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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION Levantur, S.A. v. Joe Fox, Fox Media Services Case No. D2008-0776
1. The Parties The Complainant is Levantur, S.A. of Spain, represented by Landwell-PricewaterhouseCoopers, Spain. The Respondent is Joe Fox, Fox Media Services, of United States of America.
2. The Domain Name and Registrar The disputed domain name <bahiaprincipe.org> is registered with Moniker Online Services, LLC.
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2008. On May 19, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On May 28, 2008, Moniker Online Services, LLC 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”), 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 May 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2008. The Center appointed Knud Wallberg as the sole panelist in this matter on July 15, 2008. 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 commenced its operations in 1977 under the corporate name Levantur, S.A. The Complainant forms part of the Piñero Group, one of the leading Groups of the Spanish tourist industry (tour operators, hotel chains, brokers, transport companies). The Complainant opened its first Bahía Príncipe hotel, Bahía Príncipe San Juan (the Dominican Republic) in 1995, and is now the owner of several hotels primarily in and around the Caribbean including Bahia Principe Bavaro, Bahia Principe Coba, Bahia Principe Jamaica and Gran Bahía Príncipe Punta Cana. The Complainant owns the following trademarks: Spanish mixed trademark BAHIA PRINCIPE Clubs & Resorts in class 42, which is granted and valid as from August 20, 1998. US trademark BAHIA PRINCIPE Clubs & Resorts 42, which is granted and valid as from June 24, 2003. The Complainant is also the holder of several domain names consisting of or containing the name BAHIA PRINCIPE including <bahia-principe.com> and <bahiaprincipe.com>. The Panel has received no information on the Respondent apart form the information provided by the Complainant in the Complaint. The disputed domain name was first created on August 14, 2006.
5. Parties’ Contentions A. Complainant 1. The Complainant has an exclusive right to trade on the trademark BAHIA PRINCIPE. The first two words of the trademark BAHIA PRINCIPE Clubs & Resorts, are “Bahia” and “Principe” and the second part of the trademark only describes its type of business and lacks distinctiveness. For this reason, the Complainant operates on the Spanish and international markets under the abbreviated name BAHIA PRINCIPE and not with its full trademark name. More importantly than the effective registration of the trademark, the BAHIA PRINCIPE name should also be considered a well-known trademark which is worthy of protection as such. The Respondent has registered a domain name which is confusingly similar to the main part of the trademark registered and used by the Complainant and its own name, BAHIA PRINCIPE, except for the generic top- level “org”. 2. The Complainant contends that in the present case, it is obvious that the Respondent does not come under any of the cases of legitimate rights established in the Policy given that it does not use the domain name in a legitimate or fair way, or is commonly known by the domain name in the market. The Respondent has not registered any trademark which legitimates the use of the disputed domain name, does not have any type of identity or corporate name which is confusingly similar to the domain name and has not been authorised to use the name by its legitimate owner. Therefore, on the basis of the foregoing, the Respondent has no legitimate right or interest in using the term BAHIA PRINCIPE to identify itself on the market. 3. The Complainant further claims that the contested domain name has been registered and is used by the Respondent in bad faith with the only intention of obtaining an economic benefit by attracting confused users and selling the domain name. The website of the disputed domain name does thus not have any content related to hotel services; it directly takes one to the Registrar’s website “www.moniker.com”. Furthermore, the Respondent owns a company, Fox Media Services, which also owns a company dedicated to sell domain names, Tech Domain Sales. The Respondent’s intention to speculate on this domain name seems obvious and consequently, proves that the registration of the domain name is undeniably made in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied: (i) the 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 domain name has been registered and is being used in bad faith. Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, 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 there from as it considers appropriate. A. Identical or Confusingly Similar The Complainant’s registered trademark is a figurative mark. The dominant and distinctive word element in the mark is BAHIA PRINCIPE and the Panel is satisfied that the Complainant through the registrations has rights in the name BAHIA PRINCIPE. This is supported by the fact that BAHIA PRINCIPE is actually used intensively by the Complainant as its trade name and as part of its main websites “www.bahiaprincipe.com” and “www.bahia-principe.com”. The contested domain name contains the above-mentioned dominant and distinctive part of the Complainant’s mark namely BAHIA PRINCIPE. There is a strong likelihood that Internet users will confuse the disputed domain name with the Complainant’s trademark and the goods and services of the Complainant in its customary and well-known field of business activity. Also, the inclusion of the gTLD denomination .org shall be disregarded for the purpose of these proceedings. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademarks and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Respondent’s Rights or Legitimate Interests According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark. The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not rebutted this and the way the Respondent has been using – or rather not using – (see below) does not support a finding of rights or legitimate interests. Consequently the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy, with reference to paragraph 4(c) of the Policy, are also fulfilled. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b)(i) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith. Given the distinctive character of the Complainant’s trade it is inconceivable to the Panel that the Respondent was not aware of the Complainant and the Complainant’s activities when registering the contested domain name. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose names which could attract Internet users in a manner that is likely to create confusion for the users of the Internet. The Panel therefore finds that the contested domain name was registered in bad faith. The Respondent has apparently not been using the disputed domain name and at present the domain name resolves to what appears to be a standard parking site for the Registrar without any specific or related content. However, as first stated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and repeated in many subsequent decisions under the UDRP: “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith.” In the circumstances of this case, Respondent’s lack of real and effective use of the domain name is likely to disrupt the business of the Complainant since it could give those Internet users that will look for information on the Complainant under the “.org” gTLD the impression that the Complainant is not present on the Internet. By registering the domain name the Respondent further prevents the Complainant from being present under the “.org” gTLD under a domain name that seems to be a natural domain name to use for the Complainant. The Panel also notes that the domain name incorporates a widely known trademark, that no Response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has proved element 4(a)(iii) of the Policy.
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, <bahiaprincipe.org> be transferred to the Complainant. Knud Wallberg Dated: July 23, 2008
: https://internet-law.ru/intlaw/udrp/2008/d2008-0776.html
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