DECISION

 

Daniel Jesus Chavez Moran and Desarrollo Marina Vallarta, S.A. DE C.V. v. Santiago Cardenas /  GEORGE GANIARIS / KAREN MATYK / Joe Mendez / Mayan Palace Promotions

Claim Number: FA1704001729065

 

PARTIES

Complainant is Daniel Jesus Chavez Moran and Desarrollo Marina Vallarta, S.A. DE C.V. (“Complainant”), represented by Charbel Bechelani, Mexico.  Respondent is Santiago Cardenas /  GEORGE GANIARIS / KAREN MATYK / Joe Mendez / Mayan Palace Promotions (“Respondent”), Mexico.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <grupovidantamx.com>, <vidantabonusprogram.com>, <vidagroupvc.com>, and <mayanpalacepromotions.com>, registered with GoDaddy.com, LLC; Name.com, Inc.; and eNom, LLC.

 

PANEL

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.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 26, 2017; the Forum received payment on April 26, 2017.

 

On April 27, 2017; Apr 28, 2017; May 01, 2017, GoDaddy.com, LLC; Name.com, Inc.; eNom, LLC confirmed by e-mail to the Forum that the <grupovidantamx.com>, <vidantabonusprogram.com>, <vidagroupvc.com>, and <mayanpalacepromotions.com> domain names are registered with GoDaddy.com, LLC; Name.com, Inc.; and eNom, LLC, and that Respondent is the current registrant of the names.  GoDaddy.com, LLC; Name.com, Inc.; and eNom, LLC have verified that Respondent is bound by the GoDaddy.com, LLC; Name.com, Inc.; and eNom, LLC registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On May 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 2017 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@grupovidantamx.com, postmaster@vidantabonusprogram.com, postmaster@vidagroupvc.com, and postmaster@mayanpalacepromotions.com. Also on May 17, 2017, 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 June 9, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant made the following contentions

Complainant is a resort developer in Latin America. Complainant has used its marks in connection with these services for over forty years. Complainant registered the MAYAN PALACE (Reg. No. 809,162, registered Dec. 4, 1997) , VIDANTA  (Reg. No. 1,135,306, registered Dec. 15, 2008) and GRAND MAYAN (Reg. No. 1,110,450, registered Apr. 8, 1998) marks via the Mexican Institute of Industrial Property (“MIIP”) in furtherance of that business. See Compl., at Attached Ex. D. Respondent’s <grupovidantamx.com>, <vidantabonusprogram.com>, <vidagroupvc.com>, and <mayanpalacepromotions.com> are confusingly similar to Complainant’s VIDANTA, MAYAN PALACE and GRAND MAYAN because Respondent’s domain names incorporate Complainant’s marks in their entirety and merely add a generic top-level domain “.com”

 

Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names nor has Complainant authorized Respondent to use its marks. Respondent has not used, nor made any demonstrable preparations to use the disputed domain names. See Compl., at Attached Ex. F. Rather, Respondent uses the disputed domain names to engage in a fraudulent email scheme to create a false association between Complainant and Respondent. See Compl., at Attached Ex. E. In the fraudulent emails, Respondent attempts to pass off as Complainant and invites consumers to rent unused weeks of their time-share property. Id. Respondent promises a specified amount of rental income after the consumer sends a “maintenance fee” to Respondent. Id.

 

Respondent has registered the disputed domain names in bad faith. Respondent had actual knowledge of Complainant’s rights because it uses multiple marks, which Complainant uses in connection with its vacation resort offerings, in order to send fraudulent emails to Complainant’s customers. See Compl., at Attached Ex. E. Respondent also fails to make any active use of the resolving page for any of the disputed domain names. Rather, Respondent attempts to pass itself off as Complainant through sending emails which Respondent purports to be affiliated with Complainant. Id. Additionally, by using confusingly similar domain names, Respondent creates a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent and its email communications. Further, Respondent has also engaged in a pattern of bad faith registration, evinced by Complainant prevailing against Respondent in past UDRP proceedings. Both in the past and present UDRP proceedings, Respondent has used a privacy shield to register the disputed domain names, creating a presumption of bad faith.

 

 

B. Respondent

     Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1. Complainant is a resort developer in Latin America and has been so for over 40 years.

