WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pebble Beach Company v. Telmex Management Services
Case No. D2002-1068
1. The Parties
The Complainant is Pebble Beach Company, a California general partnership with a principal place of business in Monterey County, Pebble Beach, California, United States of America. The Complainantís Representative in the administrative proceeding (hereinafter also referred to as the "Complainant") is Mary Reding, from Pebble Beach CompanyĎs Legal Affairs Department.
The Respondent is Telmex Management Services, c/o Pasea Estate, British Virgin Islands.
2. The Domain Name and Registrar
The domain name at issue is <pebblebeachhotel.com> (hereinafter referred to as the "Domain Name").
The Registrar for the Domain Name is Intercosmos Media Group, Inc., d/b/a directNIC.com (hereinafter referred to as the "Registrar").
3. Procedural History
On November 21, 2002, the Complainant filed a Complaint, drafted in the English language, with the WIPO Arbitration and Mediation Center (hereinafter referred to as the "Center"). The Complaint was received via e-mail on November 21, 2002. The hardcopy of the Complaint was received on November 28, 2002.
On November 22, 2002, the Acknowledgement of Receipt of Complaint by the Center was sent to the Complainant. On the same date, the Center sent the Request for Registrar Verification.
On November 22, 2002, the Registrar provided the Center with the full contact details available in its WHOIS database for the Domain Name registrant and confirmed that:
- copy of the Complaint was sent to it by the Complainant;
- it is the current Registrar of the Domain Name registration;
- the Respondent is the current registrant of the Domain Name registration;
- the Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as "ICANN Policy") applies to the Domain Name;
- the Domain is active and paid in full;
- the Domain Name will remain locked during the pending administrative proceeding;
- the language of the Registration Agreement is English;
- the jurisdiction for court adjudication is that of the location of the principal office of the Registrar (Paragraph 17 of the Terms of Service Agreement);
The Center proceeded to verify that the Complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as "ICANN Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as "WIPO Supplemental Rules"), including the payment of the requisite fees. On November 29, 2002, the Center sent by e-mail a Complaint Deficiency Notification to the Complainant, in which it requested it to provide the Respondent with a copy of the Complaint with the annexes, to send proof to the Center that payment for the case had been made, also noting that the registrant of record for the Domain Name was not the entity specified in the Complaint as the Respondent.
The Complainant then submitted to the Center a response to the Complaint Deficiency Notification via e-mail, fax and hard copy on November 30, 2002. The hard copy, with the annexes, was received by the Center on December 4, 2002. This response confirmed that the required fees had been paid, and that the Complainant had tried to provide the Respondent with a copy of the Complaint with the annexes, but that the address listed in WHOIS database for the Domain Name was incorrect. A copy of the response was sent by e-mail to Ms. Helen Bradbury, the Respondentís Administrative Contact. Moreover, hard copies of the response with the annexes were sent via Federal Express to Ms. Helen Bradbury at the Respondentís address and to the Registrar, who received also a copy by fax.
In an e-mail dated December 2, 2002, the Center again required the Complainant to amend its Complaint to name Telmex Management Services as the Respondent.
On December 3, 2002, the Complainant sent to the Center, the Respondent and the Registrar, by e-mail, an Amended Complaint.
The verification of compliance with the formal requirements was completed in the affirmative on December 4, 2002.
On December 4, 2002, the Center informed the Respondent of the commencement of the proceedings as of the same date, and of the necessity to respond to the Complaint within 20 calendar days, the last day for sending a response to the Center being December 24, 2002.
On December 26, 2002, the Center informed the Respondent by letter and by e-mail that it was in default pursuant to the ICANN Rules and the WIPO Supplemental Rules and that an Administrative Panel would be appointed based on the number of panelists designated by the Complainant.
On January 7, 2002, the Center issued a Notification of the Appointment of Administrative Panel to the parties and transmitted the Case File to the Panel.
The Panel is satisfied that it was constituted in compliance with the ICANN Rules and the WIPO Supplemental Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel has reviewed the documentary evidence provided by the Center and the Complainant (as the Respondent failed to do so) and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Supplemental Rules.
The Panel is obliged to issue a decision on or prior to January 21, 2003, in the English language.
4. Factual Background
The following uncontradicted and unchallenged facts appear from the Complaint and the supporting documents submitted with it:
- The Complainant, over the years, has gained a substantial and favorable reputation in connection with its golf, resort and hotel services (see the Declaration of Neal Hotelling in support of the Complainant Pebble Beach Companyís Complaint).
