WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Irotama S.A. v. Richard Bonn
Case No. D2010-1784
1. The Parties
The Complainant is Irotama S.A. of Bogota, D.C., Colombia, represented by Triana, Uribe & Michelsen, Colombia.
The Respondent is Richard Bonn of Arizona, United States of America.
2. The Domain Names and Registrar
The disputed domain names <irotamacolombia.com>, <irotamahotel.com>, <irotamaresort.com>, <irotamasantamarta.com> ("Disputed Domain Names") are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2010. On October 25, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Names. On October 26, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 29, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 29, 2010.
The Center verified that the Complaint together with the amended 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 November 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2010.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on December 8, 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.
4. Factual Background
The Complainant operates the Irotama Hotel near Santa Marta, Colombia. The Complainant has operated the hotel for many years and in 1994 it secured registration of the IROTAMA trade mark in Colombia. The Complainant has maintained a presence on the Internet for the last 12 years and currently operates the website located at “www.irotama.com”.
The Respondent was among a group of people who made a reservation to stay at the Complainant's Irotama Hotel in 2009. The Respondent was not satisfied with the hotel and accordingly checked out after one night, despite having paid for numerous nights. The Respondent subsequently demanded a refund for the unused portion of his booking. The Complainant was not able to process the refund as the reservation was made through a travel agency, but the Complainant asserts that it made arrangements for the refund to be made. The Respondent's correspondence contradicts this assertion. However, the Panel makes no comment on this issue, as it is not relevant to the present proceedings.
On 24 May 2010, the Complainant became aware that the Respondent had registered the Disputed Domain Names, and that he was using the Disputed Domain Names to host websites devoted exclusively to providing negative information about the Complainant's hotel. The Complainant sent a cease and desist letter to the Respondent on September 9, 2010.
The Respondent proceeded to send threatening emails to the Complainant, requesting money to transfer the Disputed Domain Names. In his first email, the Respondent demanded US$21,000. In subsequent emails, the Respondent demanded US$10,000, threatening that if the amount was not paid he would "launch an aggressive campaign", which will "affect the resort for many years".
5. Parties’ Contentions
The Complainant's contentions can be summarised as follows:
(a) The Disputed Domain Names are confusingly similar to the Complainant’s IROTAMA mark. The distinctive element of each of the Disputed Domain Names is the Complainant’s IROTAMA mark and the remaining elements are generic expressions which describe the Complainant’s business and increase the likelihood of confusion between the Disputed Domain Names and the Complainant’s IROTAMA mark;
(b) The Respondent does not have legitimate rights or interests in the Disputed Domain Names. The Respondent registered the Disputed Domain Names for the purpose of making defamatory comments about the Complainant's business, to damage the Complainant's reputation, and to obtain money from the Complainant through extortion;
(c) The Complainant has not authorised the Respondent's use of the IROTAMA trade mark;
(d) The Respondent knew of the Complainant's rights in the IROTAMA mark at the time of registering the Disputed Domain Names;
(e) The Disputed Domain Names were registered in bad faith with a view to damaging the reputation of the Complainant and for extorting money from the Complainant. Further, the Respondent is using the Disputed Domain Names in bad faith, as evidenced by the fact that he is posting defamatory and damaging statements about the Complainant’s business on the websites located at the Disputed Domain Names; and
(f) The Respondent has previously registered the <irotama.co> domain name in similar circumstances, and the Complainant has filed a separate complaint for recovery of this domain name.
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000 0403; Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the Disputed Domain Names are 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 Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the IROTAMA trade mark on the basis of the two Colombian trade mark registrations owned by the Complainant for IROTAMA.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case “.com” should be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
Each of the Disputed Domain Names incorporates the Complainant's IROTAMA mark in its entirety. The only difference between each of the Disputed Domain Names and the Complainant's IROTAMA mark is the inclusion of the words "colombia", "hotel", "resort" and "santamarta" as descriptions. It is well-established that in cases where the distinctive and prominent element of a disputed domain name is the complainant's mark and the only addition is a generic term that adds no distinctive element, such an addition does not negate the confusing similarity between the disputed domain name and the mark. See Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service, WIPO Case No. D2010-0088.