 

2. Complainant registered the MAYAN PALACE (Reg. No. 809,162, registered Dec. 4, 1997) , VIDANTA  (Reg. No. 1,135,306, registered Dec. 15, 2008) and GRAND MAYAN (Reg. No. 1,110,450, registered Apr. 8, 1998) marks via the Mexican Institute of Industrial Property (“MIIP”)

 

3.Respondent: registered the <grupovidantamx.com>, <vidantabonusprogram.com>, <vidagroupvc.com>, and <mayanpalacepromotions.com> domain names  on January 30, 2017, January 31, 2017, September 9, 2015, and July 11, 2016, respectively.

 

4. Respondent has used the disputed domain names in emails for the purpose of defrauding Complainant’s clients by attempting to create a false association between Respondent and Complainant for the purposes of dishonestly obtaining money from Complainant’s clients.

 

DISCUSSION

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

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 Chaven Moran (“Moran”) and Desarrollo Marina Vallarta, S.A. DE C.V. (“Vallarta”). Complainant Moran is the proprietor of Complainant Vallarta. Thus because Complainant Moran and Complainant Vallarta operate under the same name in the same business, the two are in effect one and the same.

 

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.”).

 

Taking all of those matters into account, the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, such that the Panel will treat them both as a single entity in this proceeding.

 

Moreover, the same conclusion has been reached by several panellists in previous proceedings where the present Complainants were held on similar evidence as in the present case to be able to constitute the Complainant for the purpose of the one proceeding. Those decisions are specified in the footnote below. In the interests of consistency, the Panel reaches the same conclusion[1].

 

Preliminary Issue: Multiple Respondents

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant does not make any legal arguments as to why these Respondents are one and the same, but clearly invites the Panel to reach that conclusion. In considering that issue the Panel takes the view that it is entitled to draw inferences from the evidence as a whole and it takes account of such factors as that a series of similar frauds have attempted to be perpetrated on the same Complainant. Moreover, those attempted frauds are not confined to the events covered by the present proceeding but are part of a sustained and apparently uniform modus operandi over several years and in the same form. In reaching that conclusion the Panel has read and noted the decisions in all of the cases cited by Complainant and as the matter is of importance to establish the Panel’s jurisdiction, it will set out some of the salient facts and statements made in each of those cases. The cases and the events that occurred in each of them are as follows:

 

 Desarrollo Marina Vallarta, S.A. DE C.V. v. Hector Rangel, Case No. D2015-2279 (WIPO Feb. 5, 2016); in that case,the domain names were “...used in connection with a fraudulent email scheme directed to the Complainant’s customers.”

 

Desarrollo Marina Vallarta, S.A. de C.V. v. Luis Bonequi, Case No. D2015-1578 (WIPO Oct. 25, 2015); in that case “The Respondent has used the mark GRUPO MAYAN PALACE and an email address reflecting the Domain Name ({…}@grupomayanpalace.com) to defraud the Complainant's MAYAN PALACE time share program members.”

 

Daniel Jesus Chavez Moran, Desarrollo Marina Vallarta, S.A. DE C.V. v. Registrant of grupovidantamembers.com, C/O Private Ranger Limited / Hector Rangel, Case No. D2014-1857 (WIPO Jan. 28, 2015); in that case ,”The Respondent has been sending fraudulent communications to the Complainant's time share program members from the email address "rentals@grupovidantamembers.com", thus creating the appearance of legitimate communications from the Complainant;…The facts and circumstances of this case suggest that the Respondent has registered and used the disputed domain name with the bad faith intent to defraud the Complainant's customers by impersonating the Complainant to obtain, inter alia, payments and banking information from the Complainant's time share program members;…”

 

Desarrollo Marina Vallarta, S.A. DE C.V. v. Hector Rangel, Case No. D2014-1856 (WIPO Dec. 19, 2014); in that case “… Respondent has been sending fraudulent email communications to the Complainant's time share program members from the email address […]@mayanresortsmembers.com; The Respondent has also been sending fraudulent letters to the Complainant's time share program members which include the Complainant's MAYAN RESORTS mark and the email address […]@mayanresortsmembers.com;…”

 

Desarrollo Marina Vallarta, S.A. de C.V. / Daniel Jesus Chavez Moran v. Karla Vallejo, Case No. D2013-0962 (WIPO Jul. 19, 2013); in that case “Respondent asks for payments in the name of Grupo Vidanta in the form of allegedly due closing fees for re-sale of timeshare units customers previously purchased from it. “

 

