Occidental Hoteles
Management, S.L. v. Media Insights a/k/a Media Insight
Claim Number: FA0812001239395
PARTIES
Complainant is Occidental Hoteles Management, S.L. (“Complainant”), represented by Joshua
D. Yeager, of Cremer, Shaughnessy, Spina, Jansen, &
Seigert LLC, Illinois, USA.
Respondent is Media Insights a/k/a Media Insight (“Respondent”), represented by James S. Robertson, of Gaebe, Mullen, Antonelli,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <allegroplayacar.com>, <occidentalallegro.com>,
<occidentalallegrocozumel.com>,
<occidentalallegroplayacar.com>,
<occidentalallegropuertoplata.com>,
<occidentalgrandcozumel.com>, <occidentalgrandflamenco.com>, <occidentalgrandpuntacana.com>, <occidentalgrandxcaret.com>, <occidentalroyalhideaway.com>, <occidentalgrandcancunresort.com>,
<occidentalgrandpapagayo.com>,
<occidentalgrandpuertoplata.com>,
<allegrojacktarpuertoplata.com>,
<grandcozumelresort.com>, <grandarubaresort.com>, <grandxcaretresorts.com>, <allegropapagayoresorts.com>, <royalhideawayrivieramaya.com>,
and <occidentalgrandarubaresort.com>,
registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
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.
David E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 18, 2008; the
National Arbitration Forum received a hard copy of the Complaint on December 22, 2008.
On December 22, 2008, Melbourne IT, Ltd. d/b/a Internet Names Worldwide
confirmed by e-mail to the National Arbitration Forum that the <allegroplayacar.com>, <occidentalallegro.com>,
<occidentalallegrocozumel.com>,
<occidentalallegroplayacar.com>,
<occidentalallegropuertoplata.com>,
<occidentalgrandcozumel.com>, <occidentalgrandflamenco.com>, <occidentalgrandpuntacana.com>, <occidentalgrandxcaret.com>, <occidentalroyalhideaway.com>, <occidentalgrandcancunresort.com>,
<occidentalgrandpapagayo.com>,
<occidentalgrandpuertoplata.com>,
<allegrojacktarpuertoplata.com>,
<grandcozumelresort.com>, <grandarubaresort.com>, <grandxcaretresorts.com>, <allegropapagayoresorts.com>, <royalhideawayrivieramaya.com>,
and <occidentalgrandarubaresort.com>
domain names are registered with Melbourne IT,
Ltd. d/b/a Internet Names Worldwide and that Respondent is the current
registrant of the names. Melbourne IT, Ltd. d/b/a Internet Names Worldwide
has verified that Respondent is bound by the Melbourne
IT, Ltd. d/b/a Internet Names Worldwide registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On December 30, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 19, 2009 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@allegroplayacar.com, postmaster@occidentalallegro.com, postmaster@occidentalallegrocozumel.com, postmaster@occidentalallegroplayacar.com, postmaster@occidentalallegropuertoplata.com, postmaster@occidentalgrandcozumel.com, postmaster@occidentalgrandflamenco.com, postmaster@occidentalgrandpuntacana.com, postmaster@occidentalgrandxcaret.com, postmaster@occidentalroyalhideaway.com, postmaster@occidentalgrandcancunresort.com, postmaster@occidentalgrandpapagayo.com, postmaster@occidentalgrandpuertoplata.com, postmaster@allegrojacktarpuertoplata.com, postmaster@grandcozumelresort.com, postmaster@grandarubaresort.com, postmaster@grandxcaretresorts.com, postmaster@allegropapagayoresorts.com, postmaster@royalhideawayrivieramaya.com, and postmaster@occidentalgrandarubaresort.com by e-mail.
A Response was received on February 6,
2009, but the Response was deemed deficient pursuant to Paragraph 5 of the Rules for Uniform Domain Name Dispute
Resolution (the “Rules”) because a hard
copy was not received prior to the Response deadline. The Panel has nonetheless decided in the
interest of justice to consider the deficient Response.
On February 11, 2009, Complainant submitted an Additional Submission,
and on February 17, 2009, Respondent submitted an Additional Submission. The National Arbitration Forum determined
these submissions to be timely and in compliance with Paragraph 7 of the
Forum’s Supplemental Rules.
On February 18, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David E. Sorkin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner of OCCIDENTAL HOTELS AND RESORTS, which it describes
as “a copyrighted and otherwise protected business name, service mark,
trademark, and trade name” that is associated with 46
hotels located in Europe, Africa, the Caribbean, and the
B. Respondent
Respondent states that it is a division of a wholesale tour operator,
Vacation Store, that provides tour operations and
travel packages, including hotel accommodations, for travel to destinations
outside the
C. Additional Submissions
Both parties have provided Additional Submissions, although neither
party has explicitly identified any exceptional circumstances that would
warrant the Panel’s consideration of supplemental material. The Panel has considered these submissions
only to the extent that they appear to reflect newly discovered evidence not
reasonably available to the submitting party at the time of its original
submission, or rebut arguments by the opposing party that the submitting party
could not reasonably have anticipated. See
In its Additional Submission, Complainant notes that Vacation Store is
not a respondent in this proceeding, and that none of the domain name
registration records for the disputed domain names list Vacation Store in any
capacity. Complainant states further
that Vacation Store has represented to Complainant that it is a separate entity
from Respondent. Complainant asks the
Panel to disregard the evidence furnished by Respondent that relates to
Vacation Store rather than to Respondent.
