WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Desarrollo Marina Vallarta, S.A. DE C.V. v. Hector Rangel

Case No. D2015-2279

1. The Parties

The Complainant is Desarrollo Marina Vallarta, S.A. DE C.V. of Guadalajara, Mexico, represented by Holland & Knight LLC, United States of America.

The Respondent is Hector Rangel of Guadalajara, Mexico.

2. The Domain Name and Registrar

The disputed domain name <mayanmember.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2015. On December 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 21, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2016.

The Center appointed Mauricio Jalife Daher as the sole panelist in this matter on January 22, 2016. 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, Desarrollo Marina Vallarta, S.A. DE C.V., is a Mexican Company, being a resort hotel service provider in Mexico, offering timeshare programs at its properties.

The Complainant has registered each of the following marks with the Instituto Mexicano de la Propiedad Industrial (“IMPI”) in connection with its services: (the “MAYAN Formative Marks”):

A previous panel has determined that “the Complainant’s trademarks are well known in Mexico”. See Desarrollo Marina Vallarta, S.A. de C.V. v. Stacey Davis / Domains by Proxy, Inc., WIPO Case No. DCO2011-0031.

The disputed domain name was registered on July 7, 2015.

The disputed domain name currently resolves to a website parked by the Registrar, displaying pay-per-click links and offering the disputed domain name for sale.

The Respondent in this UDRP proceeding has been the respondent in two other proceedings involving the Complainant, Desarrollo Marina Vallarta, S.A. DE C.V. v. Hector Rangel, WIPO Case No. D2014-1856 and Daniel Jesus Chavez Moran, Desarrollo Marina Vallarta, S.A. DE C.V. v. Registrant of grupovidantamembers.com, C/O Private Ranger Limited / Hector Rangel, WIPO Case No. D2014-1857.

The Respondent did not file any Response or documents in accordance with this proceeding, as noted by this Panel.

5. Parties’ Contentions

A. Complainant

The Complainant states that disputed domain name <mayanmember.com> is identical or confusingly similar to the MAYAN Formative Marks in which the Complainant has rights.

The Complainant states that the disputed domain name <mayanmember.com> has been formed by (i) adopting the distinctive shared element of the its MAYAN Formative Marks; and (ii) adding wording which suggests services directed to the Complainant’s time share program members.

The Complainant states that the disputed domain name immediately conveys the false and misleading impression that the disputed domain name identifies a Complainant’s web address, and it is confusingly similar to the Complainant’s MAYAN Formative Marks.

The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons: (i) the Complainant has not authorized the Respondent to register or use the disputed domain name; (ii) the Respondent is not commonly known by the disputed domain name; (iii) neither MAYANMEMBER nor MAYAN MEMBER are registered marks in the Respondent’s name; and (iv) the Respondent has made no legitimate commercial or noncommercial use of the disputed domain name.

The Complainant states that the disputed domain name should be considered as having been registered and being used in bad faith for the following reasons: (i) the Complainant’s MAYAN Formative Marks were well-known prior to the date upon which the Respondent registered and used the confusingly similar disputed domain name incorporating the mark; (ii) the Respondent is using the disputed domain name to defraud the Complainant’s customers as the Respondent is using an email address reflecting the disputed domain name ([…]@mayanmember.com) to pose as the Complainant and to solicit fees; and (iii) the Respondent’s passive holding of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. Although this Panel is aware that the Respondent is not obliged to participate in a proceeding under the Policy, if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the Complainant. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name, <mayanmember.com>, reproduces the dominant or principal component of the MAYAN Formative Marks”, namely MAYAN, which are duly registered in Mexico, as evidenced by the Complainant. The addition of the word “member” to the disputed domain name is insufficient in itself to avoid confusing similarity, since it is a merely generic or descriptive element.

The addition of the word “member” may lead Internet users to believe that the disputed domain name refers to a site of members of the time sharing program and other services rendered by the Complainant as its core business. In the previous case, Desarrollo Marina Vallarta, S.A. DE C.V. v. Hector Rangel, supra (concerning the domain name <mayanresortsmembers.com>) the panel set forth that: (“[…] the term “members” in the disputed domain name reinforces rather than lessens the likelihood of association of the Respondent’s domain name with the Complainant’s mark since the Complainant operates a membership-based business”). The opinion of this Panel is consistent with the above cited prior panel decision, which deals with almost identical fact situations.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s MAYAN Formative Marks.

B. Rights or Legitimate Interests

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. Nevertheless, it has been recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. The Complainant declared that: (i) it has not authorized the Respondent to register or use the disputed domain name; (ii) the Respondent is not commonly known by the disputed domain name; (iii) neither “mayanmember” nor “mayan member” are registered marks in the Respondent name and; (iv) the Respondent has made no legitimate commercial or noncommercial use of the disputed domain name.

The Respondent has not submitted any response to the Complainant’s allegations, and has therefore failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the disputed domain name.

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 therefore satisfied.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith, in violation of paragraph 4(a)(iii) of the Policy.

The Respondent did not file a response to the Complaint, and there is no evidence nor allegation that the Respondent makes a fair use of the disputed domain name.

The Respondent registered the disputed domain name on July 7, 2015, i.e., 19 years after the Complainant began to register its MAYAN Formative Marks in connection with its hotel, resort and time share services.

The Respondent is located in the city where the Complainant is headquartered (Guadalajara, Mexico), therefore it can be inferred that the Respondent, aware of the fame and goodwill associated with the MAYAN Formative Marks, deliberately registered not only the disputed domain name, but the two other domain names, (<mayanmembers.com> and <mayanresortsmembers.com>), which were subject of the previous cases: Desarrollo Marina Vallarta, S.A. DE C.V. v. Hector Rangel, supra, and Desarrollo Marina Vallarta, S.A. DE C.V. v. Hector Rangel, supra.

Moreover, the Complainant has provided evidence that the disputed domain name is being used in connection with a fraudulent email scheme directed to the Complainant’s customers, indicative of the Respondent’s bad faith.

Furthermore, the disputed domain name is parked for sale and under the present facts, the Panel finds no plausible use that would be legitimate under the Policy.

Therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <mayanmember.com>, be transferred to the Complainant.

Mauricio Jalife Daher
Sole Panelist
Date: February 5, 2016