Daniel Jesus Chavez Moran and Desarrollo Marina Vallarta, S.A. DE C.V. v. EUGENE SPINDLER
Claim Number: FA1611001702936
Complainant is Daniel Jesus Chavez Moran and Desarrollo Marina Vallarta, S.A. DE C.V. (“Complainant”), represented by Charbel Bechelani of Av. Paseo de las Moras S/N, Mexico. Respondent is EUGENE SPINDLER (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <grupovidantaintl.com>, registered with Enom, Inc. and <bonusprogramvidanta.com>, registered with Name.Com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 15, 2016; the Forum received payment on November 15, 2016.
On November 15, 2016, Enom, Inc. confirmed by e-mail to the Forum that the <grupovidantaintl.com> domain names is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 November 15, 2016, Name.Com, Inc. confirmed by e-mail to the Forum that the <bonusprogramvidanta.com> domain name is registered with Name.Com, Inc. and that Respondent is the current registrant of the name. Name.Com, Inc. has verified that Respondent is bound by the Name.Com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On November 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 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@grupovidantaintl.com, postmaster@bonusprogramvidanta.com. Also on November 22, 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 December 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant has rights in the VIDANTA mark through its registration with the Mexican Institute of Industrial Property (“MIIP”) (e.g., Reg. No. 1,082,320, registered Dec. 15, 2008). Respondent’s <grupovidantaintl.com> and <bonusprogramvidanta.com> domain names are confusingly similar to the VIDANTA mark because they contain the mark along with the generic top-level domain (“gTLD”) “.com.”
ii) Respondent is not commonly known by the <grupovidantaintl.com> and <bonusprogramvidanta.com> domain names and does not have permission to use the VIDANTA mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain names are used to host e-mail addresses which are used as part of a fraudulent e-mail scheme in an attempt to deceive customers into thinking Respondent is associated with Complainant and because the resolving websites are monetized parked pages.
iii) Respondent has demonstrated a pattern of bad faith domain name registration and use through prior adverse UDRP decisions. Respondent uses the <grupovidantaintl.com> and <bonusprogramvidanta.com> domain names in bad faith because the domain names are used to host e-mail addresses which are used as part of a fraudulent e-mail scheme in an attempt to deceive customers into thinking Respondent is associated with Complainant and because the resolving websites are monetized parked pages. Respondent registered the <grupovidantaintl.com> and <bonusprogramvidanta.com> domain names in bad faith because it did so with knowledge of Complainant’s rights in the VIDANTA mark and with the use of a privacy service.
B. Respondent
Respondent has failed to submit a formal Response. The Panel notes that the <grupovidantaintl.com> and <bonusprogramvidanta.com> domain names were created on August 9, 2016.
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. Complainants claim that Daniel Jesus Chavez Moran is the proprietor of Desarrollo Marina Vallarta, S.A. DE C.V., and that they collectively operate as “Grupo Vidanta.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it treats them all as a single entity in this proceeding.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
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.”).
Complainant claims rights in the VIDANTA mark through its registration with the MIIP (e.g., Reg. No. 1,082,320, registered Dec. 15, 2008) which it uses for resort development and operation. As such, the Panel finds that Complainant holds rights in the VIDANTA mark. See Teck Res. Ltd. v. Amexa Ltda., FA 1420960 (Forum Jan. 27, 2012) (finding that a trademark registration with the MIIP was sufficient to establish rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <grupovidantaintl.com> and <bonusprogramvidanta.com> domain names are confusingly similar to the VIDANTA mark because they contain the mark along with the gTLD “.com.” The Panel notes that the domain names also contain additional terms, such as “grupo,” “intl,” “bonus,” and “program.” While Complainant makes no contentions regarding the nature of these terms, as the Panel finds them to be generic or descriptive such that they do not differentiate the domain names from the VIDANTA mark, the Panel finds the disputed domain names confusingly similar to the mark. See Microsoft Corp. v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain
names.”).
Complainant contends that Respondent is not commonly known by the <grupovidantaintl.com> and <bonusprogramvidanta.com> domain names and does not have permission to use the VIDANTA mark. If the Panel finds a lack of evidence to the contrary, it may agree that Respondent has not been so known. See Navistar Int’l Corp. v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant urges that Respondent fails to use the <grupovidantaintl.com> and <bonusprogramvidanta.com> domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain names are used to host e-mail addresses which are used as part of a fraudulent e-mail scheme in an attempt to deceive customers into thinking Respondent is associated with Complainant and because the resolving websites are monetized parked pages. Complainant has provided e-mail correspondence between third-parties and e-mail addresses hosted at the disputed domain names, in which Complainant purports the third-parties are offered rentals of Complainant’s properties and asked to provide a transfer of funds for such rentals. Complainant has provided screenshots of the resolving websites to demonstrate that the pages are parked in order to generate profit. As the Panel finds Complainant’s evidence sufficient to demonstrate either purported use, it finds that Respondent’s use of the domain names is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Complainant maintains that Respondent has demonstrated a pattern of bad faith domain name registration and use through prior adverse UDRP decisions. Complainant refers to a list of UDRP decisions to demonstrate this pattern. However, it does not seem that the named respondent in any of these named cases is the current Respondent, and thus the Panel does not agree that Respondent has demonstrated a pattern of bad faith under Policy ¶ 4(b)(ii).
Complainant claims that Respondent uses the <grupovidantaintl.com> and <bonusprogramvidanta.com> domain names in bad faith because the domain names are used to host e-mail addresses which are used as part of a fraudulent e-mail scheme in an attempt to deceive customers into thinking Respondent is associated with Complainant and because the resolving websites are monetized parked pages. Complainant has provided e-mail correspondence between third-parties and e-mail addresses hosted at the disputed domain names, in which Complainant purports the third-parties are offered rentals of Complainant’s properties and asked to provide a transfer of funds for such rentals. Complainant has provided screenshots of the resolving websites to demonstrate that the pages are parked in order to generate profit. As the Panel finds Complainant’s evidence sufficient to demonstrate either purported use, it finds that Respondent’s use of the domain names is bad faith according to Policy ¶ 4(b)(iii), Policy ¶ 4(b)(iv) and/or Policy ¶ 4(a)(iii). See Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA1411001591638 (Forum Jan. 16, 2015) (finding that where the complainant operated in the computer industry and the respondent used the disputed domain name to offer competing computer related links, the respondent was disrupting the complainant’s business offerings in violation of Policy ¶ 4(b)(iii)); see also Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum August 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained); see also Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”).
Complainant urges that Respondent registered the <grupovidantaintl.com> and <bonusprogramvidanta.com> domain names in bad faith because it did so with knowledge of Complainant’s rights in the VIDANTA mark as demonstrated by Respondent’s purported use of the domain names, as described above. However, the Panel does not find such use demonstrative of Respondent’s having knowledge of Complainant’s rights in the mark at the time the domain names were registered, it does not find such registrations to have been in bad faith.
Complainant argues that Respondent registered the <grupovidantaintl.com> and <bonusprogramvidanta.com> domain names in bad faith because it did so with the use of a privacy service, and in doing so withholds identifying information. 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 Nov.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 Sept. 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). The totality of the circumstances which surround Respondent’s engagement of a privacy service does not lead this Panel to agree that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, and thus it does not agree that Respondent has registered and used the disputed domain names 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 <grupovidantaintl.com> and <bonusprogramvidanta.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 26, 2016
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