THE NATIONAL ARBITRATION FORUM
P.O. BOX 50191
MINNEAPOLIS, MINNESOTA 55405 USA

TRAVEL SERVICES INC.
P.O. Box 16187
San Juan, PR 00908-6187

Complainant,

v.

TOUR COOP OF Puerto Rico
Marginal Los Angeles A-2
Carolina, PR 00979

Respondent

DECISION
FA# 0001000092524

 

The above-entitled matter came on for an administrative hearing on February 29, 2000, before the undersigned on the Complaint of Travel Services, Inc., hereinafter referred to as "Complainant" against Tour Coop Of Puerto Rico, hereinafter referred to as "Respondent." The complaint was signed by the Assistant Comptroller of Complainant and received by the Forum on January 21, 2000, and sent to Respondent in accordance with Rule 2(a) on February 24, 20000. Subsequently, Complainant filed a "supplement" to its Complaint and to be considered as a rebuttal to Respondent’s response on or about February 15, 2000.

Upon the written submitted record, the following Decision is made:

Procedural Findings

Domain Names: (a) destinationpuertorico.com;

(b) destinationpuertorico.net;

Domain Name Register: Network Solutions;

Date of Domain Name Registration: 03/29/99;

Date Complaint Was Sent to Respondent In Accordance With Rule 2(a)01/24/00;

Response Due Date: 02/16/00

Response by Respondent: 02/15/00;

Rebuttal Response By Claimant: 02/17/00.

 

The Complainant filed its Complaint with the National Arbitration Forum on January 29, 2000. After reviewing the Complaint for administrative compliance, the Forum transferred the Complaint to the respondent in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule4(a). In compliance with Rule 4(a), the Forum immediately notified the above Registrar, ICANN, and the Complainant that the administrative proceeding had commenced.

The respondent filed a Response on February 16, 2000, to which the Claimant filed a "supplemental" response in the nature of a rebuttal.

The domain names had been registered by Respondent on March 29, 1999, with Network Solutions as Registrar. By registering its domain name with Network Solutions, the Respondent had agreed to resolve any dispute regarding its domain name through ICANN’s Uniform domain Dispute Resolution Policy. Thus, this proceeding resulted, and the undersigned is the panel of one arbitrator appointed accordingly.

Findings of Fact

  1. The Complaint is based upon the Complainant’s ownership and use of the trade name and mark "Destination Puerto Rico" registered on September 20, 1994, with the Department of State of the Commonwealth of Puerto Rico. This trade name has been in use by Complainant since July 1, 1990. Under the Certificate Of Registration, it remains in force until September 20, 2004.
  2. Since the Complainant heavily promotes its services and products as "Destination Puerto Rico"around the world, Respondent’s use of its domain name clearly interferes with such efforts and infringes upon Complainant’s business in great measure to its harm and detriment.
  3. "Destination Puerto Rico" is also protected by copyright laws of the United States of America by registration therein under Title 7 of the United States Code.
  4. The registered domain names are identical, and are confusingly similar to the trademarks or service marks in which the Complainant has established rights of long standing
  5. The Respondent, Travel Coop of Puerto Rico, does not have rights or legitimate interests in respect of the domain names that are the subject of the Complaint. It is patently clear that Respondent’s use of the domain names in connection with its advertising and offering of goods and services infringes upon Complainant’s business in a deleterious manner. Its use of the domain name misleadingly diverts consumers as well as tarnishing the trademark or service mark of the Complainant in issue.

6) The domain names should not be considered as having been registered by Respondent and are, in fact, being used by Respondent in bad faith. It is clear that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s web site location.

Conclusions of Law

The undersigned certifies that he acted independently and has no known conflict of interest to serve as the arbitrator herein in this proceeding, and it is so concluded, and having been selected and being impartial, the undersigned has made the above Findings Of Fact and, therefore, concludes that the complainant’s rights are superior in both time and use under appropriate laws and is entitled to the use of the domain name in controversy and that Respondent has acted improperly and capriciously in using the domain name in bad faith.

 

Decision

Based upon the above Findings of Fact and Conclusions of Law and pursuant to Rule 4(i), it is decided as follows:

I FIND FOR THE COMPLAINANT AND ORDER THE TRANSFER OF THE RESPONDNET’S DOMAIN NAME TO THE COMPLAINANT AS FOLLOWS:
    1. destinatonpuertorico.com
    2. destinationpuertorico.net

Dated: February 29, 2000, by Judge Henry X. Dietch (Ret.), Arbitrator