- The Complainant owns numerous U.S. and foreign trademark registrations for the mark "Pebble Beach" (see the Complaint, Exhibits F and H).
- The Complainant operates its Web site at the domain address "www.pebblebeach.com", which is accessible from everywhere Internet is accessible (see the Complaint, Exhibit G).
- On April 10, 2002, according to the WHOIS database, Stealth Commerce was the registrant of the Domain Name, and its address corresponded to the Respondentís actual address (see the Complaint, Exhibit I).
- On May 13, 2002, according to the WHOIS database, Lost in Space, SA, 6th Floor, 3510 South rambles Blvd, Palma Majorca, SA 1234, ES, was the registrant of the Domain Name (see the Complaint, Exhibit J).
- On November 5, 2002, according to the WHOIS database, the registrant of the Domain Name was All Together Now, Box 29140, London, UK SW1X9Z (see the Complaint, Exhibit A).
- On November 7, 2002, the Complainant sent a cease and desist notice to All Together Now, by e-mail (see the Complaint, Exhibit L).
- On November 8, 2002, by e-mail, Ms. Helen Bradbury, All Together Nowís Administrative Contact, offered to sell the Domain Name to the Complainant for $2000 (see the Complaint, Exhibit L).
- On November 27, 2002, according to the WHOIS database, the Respondent was the Registrant of the Domain Name (see the Response (by the Complainant) to the Complaint Deficiency Notification, Annex E).
5. Partiesí Contentions
Over and above the uncontested and unchallenged factual background as noted above, which is hereby incorporated herein by reference, it has been contended by:
A. The Complainant, that:
- The Complainant has used the "Pebble Beach" mark in association with goods and services, including resort hotel services, providing golfing facilities since at least as early as 1919.
- The Complainant has invested a substantial amount of money and effort to promote its services under "Pebble Beach" mark. Moreover, the mark has been the subject of many articles in the media. For more than eighty years, the Complainant and the public have used the Complainantís famous mark "Pebble Beach" to identify the Complainant as the source of golf, resort and hotel services. As a result, the mark "Pebble Beach" embodies substantial and valuable goodwill and the Complainant holds broad common law rights in the "Pebble Beach" mark.
- By April 2002, the Web site at the domain address "www.pebblebeachhotel.com" was rerouted to the domain address <temptationsatwork.com> where escort services and sexual services were offered.
- On May 13, 2002, the Complainant attempted unsuccessfully to send a cease and desist notice to Lost in Space, by e-mail, telephone and delivery of correspondence (via Federal Express), at the address identified in the WHOIS database.
- By November 2002, the Web site at the domain address "www.pebblebeachhotel.com" was still active and rerouting to <temptationsatwork.com>.
- Throughout the Complainantís contacts with Ms. Helen Bradbury, Juan Miguel (Lost in Spaceís Administrative Contact), All Together Now, the Respondent, Stealth Commerce and Lost in Space, from April 10, 2002, to November 27, 2002, the Domain Servers on the WHOIS database for the Domain Name have remained the same.
- The Respondent is the same entity than All Together Now.
- Ms. Helen Bradbury, All Together Nowís Administrative Contact, is the same Ms. Helen Bradbury, the Respondentís Administrative Contact.
- The change of Registrant of the Domain Name, from All Together Now to the Respondent, was completed on November 17, 2002.
- The change of Registrant of the Domain Name, from All Together Now to the Respondent, was done in bad faith.
- It is in bad faith that Ms. Helen Bradbury tried to convince the Complainant that buying the Domain Name for $2000 would cost considerably less than filing an ICANN complaint.
- Because the Domain Name incorporates the "Pebble Beach" mark, a consumer viewing a Web site located at the Domain Name address would be likely to assume that the Web sites and/or operators are somehow sponsored by, or affiliated with the Complainant, when they are not.
- The Respondentís inclusion in the Domain Name of the word "hotel" does not decrease the confusing similarity between the Complainantís mark and the Domain Name.
- The Respondent has not commonly been known by the Domain Name.
- The Respondent does not use a name or trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.
- The Respondent is misleadingly diverting consumers for the Respondentís commercial gain.
- The Respondent has not received any permission or consent to use the Complainantís trademark.
- The Respondent registered the Domain Name for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the Domain Name.