 Desarrollo Marina Vallarta, S.A. DE C.V., Daniel Jesus Chavez Moran v. Domains by Proxy, Inc. / Matthew Devellano, Case No. D2012-1528 (WIPO Oct. 8, 2012); in that case “Respondent, either by itself of through its client – as Respondent argued in his first response to the Center – is sending emails to Complainant’s clients using the an email address @vivagroupresorts.com, the Domain Name, asking for payments, offering discounts for early payments and even contacting customers by phone to discuss payments is a grave case of fraud and evidence bad faith. This Panel further investigated Complainant’s fraud claim, and found that “Trubaesc Mexico, S.A. de C.V.”, one of the companies whose bank information is forwarded to Complainant’s customers via the @vivagroupresorts.com email address, for customers to deposit certain amounts of money (along with “Global Consulting B1791, S.A. de C.V.”), has been involved in this timeshare fraud before, as seen on the website “www.justanswer.com/law/63wkc-contacted-resort-development-consultants-purchase.html”. “

 

Desarrollo Marina Vallarta, S.A. DE C.V., Daniel Jesus Chavez Moran v. Domains by Proxy, LLC. / Andres Hernandez, Case No. FA1609001694264 (Forum Oct. 20, 2016) vidantacostumerservice.com; in tht case  “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.”

 

Desarrollo Marina Vallarta, S.A. DE C.V., Daniel Jesus Chavez Moran v. Christian Olivera Marshall, Case No. FA1611001704575 (Forum Jan. 10, 2017) vidantabonusweekprogram.com; in that case “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.”

 

Desarrollo Marina Vallarta, S.A. DE C.V., Daniel Jesus Chavez Moran v. Eugene Spindler, Case No. FA1611001702936 (Forum Dec. 26, 2017) bonusprogramvidanta.com, grupovidantaintl.com; in that case “ 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.”

 

It will be seen that the situation in each of those cases is the same as in the present case and although this is of course not conclusive, it is reasonable to draw the conclusion that the attempted frauds in the present case are part of a protracted series of attempted frauds aimed at Complainant by the same perpetrators as in the present case and involving not unconnected events. Again, although it is not certain, it is on the balance of probabilities open to the Panel to conclude that they are all being carried out at the behest of one entity using various aliases to cover its tracks. The Panel so finds.

 

Having regard to the whole material and circumstances revealed in the Complaint and its annexures, the Panel finds that  the disputed domain names are commonly owned/controlled by a single Respondent who is using multiple aliases and the matter may go forward on that basis.

 

Identical and/or Confusingly Similar

The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has established rights in the MAYAN PALACE (Reg. No. 809,162, registered Dec. 4, 1997) , VIDANTA  (Reg. No. 1,135,306, registered Dec. 15, 2008) and GRAND MAYAN (Reg. No. 1,110,450, registered Apr. 8, 1998) marks based on the registration of the marks with the MIIP. See Compl., at Attached Ex. A. Registration of a mark with the MIIP is sufficient to establish rights in those marks. See Teck Resources Limited and Teck Operaciones Mineras Chile Limitada 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)). Therefore, the Panel may find that Complainant has established rights in the MAYAN PALACE, VIDANTA and GRAND MAYAN marks.

 

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MAYAN PALACE, VIDANTA and GRAND MAYAN marks.  Complainant argues that the <grupovidantamx.com>, <vidantabonusprogram.com>, <vidagroupvc.com>, and <mayanpalacepromotions.com> domain names are confusingly similar to Complainant’s MAYAN PALACE, VIDANTA and GRAND MAYAN marks because the domain names reflect at least one of those marks  and merely add a gTLD. The <grupovidantamx.com> domain name consists of the VIDANTA mark, the generic word “grupo” which most people would take to refer to a company group and the letters “mx”, signifying Mexico. Thus, the domain name would be taken as being a domain name of the corporate ownership of the owner of the VIDANTA trademark and its activities in Mexico.  The <vidantabonusprogram.com> domain name consists of the VIDANTA trademark and the generic words “bonus program”. Thus, the domain name would be taken as being a domain name of the corporate ownership of the VIDANTA trademark and its bonus program. The <vidagroupvc.com> domain name consists of the significant part of the VIDANTA trademark and the generic word “group” and would be taken as being a domain name of the corporate ownership of the VIDANTA trademark and its activities. The <mayanpalacepromotions.com> domain name consists of the MAYAN PALACE trademark and part of the GRAND MAYAN trademark and the generic word “ promotions”. Thus the domain name would be taken as being a domain name of the owner of the MAYAN PALACE and GRAND MAYAN trademarks and promotions being offered with respect to the Mayan Palace establishment of the owner of the trademark.  The addition of a gTLD is not sufficient to distinguish the domain names from Complainant’s marks. See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.  Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The Panel notes that the generic words “grupo”, “bonus program” and “palace promotions”, especially when those terms are related to Complainant’s business, do not sufficiently distinguish the domain names from Complainant’s marks. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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.).On the whole, the Panel finds that an objective bystander would assume that each of the domain names invokes one or more of Complainant’s marks and seeks to give the impression that they are official domain names of Complainant that will led to official websites of Complainant. The Panel therefore finds that the disputed domain names are confusingly similar to Complainant’s registered marks.

