusingly similar to the Complainant’s marks.

The Panel agrees with the Complainant’s contentions that the Complainant has well-established rights in its trademark. Based on the evidence and arguments adduced by the Complainant, the Panel accepts that the Complainant’s trademark is widely known and enjoys a good reputation in its field of business in many parts of the world, including the Dominican Republic.

Thus, the use by the Respondent of the name “Barcelo” in conjunction with the descriptor “puntacana” in the disputed domain name will, most likely, result in confusion in the marketplace amongst Internet users and potential consumers seeking information about the Complainant’s Hotel in Punta Cana in the Dominican Republic.

In view of all this, the Panel finds that the domain name registered by the Respondent is confusingly similar to the essential part of the trademark BARCELO HOTELS, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established and commercially valuable rights through registration, substantial financial investment in and promotion of its trademark, as well as exclusive commercial use of the same by the Complainant over many years for the purposes of its hotel and business.

B. Rights or Legitimate Interests

To determine whether the Respondent has any rights or legitimate interests in respect of the domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s 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;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Indeed, in view of the Complainant’s widely known trademark BARCELO HOTELS and its widely known trade name BARCELO, the Respondent must have known, when registering the disputed domain name, that the Respondent could not have - or, indeed, claimed - any such rights or interests. Neither is there any evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known tradename BARCELO or trademark BARCELO HOTELS as part of the disputed domain name. In any case, had the Respondent had any such rights or legitimate interests, the Respondent would have been expected to assert them; the Respondent has not done so and the Panel, therefore, draws the corresponding inferences.

In particular, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the disputed domain name for a website that purports to be and gives the impression of emanating from or, at least, in some way, being associated with the widely known, substantial and successful business being carried on by the Complainant. Such conduct on the part of the Respondent can hardly be described as being in good faith.

Likewise no evidence has been adduced that the Respondent has commonly been known by the disputed domain name (indeed, according to the Complainant, an exhaustive Internet search has not produced any reference to a company of that name other than that of the Complainant); nor is making a legitimate non-commercial or fair use of the domain name. In fact, as regards the latter point, the Respondent is offering for sale on its website “Punta Cana Resorts”, “Punta Cana Vacations” and the “Barcelo Punta Cana” Hotel, amongst other things, without the prior approval of the Complainant.

Indeed, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s trademark inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s website (see further on this point below) and, in view of the nature of the services and products offered by the Respondent, the consequential tarnishing of the Complainant’s valuable trademark and reputation. In other words, the Respondent is trading for commercial gain on the good name and reputation of the Complainant’s business, trade name and trademark and thereby unfairly attracting to its own business the substantial goodwill that the Complainant has established in many parts of the world over many years in its mark, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.

Therefore, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.

Based on the evidence provided in the case file, the Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain name, is unfairly trading on the Complainant’s valuable goodwill established in its widely known trademark BARCELO HOTELS over many years. Indeed, in the absence of any evidence to the contrary, of which none is forthcoming on the part of the Respondent, the Respondent’s registration of the disputed domain name would not appear to be accidental, but deliberate and calculated to exploit the Complainant’s considerable reputation in its particular field of business for the Respondent’s own purposes and benefits. Such conduct, in the view of the Panel, amounts to bad faith.

Again, by registering and using the disputed domain name incorporating the Complainant’s trademark, BARCELO HOTELS, the Respondent is misleading Internet users and consumers into thinking that it is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business, or the Respondent’s activities are approved or endorsed by the Complainant, which, according to the evidence before the Panel, is certainly not the situation in the present case.

The failure of the Respondent to answer the ‘cease and desist letter’ sent on November 10, 2006, by the Complainant’s trademark attorneys to the Respondent, with a view to resolving this dispute amicably (as mentioned by the Complainant above), in the opinion of the Panel, also shows bad faith on the part of the Respondent.

Finally, the failure of the Respondent to file any answer to the Complaint or otherwise participate in these proceedings, in the view of the Panel, is also a further indication of bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name 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 <barcelopuntacana.com> be transferred to the Complainant.


Ian Blackshaw
Sole Panelist

Dated: January 22, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-1528.html

 

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