Occidental Hoteles Management, S.L. v. Media Insights a/k/a Media Insight
Claim Number: FA1107001400029
Complainant is Occidental Hoteles Management, S.L. (“Complainant”), represented by Joshua D. Yeager of Cremer, Shaughnessy, Spina, Jansen & Siegert LLC, Illinois, USA. Respondent is Media Insights a/k/a Media Insight (“Respondent”), represented by James S. Robertson of Gaebe, Mullen, Antonelli & Dimatteo, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <allegroplayacar.com>, <occidentalallegro.com>, <occidentalallegrocozumel.com>, <occidentalallegroplayacar.com>, <occidentalgrandcozumel.com>, <occidentalgrandpuntacana.com>, <occidentalgrandxcaret.com>, <occidentalroyalhideaway.com>, <occidentalsgrandaruba.com>, and <occidentalgrandpapagayo.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide, and <occidentalhotelsresorts.com>, registered with Godaddy.com, Inc.
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.
David A. Einhorn, Terry F. Peppard, and Sandra J. Franklin, Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 22, 2011; the National Arbitration Forum received payment on July 22, 2011.
On July 26, 2011, 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>, <occidentalgrandcozumel.com>, <occidentalgrandpuntacana.com>, <occidentalgrandxcaret.com>, <occidentalroyalhideaway.com>, <occidentalsgrandaruba.com>, and <occidentalgrandpapagayo.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 25, 2011, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <occidentalhotelsresorts.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.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 August 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 2011 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@allegroplayacar.com, postmaster@occidentalallegro.com, postmaster@occidentalallegrocozumel.com, postmaster@occidentalallegroplayacar.com, postmaster@occidentalhotelsresorts.com, postmaster@occidentalgrandcozumel.com, postmaster@occidentalgrandpuntacana.com, postmaster@occidentalgrandxcaret.com, postmaster@occidentalroyalhideaway.com, postmaster@occidentalsgrandaruba.com, and postmaster@occidentalgrandpapagayo.com. Also on August 1, 2011, 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.
A timely Response was received and determined to be complete on August 30, 2011.
An Additional Submission was received from Complainant on September 6, 2011. An Additional Submission was received from Respondent on September 12, 2011. Both Additional Submissions were accepted by the Panel.
On September 22, 2011, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David A. Einhorn, Terry F. Peppard, and Sandra J. Franklin, Panelists, with Ms. Franklin as the Chairperson of the Panel.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <allegroplayacar.com>, <occidentalallegro.com>, <occidentalallegrocozumel.com>, <occidentalallegroplayacar.com>, <occidentalgrandcozumel.com>, <occidentalgrandpuntacana.com>, <occidentalgrandxcaret.com>, <occidentalroyalhideaway.com>, <occidentalsgrandaruba.com>,
<occidentalgrandpapagayo.com>, and <occidentalhotelsresorts.com> domain names are confusingly similar to Complainant’s OCCIDENTAL, ALLEGRO, OCCIDENTAL GRAND, and OCCIDENTAL HOTELS AND RESORTS marks.
2. Respondent does not have any rights or legitimate interests in the disputed domain names.
3. Respondent registered and used the disputed domain names in bad faith.
4. The disputed domain names were the subject of a previous UDRP case, but changed circumstances (the cancellation by Complainant of its contract with Respondent) warrant the reconsideration of the case.
B. Respondent makes the following assertions:
1. Many of the disputed domain names contain descriptive or geographic words.
2. Respondent has rights and legitimate interests in the disputed domain names.
3. Respondent was authorized to use the domain names, therefore there is no bad faith.
4. This case should not be heard because Complainant has not met the conditions for rehearing. Complainant (not Respondent) caused the changed circumstances by cancelling the contract between the Parties. The re-filed Complaint concerns acts that were the basis of the original complaint.
C. Additional Submissions
1. Complainant primarily reiterates the arguments made in its Complaint. Complainant states that Respondent was authorized to use but not own the disputed domain names under prior agreements.
2. Respondent primarily reiterates the arguments made in its Response,
stating that this is a contractual dispute, and again highlighting that Complainant is seeking a rehearing outside the requirements of Supplemental Rule 7(f).
Complainant operates beachfront hotels and resorts around the world. Complainant is the owner of trademark registrations with the USPTO for OCCIDENTAL and OCCIDENTAL GRAND. Complainant has also registered OCCIDENTAL HOTELS AND RESORTS with numerous foreign trademark authorities, including OHIM in Europe, and Oficina Espanola de Patentes y Marcas in Spain.
Respondent is the media division of the wholesale tour operator Vacation Store, which booked rooms for Complainant under a contract beginning in 2000.
The Panel notes that 9 of the 11 domain names in dispute in this case were the subject of a previous UDRP case decided in 2009, addressed below. The 2 domain names in this case which were not involved in the previous case are <occidentalhotelsresorts.com> and <occidentalsgrandaruba.com>.
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.