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well established that 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.”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

 

(a)Respondent has chosen to take variously one or more of Complainant’s  MAYAN PALACE, VIDANTA and GRAND MAYAN trademarks and to use them in its domain names, adding only generic words that do not negate the confusing similarity with the trademarks;

(b) Respondent registered the <grupovidantamx.com>,  <vidantabonusprogram.com>, <vidagroupvc.com>, and <mayanpalacepromotions.com> domain names  on January 30, 2017, January 31, 2017, September 9, 2015, and July 11, 2016, respectively;

(c) Respondent has used the disputed domain names in emails for the purpose of defrauding Complainant’s clients by attempting to create a false association between Respondent and Complainant for the purpose of dishonestly obtaining money from Complainant’s clients;

(d)Respondent has engaged in these activities without the consent or approval of Complainant;

(e)Complainant asserts that Respondent is not commonly known by the disputed domain names nor has Complainant authorized Respondent to use any of its marks. Where a respondent fails to submit a response, the Panel may look to the WHOIS information to determine whether Respondent is commonly known by disputed domain names. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (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). The WHOIS information on record lists “Santiago Cardenas”, “George Ganiaris”, “Karen Matyk” and “Joe Mendez”, as the registrant names for the <grupovidantamx.com>, <vidantabonusprogram.com>, <vidagroupvc.com>, and <mayanpalacepromotions.com>  domain names, respectively. See Compl., at Attached Ex. A. Furthermore, lack of evidence in the record showing that Complainant authorized Respondent to use its marks can further support a finding that Respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation 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). Therefore, the Panel concludes that Respondent is not commonly known by the <grupovidantamx.com>, <vidantabonusprogram.com>, <vidagroupvc.com>, and <mayanpalacepromotions.com> domain names;

(f) Complainant submits that Respondent does not use the disputed domain names for any bona fide offering of goods or services or a legitimate non-commercial or fair use. Complainant claims that Respondent is using the disputed domain names in emails for the purpose of defrauding Complainant’s clients. Using a disputed domain name to send fraudulent emails is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA 1550388 (Forum May 5, 2014) (finding that using the domain name to send e-mails to various IT hardware suppliers in an attempt to impersonate Complainant and to defraud such suppliers demonstrates a lack of a bona fide offering of goods or services or legitimate non-commercial [or] fair use). Complainant attaches emails that exhibit instances of Respondent attempting to create a false association between Respondent and Complainant for the purpose of fraudulently obtaining money from Complainant’s clients. See Compl., at Attached Ex. E. As the Panel finds that the emails are in fact fraudulent, the Panel finds that Respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use;

(g) Complainant argues that Respondent is using the <vidantabonusprogram.com> domain name as a parked website displaying an error message. An inactive holding of a parked page does not constitute a bona fide offering of goods or services or a legitimate noncommercial fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel notes that the <vidantabonusprogram.com> domain name resolves to a parked page which displays an error message. See Compl. at Attached Ex. F. Therefore, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use;

(h) Complainant argues that Respondent is attempting to pass itself off as Complainant through its email impersonation scheme. An attempt by Respondent to pass off as Complainant does not indicate rights and legitimate interests in a disputed domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). As noted previously, Complainant attaches emails that exhibit Respondent’s use of confusingly similar domain names in the emails in which Respondent claims to be a customer service representative or manager for “Vida Vacation Club” or “Grupo Vidanta”. See Compl., at Ex. E. Respondent also prominently displays Complainant’s “GRAND MAYAN” and “VIDANTA” marks in its fraudulent emails. Id. Therefore, the Panel finds that Respondent is attempting to pass itself off as Complainant, an activity that fails to indicate Respondent’s rights and legitimate interests in the disputed domain names.

 

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.

