The Complainant is Barceló Corporación Empresarial, S.A (Barceló Group) of Palma de Mallorca, Spain, represented by Herrero & Asociados, S.L., Spain.
The Respondent is Zapotel, Inc. of Winter Park, Florida, United States of America.
The disputed domain name <barcelo-resort-huatulco.com> is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2010. On January 19, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On January 19, 2010, Tucows Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on January 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2010. The Response was filed with the Center on January 26, 2010.
The Center appointed Torsten Bettinger as the sole panelist in this matter on February 5, 2010. 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 Complainant is a member of the Barceló Group which started as a small transport company in Majorca, Spain, in 1931 and which is now one of the largest hotel groups in the world, with more than 45,000 rooms in 15 countries, including Mexico. The first Barceló hotel, the Barceló Pueblo Palma, opened in Majorca in 1962. The hotel Barceló Huatulco was purchased by the Barceló Group in 1999.
The Complainant is the proprietor of registered trademarks comprising the word “Barceló” either alone or with descriptive words, such as BARCELO HOTELS, BARCELO HOTELS & RESORTS and BARCELO HOTELS USA in many countries. The trademark BARCELO has been previously found to be distinctive of the Complainant and well-known in the hotel and tourism business (see Quiroocan, S.A. de C.V. v. ZJ, WIPO Case No. D2005-1310; Barceló Corporación Empresarial, S.A. v. KPYR / Svetlana Zubovich, WIPO Case No. D2005-1335; Quiroocan, S.A. de C.V. (Barceló) v. Media Insights, WIPO Case No. D2006-0801). The Complainant registered the domain name <barcelo.com> in 1996, before domain names containing accents became available.
Moreover, the Complainant (through one of its companies in Mexico) owns the Mexican Trademark No. 901721 BARCELO HUATULCO BEACH & RESORT, which was registered on September 28, 2005 in international class 42.
The Respondent has registered the domain name <barcelo-resort-huatulco.com> on June 16, 2000. The disputed domain name is currently used in connection with a website providing information on and booking services for the Complainant's Barceló Huatulco Beach & Resort as well as links to the Respondent's website at “www.zapotel.com” providing links and information on further hotels in Mexico.
By email dated July 8, 2009, the Complainant requested that the Respondent transfers the disputed domain name to the Complainant on the basis of the Complainant's trademark rights in the mark BARCELO. The Respondent replied to the request with an email dated July 8, 2009 and refused the transfer.
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant argues that the disputed domain name incorporates the distinctive part of the Complainant's trademarks all based on BARCELO in its entirety and that therefore the domain name is confusingly similar to these trademarks.
In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. In support of this assertion the Complainant states that:
- The Respondent is neither an agent nor a licensee of the Complainant and therefore has no right in the use of the Complainant's trademarks or in the application for any domain name incorporating the trademark;
- The Respondent is not using the disputed domain name in a noncommercial or fair way, since the Complainant has neither authorized the Respondent to advertise its resorts on the Internet nor to offer rooms through its site; and
- there is no evidence that the Respondent has been commonly known by the disputed domain name and the Respondent has not acquired any trademark or service mark rights in the disputed domain name.
In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant asserts that:
- the Respondent is trying to attract Internet users to its webpage, by creating confusion in respect of the BARCELO trademarks; and
- the Respondent has a clear purpose of taking advantage of the Complainant's business.
The Respondent explains that it has registered the domain name eleven years ago and that it has been in a contractual business agreement with the Complainant those entire eleven years.
According to the Respondent, the website in question has always been known to the Complainant sales staff and has been used only in order to send business to the Barceló resort in Huatulco.
As evidence for this contractual business, the Respondent provides an email exchange in 2009 with a sales manager of the Complainant asking the Respondent to update the pictures and information displayed on the website available at the disputed domain name.
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah‚ WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D200l-0505).
The disputed domain name wholly incorporates the Complainant's trademark BARCELO and incorporates almost completely the Complainant's trademark BARCELO HUATULCO BEACH & RESORT and therefore is confusingly similar to the Complainant's marks. Furthermore, it is well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).
The Panel thus finds that the disputed domain name <barcelo-resort-huatulco.com> is confusingly similar to the Complainant's marks and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is the consensus view among panelists that if a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show such a right or legitimate interest, by for example providing proof of one of the three circumstances under paragraph 4(c) of the Policy, then the respondent is considered to lack a right or legitimate interest in the domain name.
The Complainant asserted that the Respondent has neither a license nor any other permission to use the Complainant's trademark BARCELO. In view of the submitted supporting documents, the Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name which wholly incorporates the Complainant's distinctive trademark BARCELO.
