Boats Group, LLC and YachtWorld International Limited v. Ilona Engler Helmich / Yacht World Palma SL
Claim Number: FA2304002041022
Complainant is Boats Group, LLC and YachtWorld International Limited (“Complainant”), represented by Crystal Genteman of Kilpatrick Townsend & Stockton LLP, Georgia, USA. Respondent is Ilona Engler Helmich / Yacht World Palma SL (“Respondent”), Spain.
The domain name at issue is <yachtworldpalma.com>, registered with IONOS SE.
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on April 21, 2023; Forum received payment on April 21, 2023.
On April 21, 2023, IONOS SE confirmed by e-mail to Forum that the <yachtworldpalma.com> domain name is registered with IONOS SE and that Respondent is the current registrant of the name. IONOS SE has verified that Respondent is bound by the IONOS SE 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 April 27, 2023, Forum served the Complaint and all Annexes, including a Spanish and English Written Notice of the Complaint, setting a deadline of May 17, 2023 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@yachtworldpalma.com. Also on April 27, 2023, the Spanish and English 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, Forum transmitted to the parties a Notification of Respondent Default.
On May 23, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that 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, 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In this proceeding, there are two Complainants: Boats Group, LLC (“Boats Group”) and YachtWorld International Limited (“YWIL”) both of which are Complainants. Boats Group has a postal address in Miami, Florida in the United States. YWIL has a postal address in the United Kingdom at Fareham Hampshire P016 7JH, GB.
The two companies are closely related, as YWIL is a subsidiary of Boats Group. Both companies have trademark rights in the YACHTWORLD mark. Boats Group’s trademark is a United States federal trademark registration for YACHTWORLD and YWIL’s trademark is an EUIPO trademark registration for YACHTWORLD. In those circumstances, the two complainants have brought this single proceeding as joint complainants as they seek to protect the same trademark interest.
As the Complainants point out in their Complaint, UDRP panels have encouraged parties to file complaints jointly where they have a shared legal interest and they cite the decision in Starwood Hotels & Resorts Worldwide Inc., v. Media Insight a/k/a Media Insights, WIPO Case D2019-0211 as an example where that practice has been followed. The present case is another example. That is because the two Complainants are clearly in an affiliation such that they each have a shared legal interest in recovering the same domain name, as YWIL is a subsidiary of Boats Group, and on the same grounds in each case.
The same approach has been followed in other UDRP proceedings and there is no ground for departing from that practice. Thus, in Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names, as in the present case. 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 relevant mark.
It is true that in AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001), the panel said that “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…”. However, in the present case, both Complainants have a shared interest in protecting their trademark and, hence, in seeking to obtain the disputed domain name which they say is a transgression of that trademark.
Accordingly, it is consistent with this approach that the Panel should find, as it does, that the shared legal interests of the two Complainants should be enforced in the one proceeding.
That approach is also supported by the plain terms of rules applicable to the adjudication of this dispute. The UDRP itself, in Paragraph 4 of the Policy provides, inter alia, that the registrant of the disputed domain name must submit to the proceeding where “a third party ( a complainant) asserts…in compliance with the Rules of Procedure,…” that the elements then set out have occurred.
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) then provides that “[a]ny 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.” That is an accurate description of the basis for the present proceeding.
It is clear that the evidence brings the case within Rule 3(a) of the Rules and also within the Forum’s Supplemental Rule 1(e).
For ease of reference, the Complainants will be collectively referred to as “Complainant” in this decision.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
Complainant requests that this administrative proceeding should be conducted in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the fact that the Registration Agreement to which the disputed domain name relates is expressed in the Spanish language.
It is established practice, when such a request is made, to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling where a request is made that the proceeding should be conducted in a language other than the language of the registration agreement are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with such other language, the filing of a trademark registration with an entity which shows an understanding of such other language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the language in which the Registration Agreement is expressed and any proposed alternative language. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings be in English, contrary to the Registration Agreement, based on evidence that respondent had command of that language). Further, the Panel may weigh the relative time and expense in enforcing the language of the registration agreement, which might result in prejudice toward either party because of the need to translate documents and evidence to be used in the proceeding.