The Panel finds that "irotama" is the distinctive and prominent component of each of the Disputed Domain Names and the addition of the words "colombia", "hotel", "resort" and "santamarta" does nothing to distinguish the Disputed Domain Names from the Complainant's trade mark. Given that the Complainant conducts business in the hotel/resort industry near Santa Marta in Columbia, the "colombia", "hotel", "resort" and "santamarta" components of the Disputed Domain Names if anything serve to increase the likelihood that consumers will be misled into thinking that the Disputed Domain Names are somehow associated with the Complainant.
The Panel accordingly finds that the Disputed Domain Names are confusingly similar to the IROTAMA mark in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that there is no evidence to show that the Respondent has any rights in any trade marks or service marks which are identical, similar or related to the Disputed Domain Names. Therefore, the Panel will assess the Respondent's rights in the Disputed Domain Names (or lack thereof) based on the Respondent's use of the Disputed Domain Names in accordance with the available record.
The Panel accepts that the Complainant has not authorised the Respondent to use the IROTAMA trade mark. The Panel further accepts that the Respondent has not become commonly known by the Disputed Domain Names.
Accordingly the only way for the Respondent to acquire rights or legitimate rights in the Disputed Domain Names for the purposes of 4(a)(ii) of the Policy would be through use of the Disputed Domain Names for legitimate non-commercial purposes or in connection with bona fide offerings of goods or services.
At the time of the Complaint, the Disputed Domain Names resolved websites that contained many derogatory statements about the Complainant's Irotama Hotel. The websites did not contain any information that would suggest that the sites were being used for legitimate non-commercial purposes. It is accepted that the Respondent was aware of the Complainant and its marks when registering the Disputed Domain Names. In fact, by the Respondent's own admission, he is using the Disputed Domain Names to publicise his grievances with the Complainant's Irotama Hotel following what he considered to be an unsatisfactory stay at the hotel and subsequent disagreements regarding a refund. Using a domain name to intentionally harass, criticise, or tarnish the reputation of another constitutes unfair use, and cannot amount to a bona fide offering of goods or services: Council for Refractive Surgery Quality Assurance a nonprofit California corporation (USAEyes) v. Brent Hanson, NAF Case No. FA0812001237910; and Diageo pls v. John Zuccarini, Individually and t/a Cupcake Patrol, WIPO Case No. D2000-0996.
The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Names.
C. Registered and Used in Bad Faith
Evidence of bad faith includes actual or constructive notice of a well known trade mark at the time of registration of a domain name by a respondent. See Samsonite Corp. v. Colony Holding, NAF Case No. FA 94313. In the present case it is clear that the Respondent, having stayed at the hotel prior to registering the Disputed Domain Names, was aware of the Complainant's IROTAMA trade mark at the time of registering the Disputed Domain Names.
It is also relevant to the issue of bad faith that the Respondent offered to sell the Disputed Domain Names to the Complainant for an amount exceeding the Respondent’s out of pocket expenses in relation to the Disputed Domain Names. It is well established that the offer to sell a domain name in excess of the out of pocket expenses of the respondent can be compelling evidence of bad faith. See The Board of Regents of the University of Nebraska v. Bill Saedlo, WIPO Case No. D2000-0154; and Adamovske Strojirny v. Tatu Rautiainen, WIPO Case No. D2000-1394.
The Respondent has been very clear, in his correspondence with the Complainant that his intention in registering and using the Disputed Domain Names is to launch a "war" against the Complainant. It is clear, from statements made by the Respondent such as "How long do you want this to continue? Do I really need to move some more negative sites to the top of Google?", that the Respondent registered and is using the Disputed Domain Names for the sole purpose of disrupting the legitimate business of the Complaint.
In the circumstances, the Panel finds that it is clear that the Respondent has registered and is using the Disputed Domain Names in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <irotamacolombia.com>, <irotamahotel.com>, <irotamaresort.com>, <irotamasantamarta.com> be transferred to the Complainant.
Dated: December 20, 2010