WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Village Resorts Ltd. v. Superfares
Case No. D2001-0813
1. The Parties
The Complainant is Village Resorts Ltd., a Jamaican corporation with its principal place of business at Kingston, Jamaica. The Complainant is represented by Ms. Kathy Silberthau Strom of Cahill, Gordon & Reindel, Attorneys, of Washington, D.C., U.S.A.
The Respondent is identified only as Superfares of Chicago, Illinois, U.S.A.. The Respondent has not filed a Response and is not represented.
2. The Domain Name and Registrar
The domain name at issue is <superfares.com>. The domain name is registered with Network Solutions Inc. of Herndon, Virginia, U.S.A. ("NSI").
3. Procedural History
The Complaint submitted by Village Resorts Ltd. was received on June 20, 2001, (electronic version) and June 22, 2001, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center"). Some minor amendments were made to the Complaint before dispatch to the Respondent.
On June 25, 2001, a request for Registrar verification was transmitted by the WIPO Center to NSI, requesting it to:
Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
Confirm that the domain name at issue is registered with NSI.
Confirm that the person identified as the Respondent is the current registrant of the domain name.
Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the NSIís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.
Confirm that the Uniform Domain Name Dispute Resolution Policy ("UDRP") was in effect.
Indicate the current status of the domain name.
By email dated July 6, 2001, NSI advised WIPO Center as follows:
NSI had received a copy of the Complaint from the Complainant.
NSI is the Registrar of the domain name registration <superfares.com>.
The Respondent is shown as the "current registrant" of the domain name.
The Respondent is also the administrative and billing contact.
NSIís 5.0 Service Agreement applies.
The domain name registration <superfares.com> is currently in "Active" status.
NSI has currently incorporated in its agreements the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").
The advice from NSI that the domain name in question is still "active" indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with NSI. Accordingly, the Respondent is bound by the provisions of the Policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center on July 10, 2001, transmitted by post-courier and by email a notification of the Amended Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Amended Complaint was also emailed to NSI and ICANN.
The Complainant elected to have its Complaint resolved by a single Panelist; it has duly paid the amount required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. The Respondent did not file a Response within the time stipulated. Accordingly, a notice of Respondent Default was issued by WIPO Center on June 30, 2001.
WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.
The Panelist duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On August 14, 2001, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 15(b), in the absence of exceptional circumstances, the Panel was required to forward its decision by August 28, 2001.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
4. Factual Background
Complainant through its subsidiaries offers resort hotel and travel reservation services. It and its subsidiaries are known and referred to in the resort hotel and travel industry as "SUPERCLUBS". Complainant offers resort hotel and travel reservation services which feature its numerous resort hotels in many locations, including Jamaica and the Caribbean. Complainant has advertised its travel reservation packages in connection with use of the mark "SUPERFARES". This mark has been used on Complainantís website and has been used on brochures, rate sheets and advertisements.
Complainant is the owner of the US registered mark "SUPERFARES" which, since May 1991, it has continuously used in connection with its resort hotel services and travel reservation services. United States Registration No. 1,779,925 was issued June 29, 1993, on the Supplemental Register for the mark "SUPERFARES" in Class 39 for travel reservation services. Registration No. 2,345,072 issued April 25, 2000, on the Principal Register in Class 39 is for travel reservation services. Such registered marks are valid and subsisting. Annual sales under the SUPERFARES program have been between approximately $8 million and $32 million per year. The mark "SUPERFARES" is distinctive of the services of Complainant.
Complainant has also expended considerable sums in advertising its resort hotel services and its travel reservation services in connection with the "SUPERFARES" marks throughout the United States and elsewhere in the world. Complainant has developed goodwill through the "SUPERFARES" mark in the United States and elsewhere.
5. Partiesí Contentions
The domain name registered by Respondent, namely, <superfares.com> is identical to and confusingly similar to Complainantís mark "SUPERFARES".
Respondent has no rights or legitimate interest whatsoever in the domain name <superfares.com>. Complainant has not licensed or otherwise permitted Respondent to use its SUPERFARES trademark. To the best of Complainantís knowledge, Respondent has made no efforts to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, nor has Complainant been commonly known by the domain name.
Respondentís conduct constitutes bad faith registration and use of the domain name under the Policy. Not only does Respondent have no legitimate interest in or rights to the domain name, but also Respondent has failed to act reasonably to resolve this dispute. By letter dated December 12, 2000, (which Complainant attempted to send by e-mail, by certified mail and by fax) Complainant through its attorneys requested that Respondent transfer to Complainant the domain name <superfares.com>. No response was received from Respondent to the letter.
