Daniel Jesus Chavez Moran and Desarrollo Marina Vallarta, S.A. DE C.V. v. Andres Hernandez
Claim Number: FA1609001694264
Complainant is Daniel Jesus Chavez Moran and Desarrollo Marina Vallarta, S.A. DE C.V. (“Complainant”), represented by S. Erik Combs, Texas, United States. Respondent is Andres Hernandez (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vidantacostumerservice.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 19, 2016; the Forum received payment on September 19, 2016.
On September 20, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <vidantacostumerservice.com> domain name is/ registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@vidantacostumerservice.com. Also on September 20, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Daniel Jesus Chavez Moran and Desarrollo Marina Vallarta, S.A. DE C.V.. Daniel Jesus Chavez Moran is the proprietor of Desarrollo Marina Vallarta, S.A. DE C.V.. Together, the two are collectively referred to as “Grupo Vidanta,” the leading resort developer in Latin America.
The Panel finds that the two Complainants have demonstrated a link between the two entities such in the form of a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity. Therefore, the two Complainants will be considered “the Complainant” herein.
A. Complainant
Complainant is the leading resort developer in Latin America. Complainant has registered the VIDANTA mark with the Mexican Institute of Industrial Property (“MIIP”) (e.g., Reg. No. 1,135,306, registered Jan. 7, 2009), which demonstrates Complainant’s rights in its mark. See Compl., at Attached Ex. C. The <vidantacostumerservice.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the generic terms “costumer” and “service” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name at issue, and Complainant has not licensed or otherwise permitted Respondent to use its VIDANTA mark. Further, Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses an e-mail address associated with the domain name (rentasmayan@vidantacostumerservice.com) to deceive consumers into believing that Respondent is Complainant, or is at least affiliated or connected with, or authorized by, Complainant. Additionally, after creating confusion as to the source of the e-mail communication, Respondent sends the unsuspecting consumer documents purportedly guaranteeing a specified amount of rental income from the consumer’s time-share property after a large payment – which Respondent refers to as a “maintenance fee” – is wired to a bank account not associated with Complainant. See Compl., at Attached Ex. D. Finally, Respondent is using the domain name to host competing hyperlinks. See Compl., at Attached Ex. E.
Respondent registered and is using the domain name in bad faith. First, Respondent uses the domain name to host competing hyperlinks. Second, Respondent’s use of the domain name to impersonate Complainant is evidence that Respondent is using the domain name to pass itself off as Complainant. Third, Respondent uses the domain name as a part of a scheme to impersonate Complainant and send unauthorized fraudulent e-mails to Complainant’s customers. Fourth, Respondent’s use of the domain name to host an e-mail address which it uses to contact Complainant’s customers in connection with its scheme is evidence that Respondent knew of Complainant’s mark and rights when it registered the domain name. Finally, Respondent used a privacy service to register the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain name on July 16, 2016.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s valid and subsisting trademark; that the Respondent has no rights or legitimate interests in or to the disputed domain name; and that the Respondent has engaged in bad faith use and registration of the disputed domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s valid and subsisting trademark, VIDANTA. Complainant has adequately and appropriately plead its interests in and to that trademark. The Respondent arrives at the disputed domain name by merely adopting Complainant’s mark in total and appending the words “customer” and “service” and the g TLD “.com” to the end of the mark. This is insufficient to distinguish the disputed domain name from the Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
The Panel further finds that the Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent is not commonly known by the domain name at issue. Complainant has not licensed or otherwise permitted Respondent to use its VIDANTA mark. The WHOIS information merely lists “Andres Hernandez” as registrant. Respondent has failed to provide any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record that would indicate Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
The Panel further finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant contends that Respondent uses an e-mail address associated with the domain name (rentasmayan@vidantacostumerservice.com) to deceive consumers into believing that Respondent is Complainant, or is at least affiliated or connected with, or authorized by, Complainant. Additionally, Complainant asserts that after creating confusion as to the source of the e-mail communication, Respondent sends the unsuspecting consumer documents purportedly guaranteeing a specified amount of rental income from the consumer’s time-share property after a large payment – which Respondent refers to as a “maintenance fee” – is wired to a bank account not associated with Complainant. See Compl., at Attached Ex. D. The Respondent’s use of the disputed domain name to impersonate the Complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant argues that Respondent is using the disputed domain name to host competing hyperlinks. See Compl., at Attached Ex. E. The Respondent lacks rights and legitimate interests in the disputed domain name where the Respondent uses the domain name to host hyperlinks to products and/or services that are in direct competition with a complainant’s business.
Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in or to the disputed domain name.
The Panel further finds that the Respondent has engaged in bad faith use and registration of the disputed domain name. Respondent’s use of the disputed domain name to display links to products and/or services that are directly competitive with Complainant’s business is evidence of bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). As such, the Panel finds that Respondent registered and is using the domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant contends that Respondent’s use of the domain name to impersonate Complainant is evidence that Respondent is using the domain name to pass itself off as Complainant. Respondent’s use of the disputed domain name to pass itself off as Complainant constitutes bad faith registration and use. See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use); see also Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
As Respondent is attempting to impersonate Complainant and pass itself off as Complainant, the Panel finds that the Respondent has engaged in bad faith use and registration of the disputed domain name.
Complainant alleges that Respondent uses the domain name as a part of a scheme to impersonate Complainant and send unauthorized fraudulent e-mails to Complainant’s customers. Respondent’s use of the disputed domain name to impersonate Complainant constitutes bad faith registration and use. For this reason as well, the Panel finds that Respondent registered and is using the disputed domain name in bad faith.
The Panel further finds that Respondent’s use of the domain name to host an e-mail address which apparently it uses to contact Complainant’s customers in connection with its scheme is evidence that Respondent knew of Complainant’s mark and rights when it registered the domain name. While panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant maintains that Respondent registered the domain name using a privacy service. The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”).
Therefore, the Panel finds that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding. The Panel finds that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <vidantacostumerservice.com> domain name transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: October 20, 2016
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