In its Additional Submission, Respondent reiterates that it is merely a
division of Vacation Store, and asserts that Complainant has known for some
time that the domain names were registered and operated by Vacation Store.
FINDINGS
The Panel finds with respect to seven of the
disputed domain names, <allegroplayacar.com>, <allegrojacktarpuertoplata.com>,
<grandcozumelresort.com>, <grandarubaresort.com>, <grandxcaretresorts.com>, <allegropapagayoresorts.com>, and
<royalhideawayrivieramaya.com>,
that Complainant has failed to prove that these domain names are identical or
confusingly similar to a mark in which Complainant has rights.
The Panel further finds,
with respect to the remaining thirteen disputed domain names subject to this
proceeding, <occidentalallegro.com>,
<occidentalallegrocozumel.com>,
<occidentalallegroplayacar.com>,
<occidentalallegropuertoplata.com>,
<occidentalgrandcozumel.com>, <occidentalgrandflamenco.com>, <occidentalgrandpuntacana.com>, <occidentalgrandxcaret.com>, <occidentalroyalhideaway.com>, <occidentalgrandcancunresort.com>,
<occidentalgrandpapagayo.com>,
<occidentalgrandpuertoplata.com>,
and <occidentalgrandarubaresort.com>,
that Complainant has failed to prove that Respondent lacks rights or legitimate
interests in respect of the domain names.
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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The only mark in which Complainant has
claimed rights in this proceeding is OCCIDENTAL HOTELS AND RESORTS. Several of the disputed domain names
(specifically, <allegroplayacar.com>, <allegrojacktarpuertoplata.com>, <grandcozumelresort.com>, <grandarubaresort.com>, <grandxcaretresorts.com>, <allegropapagayoresorts.com>, and
<royalhideawayrivieramaya.com>)
do not appear to be similar in any manner to this mark, disregarding (in four
instances) the generic term “resorts” to which Complainant presumably makes no
particular claim. Complainant offers no
explanation of any similarity between these domain names and its OCCIDENTAL
mark; Complainant’s argument appears to focus upon the content of the websites
to which these domain names resolve rather than the domain names
themselves. The Panel therefore finds
that Complainant has failed to prove that these domain names are identical or
confusingly similar to a mark in which Complainant has rights.
With regard to the remaining
domain names, the Panel declines to enter a finding as to identicality or
confusing similarity.
In the view of the Panel, the evidence in the
record tends to show that Respondent and Vacation Store are related entities, and that Respondent’s use of the disputed domain
names is and has been in connection with a contractual relationship between
Complainant and Vacation Store. To this
end the domain names are being used to promote Complainant’s hotel properties,
with some commissions or other payments being made by Complainant to Vacation
Store as a result of such promotion efforts.
It may well be, as Complainant contends, that
it never authorized Respondent in particular to use its mark or market its
hotel properties, and that until recently Complainant may have been unaware of (and
perhaps misled as to) the claimed connection between Respondent and Vacation
Store. But it also appears that
Complainant has long been aware of the existence of the domain names and
corresponding websites, and that Complainant has likely condoned their use for
the mutual benefit of Complainant and Vacation Store. Whether that use represents a “bona fide offering of goods or services”
under Paragraph 4(c)(i) of the Policy is a difficult question, turning in part
upon disputed factual issues and in part upon legal questions (including breach
of contract and possible nominative fair use).
The Panel is mindful of the limited scope of
proceedings conducted under the Policy and the limited competence of a Panel to
determine complex questions arising therein.
This is not a typical case of cybersquatting falling squarely within the
“relatively narrow class of cases” susceptible to adjudication under the Policy. See Public Company Accounting Oversight Board v. Nagel, FA 290974
(Nat. Arb. Forum Aug. 17, 2004) (citing ICANN, Second Staff Report on Implementation Documents for the Uniform Dispute
Resolution Policy (Oct. 24, 1999), <http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm>,
paragraph 4.1(c)). Furthermore, the
burden of proving that Respondent lacks rights
or legitimate interests in respect of the disputed domain names rests upon
Complainant. Under the circumstances,
the Panel finds that Complainant has failed to meet this burden with respect to
the remaining thirteen domain names.
Because the Panel’s findings on the preceding
two issues are determinative, the Panel declines to enter any findings as to
registration and use in bad faith.
DECISION
Having considered the elements required under the Policy, the Panel
concludes that relief shall be DENIED as to all of the disputed domain
names.
David E. Sorkin, Panelist
Dated: March 2, 2009
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