Moreover, the information provided by Respondent to NSI appears to be invalid. It has been difficult to communicate with Respondent. The e-mail sent to the e-mail address listed in the WHOIS database provided by Respondent to NSI was returned as undeliverable. The letter sent to the address listed by Respondent in the WHOIS database by certified mail could not be delivered to that address and was returned to sender as undeliverable. Finally, after several failed attempts to send a fax to the number listed in the WHOIS data, a copy was successfully faxed to a different fax number provided to the fax operator after a call was made by the fax operator attempting to verify the original fax number.
Respondent has failed, despite repeated attempts by Complainant, to respond to Complainantís communications, and has failed to provide updated, valid contact information to NSI of the domain name in violation of its registration agreement. Under these circumstances such conduct amounts to registration and use of the domain name in bad faith as contemplated by the Policy Paragraph 4(c).
Respondentís website is currently inactive, and on information and belief has never been active. It has been determined under the Policy that registration in bad faith followed by a passive holding of a domain name where there is no way in which it can legitimately be used can amount to use in bad faith. Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000). Respondentís failure to respond to Complainantís "cease and desist" letter, and Complainantís inability to deliver by e-mail or by mail its cease and desist letter to Respondent as a result of Respondentís failure to provide correct, current, and updated contact information to the Registrar is evidence of Respondentís bad faith in registering and using the domain name. See CBS Broadcasting Inc. v. Edward Enterprises, WIPO Case No. D2000-0242 (May 24, 2000). Permitting a website to remain empty after receiving Complainantís communications is evidence of bad faith.
Respondent appears to have extended the domain name registration in January 2001, even after being informed prior to that date (by fax successfully transmitted on December 13, 2000), that the registration violates the rights of Complainant in the mark "SUPERFARES". This conduct, is further evidence of bad faith.
In addition, lack of response to a letter informing Respondent of Complainantís rights and requesting transfer of the domain name may be deemed a pattern of conduct sufficient to constitute registration and use of the domain name in bad faith. See Cortefiel, S.A. v. Javier García Quintas, WIPO Case No. D2000-0141 (April 24, 2000). Taken together, Respondentís actions are clear evidence of its bad faith registration and use of the domain name. See, e.g., Pharmacia & Upjohn Co. v. Thomas Habif, WIPO Case No. D2001-0404 (May 3, 2001), (passive holding of domain name, coupled with failure to respond to communications supports finding of bad faith registration and use); CBS Broadcasting Inc. v. Edward Enterprises, WIPO Case No. D2000-0242 (citing cases supporting a finding of bad faith where a website is currently inactive and stating that the examples of bad faith of paragraph 4(b) of the Policy are intended to be illustrative, rather than exclusive); ABF Freight System, Inc. v. American Legal, WIPO Case No. D2000-0185 (May 9, 2000), (inactivity by the Respondent may amount to the domain name being used in bad faith).
There are no circumstances that indicate any proper purpose for which Respondent could have registered and maintained the domain name <superfares.com>. Thus, in light of Complainantís long-standing rights in its "SUPERFARES" marks, Respondentís awareness of Complainantís use of "SUPERFARES" in connection with its services, and Respondentís failure to respond to reasonable efforts to transfer the domain name, there is no plausible actual or contemplated use of the domain name by Respondent which would not be illegitimate. Thus, Respondentís registration and use of the domain name constitutes registration and use in bad faith.
Respondent has made no submissions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- that the Respondent has no legitimate rights or interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
In the view of the Panel, the disputed domain name is identical to the Complainantís "Superfares" marks.
In the Panelís view, the Respondent has no legitimate rights to or interests in the domain name. The Complainant gave it none. The Respondent claims none. The name "Superfares" under which the Complainant advertises and sells are well known. Accordingly the Panel finds the second criterion proved. There is no suggestion that any of the matters in Paragraph 4(c) of the Policy apply.
Similarly, with the third criterion. The Panel infers that the Respondent must have known of the Complainantís involvement in the travel industry at the time the name was registered.
The Respondentís failure to develop the website is indicative of continuing bad faith use. Other pointers to an inescapable conclusion of bad faith registration and use are summarised in the Complainantís submission. Notably, the Respondentís failure to reply to a Ďcease and desistí letter, the difficulty in contacting the Respondent and the failure to provide proper contact information to NSI.
The Panel accepts the Complainantís submissions as valid and appropriate.
Accordingly for the reasons stated, the Panel finds the Complaint proved.
For the foregoing reasons, the Panel decides:
(a) that the domain name registered by the Respondent is identical to the trademark in which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the Respondentís domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <superfares.com> be transferred to the Complainant.
Hon. Sir Ian Barker
Dated: August 21, 2001