Daniel Jesus Chavez Moran and Desarrollo Marina Vallarta, S.A. DE C.V. v. Christian Olivera Marshall
Claim Number: FA1611001704575
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 Christian Olivera Marshall (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vidantabonusweekprogram.com>, registered with GoDaddy.com, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 23, 2016; the Forum received payment on November 23, 2016.
On November 28, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <vidantabonusweekprogram.com> domain name is/are 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 November 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 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@vidantabonusweekprogram.com. Also on November 29, 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 28, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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.
A. Complainant
Complainant, Grupo Vidanta, is a resort developer with hotels and other properties throughout Latin America. Complainant has rights in the VIDANTA mark based upon registration with the Mexican Trademark Agency, Instituto Mexicano de la Propiedad Industrial (“IMPI”) (e.g., Reg. No. 1082320, registered Jan. 6, 2009). Respondent’s <vidantabonusweekprogram.com> is confusingly similar as it contains the VIDANTA mark in its entirety, adding only the generic phrase “bonus week program.”
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the disputed domain, nor has Complainant authorized Respondent to use the VIDANTA mark in any way. Respondent has not used, nor made any demonstrable preparation to use, the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the domain name redirects to Complainant’s own site, and is being used as part of a fraudulent email scheme to pass itself off as Complainant, inviting Internet users to participate in a “rental program,” through which Respondent guarantees a specified amount of rental income from time-share property—after a large payment is wired.
Respondent’s registration and use of the disputed domain name is in bad faith. Respondent registered and is using the disputed domain as part of a pattern of bad faith registration and use, as described in Policy ¶ 4(b)(ii). Respondent is also presumably gaining commercially from the email scam, confusing customers and disrupting Complainant’s business for commercial gain, evidence of bad faith under both Policy ¶¶ 4(b)(iii) and (iv). Also, Respondent had actual or constructive notice of Complainant’s rights in the mark at the time it registered and subsequently used the disputed domain.
B. Respondent
The Panel notes that <vidantabonusweekprogram.com> was registered on October 25, 2016.
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.”).
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: Desarrollo Marina Vallarta, S.A. de C.V., and its proprietor Jesus Chavez Moran. Complainants contend that they have joint standing here, as the two together form Grupo Vidanta. Jesus Chavez Moran is the owner of the VIDANTA mark.
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 Paralympic 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.
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and will treat them as a single entity in this proceeding.
Complainant claims right in the VIDANTA mark based upon registration with the Mexican trademark agency, IMPI (e.g., Reg. No. 1082320, registered Jan. 6, 2009). Registration of a mark with a governmental agency is sufficient to establish rights in a mark per the Policy. Glashütter Uhrenbetrieb GmbH v. li zilin / QQ869292929, FA 1575562 (Forum Sept. 23, 2014) (holding, “Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶ 4(a)(i)”). The Panel therefore holds that Complainant’s registration of the VIDANTA mark with the IMPI is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <vidantabonusweekprogram.com> is confusingly similar as it contains the VIDANTA mark in its entirety,
adding only the phrase “bonus week program.” Addition of generic or
descriptive words does not distinguish a disputed domain for the
purposes of finding confusing similarity under the Policy. See Abbott
Laboratories v. Miles White, FA 1646590 (Forum
Dec. 10, 2015) (holding that the addition of descriptive terms, particularly
terms that pertain to complainant’s business, do not adequately distinguish a
disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).).
Therefore, the Panel finds that Respondent’s <vidantabonusweekprogram.com> is confusingly similar to Complainant’s mark pursuant to Policy
¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in <vidantabonusweekprogram.com> as it is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the VIDANTA mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (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). The WHOIS information of record identifies Respondent as “Christian Oliviera Marshall.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by their failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the domain name is being used as part of a fraudulent email scheme. Such use does not amount to a bona fide offering of goods or services or legitimate noncommercial or fair use under the Policy. See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). Respondent is using the <info@vidantabonusweekprogram.com> email address to contact customers of Complainant, using Complainant’s marks in the emails in an attempt to confuse consumers as to the source of the emails. The Panel finds that Complainant’s use of the website does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively.
Complainant further argues that Respondent’s lack of rights or legitimate interests is evinced by the fact that Respondent’s <vidantabonusweekprogram.com> redirects to Complainant’s own website. Such use does not support a finding that a respondent has rights or legitimate interests in a domain name. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). Accordingly, the Panel finds that Respondent has failed to use the disputed domain for a bona fide offering of goods or services or legitimate noncommercial or fair use.
Complainant argues that Respondent’s attempts to pass off as Complainant and send unauthorized, fraudulent emails is disruptive and confuses consumers for commercial gain. Using a complainant’s mark in a domain in order to deceive consumers for commercial gain can be evidence of bad faith. Cf. DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). The use of a domain to send fraudulent emails can also be found to be evidence of bad faith under Policy ¶ 4(a)(iii). See SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA 1581255 (Forum Oct. 29, 2014) (“The Panel finds that Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶ 4(a)(iii) bad faith.”). The Panel therefore finds that Respondent’s registration and use of the disputed domain name meets the definition of bad faith under Policy ¶¶ 4(b)(iii), (iv), and Policy ¶ 4(a)(iii).
Complainant argues that Respondent's use of the well-known VIDANTA mark to create a domain name it used to contact Complainant’s customers for a fraudulent scheme indicates that Respondent had actual knowledge of Complainant's mark and rights. The Panel agrees, and finds that Respondent had actual knowledge of Complainant's mark and rights. Therefore, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Thus, Complainant has also satisfied 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 <vidantabonusweekprogram.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: January 10, 2017
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