WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allegro Resorts Corporation and Jack Tar Village Resorts, Inc.
Bucona Business Alliance
Case No. D2002-0323
1. The Parties
The Complainants in this Administrative proceeding are Allegro Resorts Corporation, located at Trident Trust Company (BVI), Ltd. P.O. Box 146, Road Town, Tortola, British Virgin Islands, and Jack Tar Village Resorts, Inc., having its domicile and principal offices at Corporation Trust Center, 1209 Orange Street, City of Wilmington, County of New Castle, Delaware, United States of America.
The Complainants are represented by: Mary Fernández Rodriguez and Sarah De Leon Perelló, from Headrick Rizik, Alvarez & Fernandez domiciled at Avenida Gustavo Mejía Ricart esquina Avenida Abraham Lincoln, Torre Piantini, Piso 6, Santo Domingo, Distrito Nacional, Dominican Republic.
The Respondent is Bucona Business Alliance, of Ambergris Caye, San Pedro Town, Belize.
2. The Domain Names and Registrar
The Domain names at issue are <jacktar.com>, <allegroresort.com>,<allegro-resort.com>, <allegro-resorts.com>, <allegrovacationclub.com>, <allegrovacationclub.net>, <allegrovacationclub.org> and <allegro-vacation-club.com> (the "disputed domain names").
The registrar is eNom Inc.
3. Procedural History
The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Name and Numbers ("ICANN") on October 24, 1999, (" the Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999, ("the Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 ("the Supplemental Rules").
The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by email on April 4, 2002, and in hardcopy on April 10, 2002.
A copy of the Complaint, together with the cover sheet as prescribed by the Supplemental Rules, has been transmitted to the Respondent on April 4, 2002, by e-mail and by courier, but there is no evidence of receipt submitted to the Panel.
However, the Center sent an acknowledgment of the Complaint by emails to Complainants and to the Respondent. Administrative contact for Respondent acknowledged receipt by email of April 10, 2002 "in disagreement of the subject case" which indicates that Respondent knew the subject matter of the case. Furthermore, in a email of April 5, 2002, to prior counsel of Complainants, Respondent complained of the change of representation to the Dominican Counsel.
The Center requested eNom, Inc. to confirm the registration of the disputed domain names and their contact details.
On April 12, 2002, eNom, Inc. confirmed that the disputed domain names were registered in the name of Bucona Business Alliance at the address mentioned above.
On April 15, 2002, the Center issued to the Respondent and Complainants the Notification of Complaint and Commencement of Administrative Proceeding.
The above referred emails to Complainants and to the Center reveal that Respondent was actually aware that this Complaint had been filed, however, the Respondent has not answered the Complaint and is in default.
Having reviewed the communications records in the case file, the Panel finds that WIPO Center has discharged its responsibility under Paragraph 2 (a) of the Uniform Rules "to employ reasonable available means calculated to achieve actual notice of Respondent".
On May 15, 2002, the Center invited Miguel B. O’Farrell to serve as a sole Panelist in this Administrative Proceeding. Having received the Panelist’s Declaration of Impartiality and Independence, the Center issued a Notification of Appointment of Administrative Panel and set a decision date, with the Panelist’s deadline for issuing a decision of May 29, 2002.
4. Factual Background
The Complainant's hotels services consist of four different vacation experiences sold under the brand names Caribbean Village, Allegro Resort, Royal Hideaway and Jack Tar Village.
Allegro Resorts Corporation owns registered trademarks for "ALLEGRO", "ALLEGRO RESORTS ALL INCLUSIVE", "ALLEGRO RESORTS", "ALLEGRO VACATION CLUB", "ALLEGRO RESORTS & SUN", "ALLEGRO VACACIONES TOTALES", "ALLEGRO MORE PLACE TO GO", "ALLEGRO MORE WAYS TO ENJOY", "ALLEGRO RESORTS CORPORATION" as well as many variations and combinations using other words and designs in conjunction with the ALLEGRO trademark and ALLEGRO RESORTS trademark in several countries such as: Albania, Algeria, Argentina, Aruba, Austria, Benelux, Brazil, Canada, Chile, China, Colombia, Costa Rica, Croatia, Czech Republic, Denmark, Dominican Republic, Egypt, European Community, Finland, France, Germany, Hungary, Italy, Kenya, Mexico, Morocco, Poland, Portugal, Romania, Slovak Republic, Spain, Switzerland, Tunisia, Turks & Caicos Islands, Ukraine, United Kingdom, United States, Uruguay, Venezuela, and Yugoslavia.
Jack Tar Village Resorts, Inc. owns registered trademarks for "JACK TAR VILLAGE", "JACK TAR", "JACK TAR EDEN BAY", as well as many variations including designs in conjunction with the mentioned trademarks, in Argentina, Brazil, Canada, Dominican Republic, European Community, France, Germany, Jamaica, Morocco, St. Kitts-Nevis, Spain, United Kingdom and United States of America.