PRELIMINARY ISSUE: Reconsideration of Complainant’s Complaint
Complainant, Occidental Hoteles Management, S.L., previously filed a UDRP Complaint with the FORUM against Respondent, Media Insights a/k/a Media Insights, regarding 9 of the 11 disputed domain names. See Occidental Hoteles Mgmt. v. Media Insights, FA 1239395 (Nat. Arb. Forum Mar. 2, 2009). The panel in that case denied relief for Complainant after finding that Respondent’s <allegroplayacar.com> domain name was not confusingly similar to Complainant’s mark (along with other disputed domain names that are not included in this dispute) and that Respondent had rights and legitimate interests in the rest of the disputed domain names. Complainant has the burden to prove that its second Complaint should be heard, and panels have interpreted this as a “high burden.” See Creo Prods. Inc. v. Website in Dev., D2000-1490 (WIPO Jan. 19, 2001) (finding that the burden of establishing that a second complaint should be entertained is “high”); see also TABCORP Holdings Ltd. v. Hertzberg, D2001-1052 (WIPO Dec. 3, 2001) (holding that re-filing is not permitted, as the complainant failed to meet its “high burden” and therefore could not “re-do [its] failure in the original proceeding to carry its burden of proving bad faith registration of <tabcorp.com>”).
In Grove Broad. Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO Nov. 10, 2000), the panel articulated four grounds for reconsidering a previously filed decision: (1) serious misconduct on the part of a judge, juror, witness or lawyer; (2) perjured evidence having been offered to the court; (3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; or (4) a breach of natural justice. Other panels have utilized these grounds when determining whether a re-filing should be allowed. See Koninklijke Philips Elecs. N.V. v. Relson Ltd., DWS2002-0001 (WIPO June 14, 2002) (determining that it “should follow the consensus view that has emerged” with regard to re-filed complaints and holding such re-filing impermissible unless the subsequent proceeding would be appropriate under the Grove Broadcasting standards). Complainant argues, under the third prong of the Grove Broad Co. Ltd. test, that it has discovered credible and material evidence that could not have been reasonably foreseeable at trial: the conclusion of the contractual relationship between Respondent and Complainant.
Respondent contends that Complainant’s new Complaint should not be heard and that the findings by the panel in the first Occidental Hoteles Mgmt. v. Media Insights case preclude Complainant’s new claims. Respondent claims that Complainant’s new Complaint contains 90% of the same language as Complainant’s first Complaint in Occidental Hoteles Mgmt. Respondent argues that the conclusion of Complainant’s and Respondent’s contractual relationship was foreseeable by Complainant because Complainant unilaterally breached the contract it held with Respondent. Respondent alleges that there is no new evidence since no changes have been made to the web pages, no additional domain names have been registered, and Respondent has not used the disputed domain names to obtain economic influence. Respondent further claims that, in cases in which panels allowed the complainant to re-file, the respondent was the party that changed the circumstances, not the complainant, as is the case here.
The Panel finds that Complainant has not met the grounds for reconsidering a previous UDRP case. Specifically, the Panel finds that Complainant did not demonstrate the discovery of credible and material evidence that could not have been reasonably foreseen or known at the time of the filing of the 2009 complaint. Complainant could have foreseen that it would break off contractual relations with Respondent. Furthermore, the change in the contract, and contractual matters in general, are traditionally viewed as outside the scope of the UDRP, providing another ground for not hearing the present case. Indeed, the Panelist in the previous case stated
“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.” Both the previous case and this case are full of factual allegations by both parties that are beyond the inquiries mandated by the Policy. The previous Panel also cited no confusing similarity and the length of time that Complainant failed to take action against Respondent, factors unaffected by the alleged change in circumstance, making it hard for Complainant to meet the requirement that the alleged new evidence is material.
The Panel therefore dismisses the Complaint as to the 9 domain names that were the subject of the previous case, namely <allegroplayacar.com>, <occidentalallegro.com>, <occidentalallegrocozumel.com>, <occidentalallegroplayacar.com>, <occidentalgrandcozumel.com>, <occidentalgrandpuntacana.com>, <occidentalgrandxcaret.com>, <occidentalroyalhideaway.com>, and <occidentalgrandpapagayo.com>. See Furrytails Ltd. v. Mitchell, D2001-0857 (WIPO Sept. 6, 2001) (dismissing the complainant’s current complaint because it was “merely based upon subsequent acts that are either a repetition of, or substantially the same as, the acts on which the previous complaint was based”).
The Panel here has the same problem presented in the previous case, Occidental Hoteles Mgmt. v. Media Insights, FA 1239395 (Nat. Arb. Forum Mar. 2, 2009); the underlying issue is a contract issue. Even if the contract between the Parties is no longer in place, the Panel finds that contractual matters bear upon at least the determination of bad faith registration. For the Panel to decide the fate of these two domain names, it would have to delve into the nature of the contractual relationship between the Parties, particularly at the time of the registration, which it declines to do, in accord with the reasoning in the previous Occidental case and the weight of UDRP precedent.
For the reasons cited above, the Panel concludes that relief shall be denied.
Accordingly, it is Ordered that the <allegroplayacar.com>, <occidentalallegro.com>, <occidentalallegrocozumel.com>, <occidentalallegroplayacar.com>, <occidentalhotelsresorts.com>, <occidentalgrandcozumel.com>, <occidentalgrandpuntacana.com>, <occidentalgrandxcaret.com>, <occidentalroyalhideaway.com>, <occidentalsgrandaruba.com>, <occidentalgrandpapagayo.com> domain names remain with Respondent.
David A. Einhorn, Panelist
Terry F. Peppard, Panelist
Sandra J. Franklin, Panelist and Panel Chairperson
Dated: October 6, 2011
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