WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Levantur, S.A. v. Belize Domain WHOIS Service Lt
Case No. D2008-0858
1. The Parties
The Complainant is Levantur, Palma de Mallorca, Spain, represented by Landwell, PricewaterhouseCoopers, Spain.
The Respondent is Belize Domain WHOIS Service Lt, Belmopan, Belize.
2. The Domain Name and Registrar
The disputed domain name <bahiaprincipepuntacana.org> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2008. On June 5, 2008, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On June 5, 2008, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its 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 June 17, 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 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2008.
The Center appointed Knud Wallberg as the sole panelist in this matter on July 21, 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
(Dominica), in 1995 and is now the owner of several hotels primarily in and around the Caribbean including Gran Bahía Príncipe Punta Cana in Dominica.
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 form the information provider by the Complainant in the Complaint.
The domain name was first created on January 18, 2006.
5. Parties’ Contentions
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 Bahía and Príncipe 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 BAHIAPRINCIPE 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 Respondent has registered a domain name which is 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 “.org” and for the geographical identifier “Puntacana”, which only indicates the location of the hotel.
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 name in a legitimate or fair way, or is commonly known by the domain name in the market. The Respondent, has not registered any trademark which legitimates the use of the disputed domain name, does not have any type of identity or corporate name which is confusingly similar to the domain name 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 Puntacana” to identify itself on the
The Complainant further claims that the contested domain name has been registered and is 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 name for a website containing links to others websites offering, for example, hotel services i.e. the same services as the Complainant but without his consent. As Bahia Principe hotels can be found in the main tourist destinations of the world and the Complainant has carried out an enormous investment on advertising its hotels on the Internet, it is impossible to think that the Respondent did not know of the existence of the Complainant’s trademark and website, specially when the Complainant has 55 registered domain names – including <bahia-principe.com> and <bahiaprincipe.com> – which contain the words “bahía príncipe”.
Moreover the Respondent’s webpage has links to others websites offering, for example, hotel services of the type offered by the Complainant, which cannot have been fortuitous.
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 name is identical or confusingly similar to a trademark or service mark in which the Complainant 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.
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 there from 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 have 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 name and the Complainant’s mark, the addition of the geographic indicator “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 a hotel in the said location.
Also, the inclusion of the gTLD denomination “.org” shall be disregarded for the purpose of these proceedings.
The Panel finds that the disputed domain name is 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
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark.
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not rebutted this and the way the Respondent has been using the domain name (see below) does not support a finding of rights or legitimate interests.
In all the circumstances, the Panel concludes that the Respondent has no recognizable rights or legitimate interests in respect of disputed domain name.
Consequently the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy, with reference to paragraph 4(c) of the Policy, are also fulfilled.
C Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove the Respondent’s registration and use of the domain names in bad faith. Paragraph 4(b) of the Policy sets out, by way of example, the kind of evidence that may be put forward.
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 name. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a name which could attract Internet users in a manner that is likely to create confusion for the users of the Internet.
This is underlined by the fact that the disputed domain name is used for a website that contains information on and links to other sites that offer products or services some of which are similar to those offered by the Complainant and which are not related to those of the Complainant. The Panel therefore finds that the Respondent by registering and using the domain name, intentionally created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the domain name in dispute with the purpose of attracting Internet users to the website for commercial gain.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 name, <bahiaprincipepuntacana.org> be transferred to the Complainant.
Dated: July 23, 2008