<allegroresorts.com> is the official WebSite of the Complainants and is widely used by Internet users receiving during the period from April 2001, to March 2002, 1.574.809 visits. (Usage Statistics generated by Webalizer Version 2.01)
Web Macon is a web hosting company hired by Mr. Marcel Zakrzeiwcx, a now former employee of Allegro Resorts Corporation to develop the Complainants’ WebSite. Web Macon has originally filed the domain names <jacktar.com> on May 6, 1996, <allegroresort.com> on October 27, 1998, <allegro-resort.com> on February 18, 1999, <allegro-resorts.com> on February 10, 2001, <allegrovacationclub.net> on April 7, 2001, and <allegrovacationclub.org on April 7, 2001> and apparently acquired the domain names <allegrovacationclub.com> and <allegro-vacation-club.com>.
On July 12, 2001 all the disputed domain names were transferred from Web Macon to Respondent Bucona Business Alliance represented by Mr. Sam Kroyer.
5. Parties’ Contentions
Allegro Resorts Corporation contends that it is the largest and fastest-growing all-inclusive resort company in the world and that in a 1997, survey by prestigious HOTELS magazine, Allegro Resorts Corporation was ranked among the world’s top 100 hotel chains and among the Caribbean’s top 20 power players.
Complainants assert that the trademarks "ALLEGRO RESORT" and "JACK TAR" are well known worldwide and that their reputation is such that they can be considered notorious trademarks in the sense of Article 6bis of the Paris Convention.
The Complainants contend that each of the three elements of paragraph 4 (a) of the Uniform Policy are applicable to this case, as follows:
a) The Complainants’ trademarks and tradenames are identical to the disputed domain names:
i) The tradename and mark ALLEGRO RESORT as well as the domain names <allegroresorts.com>, are identical to the domain names <allegro-resort.com>,<allegro-resorts.com> and <allegroresort.com>.
ii) The tradename and trademark JACK TAR are identical to the domain name <jacktar.com>
iii) The mark ALLEGRO VACATION CLUB is identical to the domain names <allegrovacationclub.com>,<allegro-vacation-club.com>, <allegrovacationclub.net> and <allegrovacationclub.org>.
b) The Respondent has no rights or legitimate interest in respect of the disputed domain names:
i) Web Macon and Mr. Herbert Garling the former owners of the disputed domain names, were the service provider of the Allegro Resorts Corporation. The Complainants never authorized Web Macon or its employee, Mr. Herbert Garling, to register any of the disputed domain names under a registrant other than Allegro Resorts Corporation and did not authorize Web Macon to transfer the disputed domain names to any third party, including Sam Kroyer and Bucona Business Alliance.
ii) Bucona Business Alliance who is the current owner, nor its representative, Mr. Sam Kroyer nor the previous registrants have ever been commonly or publicly known by the names ALLEGRO RESORTS, ALLEGRO VACATIONS CLUB or JACK TAR;
iii) Web Macon was an Internet service provider and web management of the Complainants and as such, they were afforded an implied power of attorney to act on behalf of the Complainants, but never for Web Macon and/or its employee Mr. Herbert Garling´s profit.
iv) The Respondent made an unfair use of the disputed domain names by (i) offering for sale the domain names to the Complainants and to the public for an amount that exceeded the cost involved, (ii) by redirecting the domain names <jacktar.com> and <allegroresort.com> to a direct competitor, Karisma Hotels site and (iii) by currently posting a defamatory web page against the Complainants accessed through all the disputed domain names.
c) The domain names have been registered and used in bad faith.
i) Web Macon and Herbert Garling the previous registrant, filed the disputed domain names in bad faith to trade upon the goodwill the Complainants have developed in their marks, otherwise they should have registered the domain names in the name of their then client.
ii) Web Macon retained the disputed domain names after the termination of the relation with the Complainants and refused to transfer the disputed domain names.
iii) Web Macon alleged that Herbert Garling purchased the domain names <Allegrovacationclub.com> and <Allegro-vacation-club.com> from a third party and therefore claimed to the Complainants the reimbursement of Mr. Garling´s expenses. Web Macon never submitted evidences of such a purchase.
iv) The original registrant or registrants and Respondent’s bad faith is established by their pattern of conduct in registering first and then buying some of the eight domain names containing the Complainants’ marks.
v) Bucona Business Alliance knew or should have known of the registration and use of the marks prior to the acquisition of the disputed domain names.
vi) The Respondent and the previous registrant or registrants acted in bad faith upon the registration of the disputed domain names since they should have known that the commercial names and trademarks ALLEGRO, ALLEGRO RESORTS, ALLEGRO VACATION CLUB and JACT TAR are notorious marks.
vii) The Respondent is currently using all the disputed domain names in question in a defamatory web page addressed to Allegro-Occidental Resorts Guests and Non Guests and where they even offer to sell the disputed domain names to the public.
viii) Bucona Business Alliance redirected the disputed domain names to the web page of a direct competitor, Karisma Hotels & Resorts, diverting potential consumers of JACK TAR’s hotel.
(ix) The disputed domain names were offered for sale to the public and to complainants, in excess of out of pocket expenses.
Finally, Complainants petition that the disputed domain names be transferred to Allegro Resort Corporation.
The Respondent did not file a response to the Complaint and on May 7, 2002, the Center issued to both parties a Notification of Respondant Default.