- The Respondent registered the Domain Name for the purpose of disrupting the Complainantís business.
- The Respondent has intentionally attempted to attract, for commercial gain, Internet users to their Web site by creating a likelihood of confusion with the Complainantís "Pebble Beach" mark as to the source, sponsorship, affiliation, or endorsement of its Web siteís products and services.
- The Domain Name is confusingly similar to the Complainantís "Pebble Beach" trademark.
- The Respondent has no rights or legitimate interests in respect of the Domain Name.
- The Domain Name was registered and is being used in bad faith.
B. The Respondent, that:
The Respondent has either chosen to abstain or has failed to file timely Response with the Center. No reasons were given to explain why no Response was provided within the stated period.
6. Discussion and Findings
Pursuant to the ICANN Policy, the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent upon the Complainant to cumulatively show:
(i) that the Domain Name is identical or confusingly similar to a trademark in which it holds rights; and
(ii) that the Respondent has no rights or legitimate interests in the Domain Name; and
(iii) that the Domain Name was registered and used in bad faith.
These three elements are considered below.
(i) Identity or Confusing Similarity between the Domain Name and the Complainant's Trademark
The Panel finds that the Complainant has satisfactorily demonstrated that it owns rights in and for the trademark "Pebble Beach". The Complainant has satisfactorily established substantial use of both its common law and registered "Pebble Beach" trademark in connection with golf, resort and hotel services, and that said trademark had become notorious in numerous countries well before the registration of the Domain Name by the Respondent.
The Panel also finds that the Domain Name is confusingly similar to the Complainantís "Pebble Beach" trademark. Notwithstanding the inclusion of the word "hotel" in the Domain Name, the confusing similarity exists since the word "hotel" in the Domain Name does not have the effect of distinguishing it as in both domain names the distinctive element is clearly "Pebble Beach", "hotel" being generic. Quite to the contrary, in the case at hand, it adds to the recognition because it refers to one of the services offered by the Complainant through its Web site.
The Panels adopts the findings in ACOR, Society Anonyme a Directoire et Conseil de Surveillance v. SEOCHO, WIPO Case No. D2002-0517:
"The Domain Name consist of the Complainantís well known IBIS registered mark and the generic word "hotels", reflecting the very business with which the Complainant is concerned. The addition of the word "hotels" does not serve to distinguish the Domain Name from the Complainantís well known mark, but indeed compounds the likelihood of confusion between the Domain Name and the Complainantís trade mark."
The Panel also adopts the findings in Fairmont Hotel Management L.P. v. Puts, WIPO Case No. D2001-0431 (see the Complaint, case 1), where the domain names in issue were <fairmonthotels.com> and <fairmont-resorts.com>:
"The added words "hotel" and "-resorts", respectively, do not serve to make the inclusion of the Complainantís trademark in the domain names non-confusing. Rather, given that the added words describe the business services for which the Complainantís trademark is registered and used by the Complaint, the additions merely compound the confusion created by the incorporation of the Complainantís trademark."
Pursuant to the above mentioned reasons, the Panel is therefore of the opinion that the Complainant has satisfactorily met its burden of proof as required by paragraph 4(a)(i) of the ICANN Policy.
(ii) Rights or Legitimate Interests in the Domain Name by the Respondent
While the onus rests upon the Complainant to demonstrate that Respondent has no rights or legitimate interests, once prima facie evidence has been adduced, as in the present case, it is then incumbent upon the Respondent to show otherwise. Failing to do so, in some cases, might lead to a negative inference. In the present case, as was the case in Fortuneo v. Johann Guinebert, WIPO Case No. D2001-0781, SSL International v. Mark Freeman, WIPO Case No. D2000-1080 and Altavista Company v. Grandtotal Finances Ltd. et al., WIPO Case No. D2000-0848, the Respondent having failed to reply to the Complaint and detail any legitimate rights or interests it might have had in the Domain Name before the due date, the Panel so finds.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name given there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name. There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to the mark.
Also, the Respondent is not making a legitimate commercial or fair use of the Domain Name. According to the evidence submitted by the Complainant and not rebutted by the Respondent, the Domain Name reroutes to a site that invites viewers to order escorts services and other sexual services. There is a lack of logical relationship between the Domain Name and the nature of Respondentís business. Intentionally trading on the fame of a mark cannot constitute bona fide offering of goods and services. See Madonna v. Parisi, WIPO Case No. D2000-0847 (see the Complaint, case 3):
"We find instead the name was selected and used by Respondent with the intent to attract for commercial gain Internet users to Respondentís web site by trading on the fame of Complainantís mark. We see no other plausible explanation for Respondentís conduct and conclude that use which intentionally trades on the fame of another can not constitute a "bona fide" offering of goods and services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy."
