Complainant is Iberostar Hoteles y Apartamentos, S.L, Palma de Mallorca, Balearic Islands, of Spain, represented by IURISTEC, S.L., Spain.
Respondent is Roger Schoefert, Fuersaumstrasse, Bayern, of Germany.
The disputed domain names <bouganville-playa.com>, <ciudad-blanca.com>, <fuerteventura-park.com>, <las-dalias.com>, <palace-fuerteventura.com> are registered with PSI-USA, Inc. dba Domain Robot.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2008. On October 22, 2008, the Center transmitted by email to PSI-USA, Inc. dba Domain Robot a request for registrar verification in connection with the disputed domain names. On October 23, 2008, PSI-USA, Inc. dba Domain Robot transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on November 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2008.
On November 13, 2008, in response to a request of the same date by Complainant for suspension of the administrative proceedings to permit the parties to explore possible settlement, the Center notified the Suspension of the administrative proceedings. Following a request by Complainant on November 28, 2008 to reinstate the administrative proceedings, on December 2, 2008, the Center notified the Recommencement of this proceeding. Therefore, the new deadline for receipt of the Response was December 20, 2008.
Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 23, 2008.
The Center appointed Jeffrey D. Steinhardt as the sole panelist in this matter on January 20, 2009. 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.
The disputed domain names were registered on February 16, 2007. None resolve to active websites at this time.
Complainant owns the following trademarks registered in Spain:
Registration Nº 2.559.149, BOUGANVILLE PLAYA, Class 43, granted February 10, 2004;
Registration Nº 1.982.330, IBEROSTAR FUERTEVENTURA, Class 42, granted October 7, 1996;
Registration Nº 2.076.032, IBEROSTAR FUERTEVENTURA PALACE, Class 42, granted August 5, 1997;
Registration Nº 1.015.253, APARTAMENTOS CIUDAD BLANCA, Class 42, granted March 17, 1983;
Trademark Nº 2.559.151, IBEROSTAR LAS DALIAS, Class 43, granted February 10, 2004.
In light of the Panel's disposition of this Complaint, it is unnecessary to describe Complainant's contentions and factual averments in detail.
Complainant alleges that Iberostar Hoteles y Apartamentos is a holiday hotel chain founded in Palma de Mallorca in 1986. Complainant avers that the hotel chain owns over a hundred hotels in 15 countries.
Complainant's Spanish trademark registrations are alleged to each correspond with a well-known property of Complainant.
With respect to each of the disputed domain names, Complainant contends that they are identical or confusingly similar to Complainant's registered trademarks, that Respondent has no rights or legitimate interests in the disputed domain names, and that Respondent registered and is using the disputed domain names in bad faith.
The Complaint attaches screen shots from July 2008 of each of the websites to which the disputed domain names at the time routed. Complainant avers that they display the logos and names of Complainant and its guest properties, purporting to offer booking facilities for Complainant's hotels and apartments without affiliation or authorization by Complainant.
Therefore, Complainant requests transfer of the five disputed domain names.
Respondent did not reply to Complainant's contentions. There is, however, relevant correspondence by Respondent as described below.
In apparent response to the electronic notification of Complaint received by Respondent of UDRP proceedings against him, on November 11, 2008, Respondent sent the Center an email stating in relevant part that “we are NOT interested in any dispute concerning these domains! – and we are not interested in these domains anymore. . . . You are free to transfer these domains to be used by IBEROSTAR.” However, Respondent's email carried a “Re” line that referred not to the presently disputed domain names and case number in this proceeding, but instead, to other domain names and a separate UDRP proceeding filed with the Center against Respondent.
Consequently on January 30, 2009, the Panel issued Procedural Order No. 1 to request clarification whether, in its November 11, 2008 email, “Respondent intended to permit transfer to Complainant in the present case (being Case No. D2008-1604).”1
In reply to Procedural Order No. 1, Respondent emailed the Center January 30, 2009, listing the five disputed domain names and case number for the present proceeding (as well as the other case number and its disputed domain names) . The body of Respondent's email reads as follows:
“We opened all above mentioned Domains for provider change –
Please take these domains to finish this case finally.