Here, Complainant notes that although the registration agreement is in Spanish, it is said by Complainant that it is also available in English. The <yachtworldpalma.com> domain name itself is in English and the content of the resolving website is in English ( See Compl. Exhibit K (screenshots of resolving site). Also, the domain name has been used to send emails that are in English. Moreover, the Panel assumes that as the purported business of the Respondent is at least in part international, it is more likely than not that it conducts some of its transactions in English. It should also be noted that if the proceeding were to be conducted in Spanish, Complainant would have to go to the time and cost of having documents translated into Spanish. Moreover, there would be no apparent prejudice to Respondent if the proceeding were conducted in English.
Applying those principles and pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to show that Respondent is conversant and proficient in the English language.
After considering all of the circumstance of the present case, the Panel therefore finds that the proceeding should be conducted in the English language and it so orders.
Complainant made the following contentions.
Complainants, Boats Group, LLC and YachtWorld International Limited, are brokers and dealers of luxury yachts. Complainant has rights in the YACHTWORLD mark through trademark registrations with the United States Patent and Trademark Office (“USPTO”) in USPTO Reg. No. 2,073,561, which was registered on June 24, 1997 and with the European Union Intellectual Property Office (“EUIPO”) in EUIPO Reg. No. 008810079, registered on December 17, 2010. See Compl. Exhibit I. Respondent’s <yachtworldpalma.com> domain name is identical or confusingly similar to the YACHTWORLD mark as it includes the entire mark, merely adding a geographic term and the generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <yachtworldpalma.com> domain name since Respondent is not licensed to use Complainant’s YACHTWORLD mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent diverts customers to a site that competes with Complainant.
Respondent registered and uses the <yachtworldpalma.com> domain name in bad faith by capitalizing on the goodwill associated with the YACHTWORLD mark through a confusingly similar domain name. Respondent also knew of Complainant’s rights in the YACHTWORLD mark.
Respondent failed to submit a Response in this proceeding.
1. The named Complainants are organized and operate in the United States and the United Kingdom respectively.
2. Complainant owns and operates YachtWorld.com, the world’s largest network for brokers and buyers of luxury yachts and provides related education, information and related services to support its customers.
3. Complainant has established its trademark rights in the YACHTWORLD mark by its ownership of the mark which is registered with the United States Patent and Trademark Office (“USPTO”) in USPTO Reg. No. 2,073,561, registered on June 24, 1997 and with the European Union Intellectual Property Office (“EUIPO”) in EUIPO Reg. No. 008810079, registered on December 17, 2010.
4. Respondent registered the <yachtworldpalma.com> domain name on March 10, 2018.
5. Respondent has caused the disputed domain name to resolve to its website at www.yachtworldpalma.com.
6. Respondent has caused the disputed domain name to be used to offer competing yacht brokerage and related services to those of Complainant under the business name Yacht World Palma SL and the trademark YACHT WORLD PALMA and to divert potential customers to its website at www.yachtworldpalma.com that competes with Complainant.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the YACHTWORLD mark through registrations of the mark with the USPTO and EUIPO (USPTO Reg. No. 2,073,561, registered on June 24, 1997; and EUIPO Reg. No. 008810079, registered on December 17, 2010). See Compl. Exhibit I. Registration of a mark with an authority such as the USPTO and EUIPO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Bittrex, Inc. v. Domain Privacy Services, FA 1786849 (Forum June 15, 2018) (finding Complainant has trademark rights in the BITTREX mark through registration of the mark with the EUIPO and the USPTO). Since Complainant provides evidence of registration of the YACHTWORLD mark with the USPTO and EUIPO, the Panel finds that Complainant has demonstrated its rights in the YACHTWORLD mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s YACHTWORLD mark. Complainant argues that the <yachtworldpalma.com> domain name is identical or confusingly similar to its YACHTWORLD mark since it uses the entire mark in the domain name and simply adds the geographic term “Palma” (a city in Spain), as well as the “.com” gTLD. When a disputed domain name wholly incorporates a complainant’s mark, Panels have found that adding geographic terms or identifiers is insufficient to distinguish the domain name from the mark. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Similarly, gTLDs are irrelevant for purposes of Policy ¶ 4(a)(i) analysis. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). Given that Respondent adds a geographic term and gTLD to the YACHTWORLD mark, the Panel finds that the <yachtworldpalma.com> domain name is confusingly similar to the mark under Policy ¶ 4(a)(i).
That is so because the clear and, as the Panel finds, intended meaning of the domain name is that it is an official domain name of Complainant and that it will take the user to an official website of Complainant in Palma, neither of which is true.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)).