In any event, as shown by the evidence, the Respondent was willing to make a "deal" (offer to sell) in exchange of the Domain Name. This motivation, as was the case in Viacom International Inc. v. Domains for Sale Sp, WIPO Case No. D2002-0481 and AT & T Corp. V. Linux Security Systems, WIPO Case No. DRO2002-0002, establishes lack of legitimate rights and its intent to use the Domain Name for commercial gain.
Finally, the Respondent, at the time of the Complaint, had not been commonly known by the Domain Name, since according to the evidence submitted by the Complainant, the Respondent did not use "Pebble Beach" as the name for its business, nor as the title reference of its site, nor on the textual presentation of its Web site. Furthermore, on January 11, 2003, the Panel has taken proprio motu upon himself to do an updated verification and has noticed that the site was now a pornography site entitled "Move Haven".
In the circumstances of this case, the Panel concludes that, on a balance of probabilities, the Complainant has discharged its burden to show that the Respondent has no rights or legitimate interests in the Domain Name.
(iii) Bad faith in Registration and Use of the Domain Name by the Respondent
It is quite difficult, usually, if not impossible, to actually show bad faith with concrete evidence. While bad faith cannot be presumed, once the Complainant has presented some evidence pointing in that direction, it is then incumbent upon the Respondent to either respond or explain why its conduct should not be ascribed to bad faith. The Panelís understanding of the Policy is that although the initial burden to prove the Respondentís bad faith in the registration or the use of the disputed Domain Name relies squarely on the shoulders of the Complainant, such obligation is only to make out a prima facie case, and once it has done so, as the Panel finds it did in the present case, it is then incumbent upon the Respondent to either justify or explain its business conduct (if not to demonstrate the contrary).
In light of the evidence submitted by the Complainant, the Respondent having failed to address the issue and justify the charges against it, the Panel, under the circumstances, does again find a negative inference (see Hebdomag Inc. v. Illuminaty Marketing, WIPO Case No. D2001-0206 and Inter Trade Systems Corporation v. Donna Lawhorn, FA0204000112488 Nat. Arb. Forum (July 15, 2002)).
Furthermore, even if no such negative inference could have been made, evidence shows that the Respondent has registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the Domain Name.
According to the documentation in the Complaint, the Respondent, under its own name or other aliases, has been involved in numerous similar cases where the decisions have been decided against it. In the present case, the Domain Name was linked to a site directed to sexual services. The Domain Name being confusingly similar to the famous mark "Pebble Beach", the Complainant will be associated with these services and has no control over the materials in the Web site. For this reason, the Complainant was faced with either choosing to purchase the Domain Name or bringing the present administrative action.
It is clear that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its Web site by creating a likelihood of confusion with the Complainantís "Pebble Beach" mark as to the source, sponsorship, affiliation, or endorsement of its Web site and its Web siteís products and services. Directing unsuspecting consumers to the Respondentís on-line location is evidence of bad faith by creating confusion with the Complainantís mark (see Snapple Beverage Corp. v. Telmex Management Services, WIPO Case No. D2002-0114 (see the Complaint, case 17)).
Moreover, the Respondentís offer to sell the Domain Name to the Complainant is further evidence of the Respondentís bad faith intent to profit from the Domain Name (see for example Plaza Operating Partners, Ltd. v. Pop Data Technologies, Inc. and Joseph Pillus, WIPO Case No. D2000-0166).
For these reasons, the Panel concludes that the Domain Name has been registered and is being used by the Respondent in bad faith.
For the foregoing reasons, the Panel finds that:
- The Domain Name registered by the Respondent is confusingly similar to the trademarks to which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the Domain Name; and
- The Domain Name has been registered and is being used by the Respondent in bad faith.
Accordingly, pursuant to Paragraphs 4(i) of the ICANN Policy and 15 of the ICANN Rules, the Panel orders that the registration of the Domain Name <pebblebeachhotel.com> be transferred to the Complainant and directs the Registrar to do so forthwith.
Jacques A. Léger, Q.C.
Dated: January 21, 2003