“As different times mentioned we are not interested anymore.
We never used them active. It was a part of a promotion program for our IBEROSTAR sales in 2009.”
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Ordinarily, a complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
As described above, Respondent wrote to the Center indicating that the Center was “free to transfer these domains to be used by IBEROSTAR.” Through Respondent's email response to Procedural Order No. 1, it is now clear that Respondent intended this permission to apply to the five disputed domain names in the present case.
Having written the quoted emails after receiving the Complaint, the Panel finds that Respondent unilaterally consented to the remedy sought by Complainant.
Under these circumstances, as detailed below, it is unnecessary for the Panel to determine whether Complainant has established its entitlement to transfer under paragraph 4(a) of the Rules. E.g., The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 (where complainant sought transfer of the disputed domain name, and Respondent consented to transfer, paragraph 10 of the Rules permit a panel to proceed immediately to make order for transfer without determination of elements of paragraph 4(a)), citing Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207.
In Williams-Sonoma, supra, the panel explained:
Because Respondent has consented to the relief requested by Complainant, it is not necessary to review the facts supporting the claim. I am left to decide the appropriate procedure to conclude the case in a situation not directly addressed by the Rules. Several provisions provide guidance. Rule 10(a) gives the panel the discretion to conduct the proceeding in such manner as it deems appropriate under the Policy and the Rules. Rule 10(c) requires the Panel to “ensure that the proceeding takes place with due expedition.” Rule 12 permits the Panel to require further statements from the parties. Rule 17 requires the Panel to terminate the proceeding when the parties have agreed to a settlement.
Here, although Respondent has consented to the requested relief, the parties have not agreed to a formal settlement and terminating the proceeding would not effect the parties intent. Under Rules 10 and 12, the Panel appears to have authority to delay the decision and permit the parties time to submit confirmation that they have agreed to a settlement. That procedure, however, would delay this proceeding and impose unnecessary cost on both the parties and WIPO. Under the circumstances, I believe the better course is to enter an order granting the relief requested by the Complainant so that the transfer may occur without further delay.
Like the panel in Williams-Sonoma, this Panel finds Respondent's unilateral consent means that the disputed domain names can be transferred to the Complainant without determination of the elements of paragraph 4(a). See also Valero Energy Corporation , Valero Refining & Marketing Company v. RareNames, WebReg, WIPO Case No. D2006-1336; Nutri/System IPHC, Inc. v. Jeffrey Goebel/ DomainsByproxy, Inc., WIPO Case No. D2008-0471.
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, <bouganville-playa.com>, <ciudad-blanca.com>, <fuerteventura-park.com>, <las-dalias.com>, <palace-fuerteventura.com> be transferred to Complainant.
Jeffrey D. Steinhardt
Dated: February 2, 2009
1 Procedural Order No. 1 provided:
“Pursuant to Paragraph 10 and 12 of the Rules, the Panel hereby makes the following request and order:
“It appears that Respondent expressed his intention to permit the transfer of the disputed domain names in this proceeding to Complainant, by Respondent's electronic mail letter to the Center dated November 11, 2008. Although Respondent's November 11, 2008 email referred to WIPO Case No. D2008-1603 in the caption, the email used the name “Iberostar,” Complainant in the present case ( WIPO Case No. D2008-1604), and not the complainant in WIPO Case No. D2008-1603.
“Respondent is requested to submit to the Center, the Panel and Complainant clarification of whether Respondent intended to permit transfer to Complainant in the present case (being WIPO Case No. D2008-1604). Respondent shall do so within three (3) days by (i.e. by February 4, 2009) of the forwarding of this Procedural Order.
“If there is no response by Respondent to this Procedural Order within the time provided, the Panel shall construe Respondent's electronic mail letter of November 11, 2008 to the Center as Respondent's consent to transfer to Complainant the five domain names under consideration in WIPO Case No. D2008-1604.”