The Respondent has not provided sufficient evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name. The Respondent stated that the parties have been in a contractual relationship for eleven years and that last year one of the Complainant's employees asked the Respondent by e-mail to update pictures and content of the website available at the disputed domain name. The Panel does not consider this e-mail communication to be evidence of a contractual relationship between the parties. The Respondent did not provide a copy of a contract or any other evidence for its contentions.
Furthermore, the Respondent can not rely on own rights or legitimate interests in the disputed domain name based on a bona fide offering of goods and services prior to the notice of the dispute.
Paragraph 4(c)(i) of the Policy provides that a use of a domain name is legitimate if, prior to commencement of the dispute, the respondent used the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services.
The Panel is aware that there are different views regarding the question of the conditions under which authorized or non-authorized third parties have a legitimate interest to use a trademark as a domain name in identical form or with the addition of descriptive elements.
In the majority view, first put forward in the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the use of a trademark as a domain name by a third party is only to be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c)(iii) of the Policy if the following conditions are satisfied:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- the site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents;
- the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
The factors developed by the Oki Data panel have been adopted by a number of UDRP panels (See Ferrari S.P.A., Fila Sport S.P.A., v. Classic Jack, WIPO Case No. D2003-0085; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095) and have also been applied in cases where there was no contractual relationship between the complainant and the respondent (See Dr. Ing. h.c. F. Porsche AG. v. Del Fabbro Laurent, WIPO Case No. D2004-0481; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946).
This Panel follows the majority view put forward in the Oki Data case that a third party can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits the above identified requirements.
However, in the case before the Panel, the Respondent's conduct does not meet all the Oki Data criteria.
The website at the disputed domain name offers information and booking services for the Complainant's hotel. However, the Respondent does not disclose its relationship with the trademark owner but falsely suggests that the website is the Complainant's official site. The website at the disputed domain name contains statements like “Our 346 room five star resort is located right on the beach at Tangolunda Bay.”, “Relax in our spacious, comfortable and well furnished rooms with ice-cold air, mini-bar (stocked with bottled water, soft drinks, and beer) and private balcony with ocean view.” and “Our restaurants offer delicious Mexican and international cuisine, as well as domestic and imported drinks.” which falsely leads to the assumption that the Respondent is the owner of the hotel.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.
The Panel is also convinced that the Respondent registered and used the disputed domain name in bad faith.
The Complainant provided sufficient evidence that it owns trademark rights in the distinctive trademark BARCELO that predate the Respondent's domain name registration and that its trademarks are widely known in the tourist industry and more especially in the hotel business throughout the world.
It is clear that the Respondent was aware of the Complainant's Barceló Huatulco Beach & Resort and its rights in the BARCELO marks when it registered the domain name. Otherwise it would not have chosen a domain name almost identical to the name of the Complainant's resort in Mexico.
The Complainant contends that the Respondent is a competitor and registered the disputed domain name with the intention to attract, for commercial gain, clients to its website under the disputed domain name. Indeed, the Respondent's website contains a link directing Internet users to its booking services for the hotels apparently owned by the Respondent's company in Mexico. In the view of the Panel, this and the fact that the Respondent creates the impression that Internet users have accessed the Complainant's website, is sufficient for the finding that the Respondent, by using the disputed domain name, has intentionally attempted, for commercial gain, to attract Internet users to its website, by creating a likelyhood of confusion with the Complainant's mark as to the source of its website.
The Panel therefore concludes that also the requirement of paragraph 4(a)(iii) of the Policy has been met.
The fact, that the disputed domain name was registered as early as June 16, 2000 and the Complainant has filed its Complaint on January 18, 2010 (which is nearly 10 years after the registration of the disputed domain name) does not hinder a finding of bad faith under the Policy. As previous panels have found, the Policy does not contemplate a defense of laches, which some panels have found to be inimical to the Policy's purposes (cf. The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; FabJob Inc. v. Compana LLC, WIPO Case No. D2006-0610). Furthermore, even if the doctrine of laches would be applicable under the Policy, it would not hinder the Complainant to succeed in this proceeding as laches is an undue delay in asserting a legal claim which always depends on the knowledge of the other side's activity on which the legal claim is based. The Respondent has not provided evidence that the Complainant was aware of the registration of the disputed domain name and of the website available at the disputed domain name over a long period, which generally would be a condition for a finding of loss of rights under the doctrine of laches.
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 <barcelo-resort-huatulco.com> be transferred to the Complainant.
Dated: February 23, 2010