(a) Respondent has chosen to take Complainant’s YACHTWORLD mark and to use it in its domain name, adding the geographic word “Palma” which does not negate the confusing similarity between the domain name and the mark;
(b) Complainant’s YACHTWORLD trademark was registered on June 24, 1997 with USPTO and on December 17, 2010 with EUIPO;
(c) Respondent registered the <yachtworldpalma.com> domain name on March 10, 2018;
(d) Respondent has caused the disputed domain name to be used to divert potential customers to a website that competes with Complainant;
(e) Respondent has engaged in these activities without the consent or approval of Complainant;
(f) Complainant argues that Respondent has no rights or legitimate interests in the <yachtworldpalma.com> domain name because Respondent was not commonly known by the disputed domain name prior to its registration or at all and Complainant has never licensed rights to or permitted Respondent to use the YACHTWORLD mark. If a respondent submits that it is commonly known by a disputed domain name, Panels have required affirmative evidence from the respondent to show that it is in fact commonly known by the disputed domain name. Moreover, Panels have held the respondent must be commonly known by the disputed domain name prior to registration of the domain name which is not so in the present case. See Google Inc. v. S S / Google International, FA 1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, this may act as support for the conclusion that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the <yachtworldpalma.com> domain name lists the registrant as “Ilona Engler Helmich / Yacht World Palma SL.” See Registrar Email Verification. Complainant provides evidence that the company was organized in April 2018. See Compl. Exhibit Q. Complainant also relies on the LinkedIn profile page for the company’s employee-broker, Hans-Ulrich Heisler, which shows that the company began operations in March 2018. See Compl. Exhibit M. Complainant notes the company was organized under the “Yacht World Palma SL” name after (or around the same time as) registration of the <yachtworldpalma.com> domain name in March 2018. See Compl. Exhibit A. Further, there is no evidence to suggest that Respondent was authorized, licensed rights to, or was otherwise permitted to use the YACHTWORLD mark. As the Panel agrees, it finds that Respondent is not commonly known by, and lacks rights or legitimate interests in, the <yachtworldpalma.com> domain name per Policy ¶ 4(c)(ii);
(g) Complainant also argues that Respondent seeks to confuse consumers and divert them to a site offering services competing with Complainant. Previous Panels have found that use of a confusingly similar domain name to mislead and divert customers away from a complainant does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). In addition, Panels have declined to find a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name when a respondent diverts traffic to a site offering goods or services that compete with a complainant. See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). In this case, Complainant provides evidence that the <yachtworldpalma.com> domain name resolves to a site selling luxury yachts under the “Yacht World Palma” company name, which Complainant notes causes additional consumer confusion as to the affiliation of the site. See Compl. Exhibit K. As the Panel agrees, as Respondent appears to be using the YACHTWORLD mark and <yachtworldpalma.com> domain name to attract confused customers and compete with Complainant’s luxury yacht business, the Panel finds that Respondent lacks a bona fide offering of goods or services and legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <yachtworldpalma.com> domain name in bad faith because Respondent registered and uses an identical or confusingly similar domain name to capitalize on the goodwill associated with Complainant’s YACHTWORLD mark. When a disputed domain name is found to be identical or confusingly similar to a mark, Panels have presumed a respondent intends to cause consumer confusion and trade off the mark, attracting consumers in bad faith for commercial gain. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). As the Panel agrees, it finds bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent knew of Complainant’s rights in the YACHTWORLD mark when registering the <yachtworldpalma.com> domain name. Prior UDRP decisions have generally declined to find bad faith on the basis of constructive knowledge. However, a panel may find that Respondent had actual knowledge, as actual knowledge is sufficient to establish a respondent’s bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). To support this submission, Complainant notes that the YACHTWORLD mark has been used for luxury yacht services for nearly thirty years and is the largest network for luxury yacht buyers and brokers. See Compl. Exhibits C (Complainant’s websites), G (social media), and I (trademark registrations). Further, the <yachtworldpalma.com> domain name was only registered in 2018 and uses the entire mark. Complainant also argues that Respondent’s agent, employee-broker Hans-Ulrich Heisler, is familiar with the boating and yacht industry based on his experience doing business in the industry. See Compl. Exhibits M and N. As such, Respondent must have been aware of Complainant. As the Panel finds that Respondent had actual knowledge of Complainant, it finds bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the YACHTWORLD mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yachtworldpalma.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: May 25, 2023
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