DECISION

 

Ventas Riviera Maya, S.A. de C.V. / Desarrollo Marina Vallarta, S.A. de C.V. v. Ingrid Juarez

Claim Number: FA1709001747789

 

PARTIES

Complainant is Ventas Riviera Maya, S.A. de C.V. / Desarrollo Marina Vallarta, S.A. de C.V. (“Complainant”), represented by Jorge I. Balderas Hernandez, Mexico.  Respondent is Ingrid Juarez (“Respondent”), Mexico.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <clubvidavacation.com>, registered with Name.com, Inc.

 

PANEL

The undersigned certifies that he or she 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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on September 6, 2017; the Forum received payment on September 6, 2017.

 

On September 7, 2017, Name.com, Inc. confirmed by e-mail to the Forum that the <clubvidavacation.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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On September 12, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 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@clubvidavacation.com.  Also on September 12, 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 October 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant:

1.    For more than forty years Complainant has developed and operated vacation destinations, luxury hotels, golf courses, vacation home properties, tourism infrastructure, and entertainment experiences. Over the years, Grupo Vidanta has invested heavily in marketing under its marks, and in advertising and promoting its services through many media in many countries. Complainant registered the VIDA VACATION mark with the Mexican Institute of Industrial Property (“MIIP”) (e.g. Reg. No. 1,166,336, registered June 8, 2010). See Compl. Ex. E. Respondent’s <clubvidavacation.com> domain name is identical or confusingly similar to Complainant’s mark as it contains the mark in its entirety and simply adds the term “club” and the generic top-level domain (“gTLD”) “.com.”

2.    Respondent has no rights or legitimate interests in the <clubvidavacation.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent has not used, nor made any demonstrable preparations to use, the domain name for any purpose. See Compl. Ex. G. Instead, Respondent uses the disputed domain name to pass off as Complainant as part of a fraudulent email scheme that attempts to deceive consumers into thinking that Respondent or Respondent’s business is associated with VIDA VACATIONS. See Compl. Ex. F.

3.    Respondent registered and uses the <clubvidavacation.com> domain name in bad faith. Respondent uses the disputed domain name to pass itself off as Complainant to commercially gain by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent. Respondent creates this confusion to commercially gain from a fraudulent phishing email scheme. See Compl. Ex. F. Further, Respondent fails to make any active use of the disputed domain names resolving webpage. See Compl. Ex. G. Finally, Respondent must have known about Complainant and its VIDA VACATION mark because it uses the disputed domain name to further its fraudulent email scheme by passing off as Complainant.

 

B.   Respondent:

1.    Respondent failed to submit a response in this proceeding.

 

Preliminary Issue:  Multiple Complainants

The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e).  UDRP Rule 3(a) states, “Any 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 (2) Complainants in this matter: Ventas Riviera Maya, S.A. de C.V.

(“VRM”) and Desarrollo Marina Vallarta, S.A. de C.V. (“Grupo Vidanta). Complainants have a commercial commission agreement for joint representation of one of the leading resort developers in Latin America “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.”).

 

The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and shall treat them all as a single entity in this proceeding.  Complainants will be collectively referred to as

“Complainant.”

 

FINDINGS

1.    Respondent’s <clubvidavacation.com> domain name is confusingly similar to Complainant’s VIDA VACATION mark.

2.    Respondent does not have any rights or legitimate interests in the <clubvidavacation.com> domain name.

3.    Respondent registered or used the <clubvidavacation.com> domain name in bad faith.

 

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.”).

 

Identical and/or Confusingly Similar

Complainant claims it registered the VIDA VACATION mark with the MIIP (e.g. Reg. No. 1,166,336, registered June 8, 2010). See Compl. Ex. E. Registration of a mark with the MIIP sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Daniel Jesus Chavez Moran and Desarrollo Marina Vallarta, S.A. DE C.V. v. MIGUEL PENA, FA 1735344 (Forum July 24, 2017) (finding that complainant had rights in a mark which it had registered with the Mexican Institute of Industrial Property). Accordingly, the Panel finds that Complainant has established rights in the VIDA VACATION mark.

 

Complainant next argues that Respondent’s <clubvidavacation.com> domain name is identical or confusingly similar to Complainant’s mark as it contains the mark in its entirety and simply adds the term “club” and the gTLD “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”); see also Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”). The Panel  therefore finds that the <clubvidavacation.com> domain name is confusingly similar to the VIDA VACATION mark under Policy ¶4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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 has no rights or legitimate interests in the <clubvidavacation.com> domain name.  Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Ingrid Juarez” as the registrant.  See Amended Compl. Ex. H. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the VIDA VACATIONS mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <clubvidavacation.com> domain name under Policy ¶ 4(c)(ii).

 

Complainant also argues that Respondent fails to use the <clubvidavacation.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use as it passes off as it attempts to phish for information from consumers via email. Complainants may use passing off and phishing attempts to evince a lack of any bona fide offering of goods or services or legitimate noncommercial or fair use. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides an email chain between Respondent and potential Complainant consumers, which demonstrates Respondent’s passing off as Complainant in attempts to phish for money. See Compl. Ex. F. Accordingly, the Panel finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).

 

Further, Complainant contends that the <clubvidavacation.com> domain name also redirects users to a website that lacks any content. Failure to make active use of a confusingly similar domain name can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.  The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).”). Complainant provides a screenshot of the resolving webpage, which does not contain any substantive content. See Compl. Ex. G. The Panel therefore finds that Respondent fails to make an active use of the resolving page for the disputed domain name, further evincing a lack of rights and legitimate interests.

 

 

Registration and Use in Bad Faith

Complainant claims that Respondent registered and uses the <clubvidavacation.com> domain pass itself off as Complainant to commercially gain by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent. See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). As noted previously, Complainant provides a screenshot of Respondent passing itself off as Complainant over email. See Compl. Ex. F. Accordingly, the Panel concludes that Respondent registered and uses the disputed domain in bad faith by passing off as Complainant.

 

Relatedly, Complainant argues that Respondent uses the disputed domain name to fraudulently send emails to Complainant’s customers in hopes of commercial gain. Phishing scheme through fraudulent email communications can evince bad faith under Policy ¶ 4(a)(iii). See 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).”). The email provided by Complainant demonstrates Respondent’s attempts to receive money from Complainant’s consumers. See Compl. Ex. F. The Panel agrees that Respondent’s apparent phishing scheme does not amount to any good faith use.

 

Further, Complainant claims that Respondent inactively holds the domain name, as Respondent fails to use the disputed domain name for any purpose. Inactively holding a confusingly similar domain name can evince bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant’s provided screenshot does not appear to contain any substantive content. See Compl. Ex. G. As such, the Panel agrees that Respondent registered and uses the disputed domain name in bad faith by not using the resolving webpage for any purpose.

 

Complainant lastly claims that Respondent had actual knowledge of Complainant’s VIDA VACATION mark. Actual knowledge does adequately evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the VIDA VACATION mark because it uses the disputed domain name to further its fraudulent email scheme by passing off as Complainant. The Panel agrees with Complainant and find that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).

 

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 <clubvidavacation.com> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch Panelist

Dated:  October 18 2017