 

First, Complainant argues that Respondent has engaged in a pattern of bad faith registration. Respondent’s involvement in multiple UDRP proceedings in which the judgement was adverse to Respondent supports a finding of bad faith. Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Complainant cites a number of cases referred to above in which it was involved in similar disputes. See Compl., at 9. As the Panel finds that these disputes involve interests associated with Respondent in the current proceeding, the Panel finds that Respondent has registered and is using these disputed domain names in bad faith.

 

Secondly, Complainant submits that Respondent’s use of the disputed domain names is disruptive of Complainant’s business. The Panel finds that Respondent’s use of Complainant’s marks is disruptive of Complainant’s business. See Toyota Jidosha Kabushiki Kaisha v. S&S Enters. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (“Registration of a domain name [by the respondent that incorporates another’s trademark] goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services.”). Furthermore, the Panel finds that offering fraudulent services in connection with Complainant’s trademark is further evidence that Respondent is disrupting Complainant’s business. See CWC Direct LLC v. Ju Yu, FA1501001599464 (Forum Feb. 16, 2015) (“As Respondent is using the disputed domain name to sell counterfeit or unauthorized goods bearing the COLDWATERCREEK mark, the Panel finds evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii).”). Complainant adduces emails that show Respondent using Complainant’s trademark in an attempt to offer fraudulent services to Complainant’s customers. See Compl., at Attached Ex. E. The Panel  finds that Respondent’s use of the disputed domain names is disruptive and therefore that Respondent has registered and is using the disputed domain names in bad faith.

 

Thirdly, Complainant further argues that Respondent creates a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent and its email communications. Attempting to benefit commercially by creating a likelihood for confusion can evince bad faith under Policy ¶ 4(b)(iv). See 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).”). Complainant attaches emails, as mentioned previously, that show Respondent to be engaged in a fraudulent scheme. See Compl., at Attached Ex. E. Attempting to commit a fraudulent scheme in which Respondent creates a false association between Complainant and Respondent implies that Respondent is attempting to benefit by confusing Internet users. Therefore, the Panel finds that Respondent has registered and is using the disputed domain names in bad faith.

 

Fourthly, Complainant argues that Respondent is attempting to pass itself off as Complainant for the purpose of committing a fraudulent scheme. Using a disputed domain name to impersonate an employee of Complainant, or Complainant itself, supports a finding of bad faith. See Smiths Group plc v. Snooks, FA 1372112 (Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Complainant attaches emails that exhibit Respondent declaring itself to be a customer service representative or customer service manager for Complainant. See Compl., at Attached Ex. E. The Panel finds that Respondent was attempting to pass itself off as Complainant and therefore has registered and is using the disputed domain names in bad faith.

 

Fifthly, Complainant submits that Respondent had actual knowledge of Complainant’s rights because Respondent is using the disputed domain names in emails that prominently display Complainant’s marks and that offer fraudulent services that would be associated with Complainant’s business. When Respondent is using the disputed domain names in connection with Complainant’s marks and services, the Panel infers that Respondent had actual knowledge of Complainant’s rights. See G.D. Searle & Co. v. Pelham, FA 117911 (Forum Sept. 19, 2002) (“[I]t can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug.”). Complainant attaches emails that appear to exhibit Respondent using the disputed domain names to send emails that both displayed Complainant’s marks and offered fraudulent services that would be associated with Complainant’s business. See Compl., at Attached Ex. E. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights and therefore has registered and is using the disputed domain names in bad faith.

 

 

Sixthly, Complainant submits that Respondent used a privacy shield to register the disputed domain names which would indicate that Respondent has registered and is using the disputed domain names in bad faith. 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).  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 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”).  Complainant attaches WHOIS information that lists the registrant name for <grupovidantamx.com> as “Registration Private”,<vidantabonusprogram.com> as “Whois Agent”, and <vidagroupvc.com> as “WHOISGAURD PROTECTED”. See Compl., at Attached Ex. A. The registrant names listed by the WHOIS information indicates the use of a privacy shield. Thus, as the Panel agrees that Respondent has utilized a privacy shield in a manner which materially adversely effects or obscures the facts of this proceeding, it agrees that Respondent has registered and used the disputed domain names in bad faith under Policy ¶ 4(a)(iii).

 

Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the MAYAN PALACE, VIDANTA and GRAND MAYAN trademarks and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <grupovidantamx.com>, <vidantabonusprogram.com>, <vidagroupvc.com>, and <mayanpalacepromotions.com> domain names be TRANSFERRED from Respondent to Complainant.

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  June 10, 2017