6. Discussion and Findings
On the basis of Paragraph 15 (a) of the Rules, and the Respondent’s default, the Panel shall decide the case on the basis of the statements and documents submitted by the Complainants in accordance with the Policy and the Rules.
Pursuant to paragraph 4 (a) of the Policy, the Complainants must prove each of the following three elements:
i) The Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainants has rights; and
ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
iii) The domain name has been registered and is being used in bad faith.
Identity or similarity
The Complainants’ trademarks, tradenames and domain name <allegroresorts.com> basically form the disputed domain names.
In addition, some of the disputed domain names specially consist of misspellings of the trademarks and commercial names and of the domain name which identified the official web site of the Complainants (e.g. <allegroresort.com>) and also variations, which include hyphens (e.g. <allegro-resort.com>, <allegro-resorts.com> and <allegro-vacation-club.com>).
Consequently, the Panel finds that the domain names <jacktar.com>, <allegrovacationclub.com>, <allegrovacationclub.net>, <allegrovacationclub.org> and the variations <allegroresort.com>, <allegro-resort.com>, <allegro-resorts.com> and <allegro-vacation-club.com> are basically identical to the Complainants’s trademarks and tradenames or otherwise confusingly similar therewith.
Lack of rights or legitimate interest of the Respondent in respect of the domain names
The Respondent has failed to submit evidence showing that it has any right or legitimate interest in respect of the domain names at issue.
From the evidence submitted by the Complainants and which has not been refuted by the Respondent it is clear to the Panel that Bucona Business Alliance acquired the disputed domain names from Web Macon, knowing of the existence of the Complainants’trademark rights and its active WebSite <www.allegroresorts.com>. .
Moreover, the Panel finds clear relationship between the original domain names registrant Web Macon and Bucona Business Alliance. In this connection, Mr. Sam Kroyer, representative for Bucona Business Alliance, sent an email on November 29, 2001, to Mr Allan Pilson, at the time acting for Complainants, in which he requested that a check for US$ 10,391.92 be made out to his name and sent to the offices of Web Macon in Miami.Florida, for the transfers of the disputed domain names.
In view of the above, the Panel finds that Bucona Business Alliance is not a bona fide third party and therefore has no rights nor legitimate interest in the disputed domain names.
Registration and use in bad faith
Bad faith registration
According to Paragraph 4 (b) (i) of the Policy, the Panel finds that the original and that the current domain names registrants have shown in the following situations that they filed and/or acquired the disputed domain names in bad faith.
a) Web Macon registered the disputed domain names in its own name rather than in the name of its former client and rightful owner of such domain names.
b) When the Complainants refused to pay the valuable consideration requested by the Respondent in exchange for the disputed domain names assignments, Web Macon assigned the disputed domain names to the Respondent.
c) The Respondent, Bucona Alliance Business offered to sell the disputed domain names to the Complainants initially for US$ 9,862.93 and later increased the price to US$ 16,200.00. These amounts are clearly in excess of the costs of registration and assignment.
d) The Respondent used the disputed domain names to post defamatory contents against the Complainants.
e) The Respondent by email of April 5, 2002, also threatened to send a notification to 15,000 travel agents and tour operators.
In view of the above, the Panel finds that the disputed domain names were registered and acquired with the aim of selling or transferring them to the Complainants for a profit.
Bad faith use
Pursuant Paragraph 4 (b) (iv) of the Policy, the Panel finds that the original and current registrants of the disputed domain names have used the domain names with the intention of obtaining an unrightful profit from the goodwill and notoriety of the Complainants’ trademarks and services.
At the date of this decision the disputed domain names are not active. However, the Complainants submitted sufficient evidence to prove that both original and current domain names registrants registered and used the domain names in bad faith.
a) The Complainants have submitted copies of several e-mail communications received from the former and current domain name registrants and printouts of the disputed domain names in which the Respondent offered the disputed domain names for sale.
b) Bucona Business Alliance, redirected the domain names <jacktar.com> to the WebSite of a direct competitor of Complainants (Karisma Hotel & Resorts), which is also the client of Web Macon (the original registrant of the disputed names). Bucona Business Alliance ceased to redirect the Complainants’ domain names upon receipt of a cease and desist letter sent by the Complainants’ attorneys.
c) The Respondent has used the disputed domain names in order to defame the Complainants up to the commencement of this Administrative proceeding.
In view of the above, the Panel understands that the circumstances described in paragraph 4 (b) of the Policy were widely proved by the Complainants and were not denied by the Respondent. Therefore, the Panel is led to the conclusion that the disputed domain names were not only registered but also used in bad faith.
The Panel decides that the Complainants have proved each of the three elements of paragraph 4 (a) of the Policy and pursuant to paragraph 15 (a) of the Rules, the Panel requires that the Registrar eNom, Inc. transfers the domain names <jacktar.com>, <allegroresort.com>, <allegro-resort.com>, <allegro-resorts.com>, <allegrovacationclub.com>, <allegrovacationclub.net>, <allegrovacationclub.org> and <allegro-vacation-club.com> to Allegro Resorts Corporation.
Miguel B. O’Farrell
Dated: May 29, 2002