WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Levantur, S.A. v. Media Insight
Case No. D2008-0774
1. The Parties
The Complainant is Levantur, S.A., of Spain, represented by Landwell-PricewaterhouseCoopers, Spain.
The Respondent is Media Insight, of United States of America.
2. The Domain Names and Registrar
The disputed domain names <bahiaprincipebavaro.com>, <bahiaprincipecoba.com> and <bahiaprincipejamaica.com> are registered with Network Solutions, LLC. The disputed domain name <bahiaprincipepuntacana.com> is registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2008. On May 19, 2008, and May 27, 2008, the Center transmitted by email to Network Solutions, LLC and Melbourne IT trading as Internet Names Worldwide a request for registrar verification respectively in connection with the domain names at issue. On May 19, 2008, Network Solutions, LLC, and on May 28, 2008, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center their verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 29, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 23, 2008.
The Center appointed Knud Wallberg as the sole panelist in this matter on July 15, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant commenced its operations in 1977 under the corporate name Levantur, S.A. The Complainant forms part of the Piñero Group, one of the leading Groups of the Spanish tourist industry (tour operators, hotel chains, brokers, transport companies).
The Complainant opened its first Bahía Príncipe hotel, Bahía Príncipe San Juan (the Dominican Republic) in 1995 and is now the owner of several hotels primarily in and around the Caribbean including Bahia Principe Bavaro, Bahia Principe Coba, Bahia Principe Jamaica and Gran Bahía Príncipe Punta Cana.
The Complainant owns the following trademarks:
- Spanish mixed trademark BAHIA PRINCIPE Clubs & Resorts in class 42, which is granted and valid as from August 20, 1998.
- US trademark BAHIA PRINCIPE Clubs & Resorts 42, which is granted and valid as from June 24, 2003.
The Complainant is also the holder of several domain names consisting of or containing the name BAHIA PRINCIPE including <bahia-principe.com> and <bahiaprincipe.com>.
The Panel has received no information on the Respondent apart from the information provided by the Complainant in the Complaint.
The disputed domain names were created between August 19, 2003 and November 8, 2004.
5. Parties' Contentions
1. The Complainant has an exclusive right to trade on the trademark BAHIA PRINCIPE. The first two words of the trademark BAHIA PRINCIPE Clubs & Resorts, are “Bahia” and “Principe” and the second part of the trademark only describes its type of business and lacks distinctiveness. For this reason, the Complainant operates on the Spanish and international markets under the abbreviated name BAHIA PRINCIPE and not with its full trademark name. More importantly than the effective registration of the trademark, the BAHIA PRINCIPE name should also be considered a well-known trademark which is worthy of protection as such.
The contested domain names are confusingly similar to the main part of the trademark registered and used by the Complainant and its own name, BAHIA PRINCIPE, except for the generic top-level “com” and for the geographical identifiers, which only indicate the location of the hotels.
2. The Complainant contends that in the present case, it is obvious that the Respondent does not come under any of the cases of legitimate rights established in the Policy given that it does not use the domain names in a legitimate or fair way, or is commonly known by the domain names in the market. The Respondent has not registered any trademark which legitimates the use of the disputed domain names, does not have any type of identity or corporate name which is confusingly similar to the domain names and has not been authorised to use the name by its legitimate owner.
Therefore, on the basis of the foregoing, the Respondent has no legitimate right or interest in using the term “Bahia Principe” to identify itself on the market.
3. The Complainant further claims that the contested domain names have been registered and are being used by the Respondent in bad faith with the only intention of obtaining an economic benefit by attracting confused users.
The Respondent uses the domain names for a website that appears to be the official website of the Complainant but which contains links to other web sites offering leisure and accommodation services which are competitive with the Complainant's business and which can only be damaging to the Complainant. The Respondent is using the disputed domain names, which are nearly identical to the Complainant's valid trademark, to redirect Internet users to a website offering services directly competitive with the Complainant's business.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) the domain name have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Complainant's registered trademark is a figurative mark. The dominant and distinctive word element in the mark is BAHIA PRINCIPE and the Panel is satisfied that the Complainant through the registrations has rights in the name BAHIA PRINCIPE. This is supported by the fact that BAHIA PRINCIPE is actually used intensively by the Complainant as its trade name and as part of its main websites “www.bahiaprincipe.com” and “www.bahia-principe.com”.
The contested domain name contains the abovementioned dominant and distinctive part of the Complainant's mark namely BAHIA PRINCIPE. In determining similarity between the domain names and the Complainant's mark, the addition of the geographic indicators (“Bavaro”, “Coba”, “Jamaica” and “Puntacana”) fails to alleviate confusion. On the contrary, there is a strong likelihood that Internet users will confuse the disputed domain name with the goods and services of the Complainant since the Complainant has hotels in the said locations.
Also, the inclusion of the gTLD denomination .com shall be disregarded for the purpose of these proceedings.
The Panel finds that the disputed domain names are confusingly similar to the Complainant's registered trademarks and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Respondent's Rights or Legitimate Interests
The Complainant states that it has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the Complainant's trademark or a name that is similar to this.
Further, the Panel is of the opinion that the Respondent's use of the domain names is clearly not a bona fide offering of goods or services. On the contrary, it seems clear from the content of the corresponding website, which inter alia through the use of the Complainant's registered figurative mark gives the impression that it is the official website for the Complainant's hotels in the respective locations and which at the same time offers goods that are in competition to the goods designed and offered by the Complainant, that the Respondent intentionally utilizes, without having the right to do so, the goodwill vested in the Complainant's trademarks.
The requirements of the Policy, paragraph 4(a)(ii), are also considered fulfilled.
C Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b)(i) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith.
Given the distinctive character of the Complainant's trade it is inconceivable to the Panel that the Respondent was not aware of the Complainant and the Complainant's activities when registering the contested domain names. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose names which could attract Internet users in a manner that is likely to create confusion for the users of the Internet.
This is supported by the fact that the content of the Respondent's website, quoted under paragraph B above, indicates that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion to the Complainant's trademark, cf. the Policy paragraph 4(b)(iv).
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <bahiaprincipebavaro.com>, <bahiaprincipecoba.com>, <bahiaprincipejamaica.com> and <bahiaprincipepuntacana.com> be transferred to the Complainant.
Dated: July 23, 2008