Desarrollo Marina Vallarta, S.A. DE C.V v. David White / No Company
Claim Number: FA1810001813866
Complainant is Desarrollo Marina Vallarta, S.A. DE C.V ("Complainant"), represented by S. Erik Combs, Texas, USA. Respondent is David White / No Company ("Respondent"), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <grupovidantaresorts.com>, registered with Neubox Internet S.A. de C.V.
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 E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 26, 2018; the Forum received payment on October 26, 2018.
On October 29, 2018, Neubox Internet S.A. de C.V. confirmed by email to the Forum that the <grupovidantaresorts.com> domain name is registered with Neubox Internet S.A. de C.V. and that Respondent is the current registrant of the name. Neubox Internet S.A. de C.V. has verified that Respondent is bound by the Neubox Internet S.A. de C.V. 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 October 31, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 2018 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@grupovidantaresorts.com. Also on October 31, 2018, the Written Notice of the Complaint, notifying Respondent of the email 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 November 24, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 describes itself as the leading resort developer in Latin America. Complainant has developed and operated resort properties and related services for more than 40 years, investing heavily in marketing under VIDANTA, GRUPO VIDANTA, and other marks incorporating VIDANTA. Complainant asserts that its marks are well known in Mexico and many other countries in the Americas. Complainant uses the marks under a license from its proprietor, Daniel Jesús Chávez Moran. Complainant provided evidence of Mexican trademark registrations for VIDANTA as a standard character mark and GRUPO VIDANTA as the textual component of a design mark.
Respondent registered the disputed domain name in July 2018. Complainant states that it suspects that the registration data provided by Respondent is false, on the grounds that the U.S. street address provided by Respondent does not appear to exist and the telephone number appears to be a German number. The disputed domain name is being used in fraudulent email messages directed at customers of Complainant, impersonating Complainant and soliciting payments from the recipients of the messages. If an Internet user attempts to access a website using the disputed domain name, the user is automatically forwarded to Complainant's own website; Complainant asserts that the purpose of this redirection is to mislead users into believing that the disputed domain name is connected to Complainant, thereby supporting Respondent's fraudulent scheme. Complainant states that Respondent is not an employee of Complainant nor an authorized provider of Complainant’s services; that Complainant has not licensed or otherwise permitted Respondent to use its marks; and that Respondent is not commonly known by the disputed domain name. Complainant accuses Respondent of engaging in a pattern of bad faith registration and use of Complainant's marks in domain names, suggesting that Respondent may in fact be the same entity as the respondents in previous UDRP proceedings brought by Complainant.
Complainant contends on the above grounds that the disputed domain name <grupovidantaresorts.com> is confusingly similar to the VIDANTA and GRUPO VIDANTA marks in which it has rights; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 Management, 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: Language of Proceeding
The Panel notes that the Registration Agreement is written in Spanish. Rule 11(a) provides that the language of this administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise. Complainant requests that the proceeding be conducted in English, noting that Respondent has sent emails to Complainant's customers in English, and that Respondent therefore appears to be capable of communicating in English. The registration data furnished by Respondent is also in English.
The Written Notice of the Complaint was transmitted to Respondent in both English and Spanish. Complainant has not alleged or demonstrated any prejudice that would result from conducting this proceeding in Spanish or requiring Complainant to provide a Spanish translation of the Complaint. See, e.g., AB Electrolux v. Ozkan USLU, FA 1791037 (Forum July 20, 2018) (dismissing complaint absent assertion of prejudice or evidence of respondent's fluency in English). However, the evidence before the Panel indicates that Respondent is fluent in English, and Respondent has had adequate opportunity to object to the proceeding being conducted in English. The Panel therefore sees no reason to require further expense or delay. See, e.g., Maruha Nichiro Corp. c/o Shigeru Ito v. Wang XiaoWen, FA 1715376 (Forum Mar. 14, 2017) (proceeding in English based upon evidence of respondent's ability to communicate in English and lack of objection by respondent).
For the reasons stated above, the Panel considers it appropriate to conduct this proceeding in the English language.
Complainant states that it uses the VIDANTA and GRUPO VIDANTA marks under license from its proprietor, who owns the corresponding trademark registrations. Complainant owns sufficient rights in the marks to proceed under the Policy. See, e.g., Desarrollo Marina Vallarta, S.A. de C.V. / Daniel Jesus Chavez Moran v. Karla Vallejo, D2013-0962 (WIPO July 19, 2013) (accepting joint complaint by Desarrollo Marina Vallarta, S.A. de C.V. and its controlling member and founder Chávez Moran, and recognizing that a licensee may assert rights in a mark for purposes of a proceeding under the Policy).
The disputed domain name <grupovidantaresorts.com> incorporates the VIDANTA and GRUPO VIDANTA trademarks, adding the generic term "resorts" (and in one instance "grupo," Spanish for "group") and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and the mark. See, e.g., Daniel Jesus Chavez Moran & Desarrollo Marina Vallarta, S.A. DE C.V. v. Miguel Pena, FA 1735344 (Forum July 24, 2017) (finding <vidanta‑group.com> confusingly similar to VIDANTA); Desarrollo Marina Vallarta, S.A. de C.V. / Daniel Jesus Chavez Moran v. Karla Vallejo, supra (finding <groupovidantacustomerservice.com> confusingly similar to VIDANTA and GRUPO VIDANTA). Accordingly, the Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and its only apparent use involves impersonating Complainant in email messages sent in connection with a fraudulent scheme. Such use does not give rise to rights or legitimate interests under the policy. See, e.g., Daniel Jesus Chavez Moran & Desarrollo Marina Vallarta, S.A. DE C.V. v. Miguel Pena, supra (finding lack of rights or interests in similar circumstances); Desarrollo Marina Vallarta, S.A. de C.V. / Daniel Jesus Chavez Moran v. Karla Vallejo, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(ii) of the Policy, bad faith may be shown by evidence that the domain name was registered "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name incorporating Complainant's well-known mark and is using the domain name to impersonate Complainant in connection with a fraudulent scheme. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Daniel Jesus Chavez Moran & Desarrollo Marina Vallarta, S.A. DE C.V. v. Miguel Pena, supra (finding bad faith in similar circumstances). Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, based on paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. The Panel therefore need not consider whether the evidence is sufficient to support an inference that Respondent is the same entity as the respondents in previous proceedings under the Policy, as Complainant suggests, and has engaged in a pattern of bad faith registrations under paragraph 4(b)(ii).
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <grupovidantaresorts.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: November 26, 2018
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