WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sunterra Centralized Services Company v. Sunterra Europe, Travel Sunterra S.L.L.
Case No. D2004-0837
1. The Parties
The Complainant is Sunterra Centralized Services Company, Sunterra Resorts, Orlando, Florida, United States of America, represented by Marks & Clerk Intellectual Property, Spain.
The Respondents are Sunterra Europe, Torremolinos Málaga, Spain, Travel Sunterra S.L.L, Alhaurin de la Torre-Málaga, Spain (“Respondent”).
2. The Domain Name and Registrar
The disputed domain name <travelsunterra.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2004. On October 13, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On the same day, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 October 25, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 14, 2004. The Response was filed with the Center on November 13, 2004.
The Center appointed Knud Wallberg as the sole panelist in this matter on November 23, 2004. 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 is one of the worlds largest vacation ownership companies with an annual turnover of $10 billion and with operations in 12 countries in North America, Europe and the Carribean. Its shares are traded on the Nasdaq Stock Market.
The complainant is the owner of Community Trade Mark registration No. 649236 SUNTERRA, registered in classes 9, 16,35 and 42 of the Nice Classification. The mark was applied for on September 29, 1997. In this respect, although it appears that the proprietor of the mark is SIGNATURE RESORTS INC, on September 3, 2004, Complainant has filed an application within the OHIM asking for the recordal of the transfer of this trademark to SUNTERRA CENTRALIZED SERVICES COMPANY. A copy of this application was attached to the Complaint.
The domain name <sunterra.com> registered on July 30, 1997.
Respondent is a travel agency arranging tours and excursions.
5. Parties’ Contentions
1. Identical or confusingly similar with Complainants rights
As can be seen, the prior CTM registration SUNTERRA, as well as the prior domain name <sunterra.com> of the Complainant are completely included in the disputed domain name <travelsunterra.com>. Therefore, it is clear that the signs in conflict are almost identical.
The fact that the disputed domain name includes the word “travel” does not avoid the strong similarity between the signs in conflict since, on one hand the relevant word SUNTERRA is identical, and on the other, the inclusion of the word “travel” in the disputed domain name is not an obstacle to come to the conclusion that the signs in conflict are strongly similar.
In this respect, it should be taken into account that the services offered by the Respondent through the disputed domain name are: hotel services, travel agency services for reserving accommodation, holiday reservation services, holiday club services, resort time-share services, which are identical to those registered under the prior CTM registration of the complainant. As evidence was enclosed printouts obtained from the respondent’s website.
Besides this, in accordance with the Community Trade mark Regulations, the word travel is descriptive of the abovementioned services, and therefore since it lacks distinctiveness, it should not be taken into consideration in an overall assessment of similarity.
Complainant notes the following decisions issued by the WIPO Arbitration and Mediation Center: Busy Body, Inc. v. Fitness Outlet Inc. WIPO Case No. D2000-0127, Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253, PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS) WIPO Case No. D2003-0696.
As a consequence of the above, it is unquestionable that the disputed domain name is confusingly similar to the prior trademark and the prior domain name registration of the Complainant.
2. The Respondent has no rights or legitimate interests in respect of the domain name;
The Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the Complaint. In fact, the Respondent is making a commercial and unfair use of the domain name, with the intention of commercial gain misleadingly to divert consumers.
On December 1997, a then employee of Complainant (who later became and is still acting as administrator for Respondent) started to work for the Complainant’s company in its offices of Sahara Sunset in Benalmádena Costa as a telemarketing operator. Her main task was to generate Russian clients for the company since her mother tongue is Russian. On December 2001, she was dismissed due to alleged unfair competition activities including use of the SUNTERRA EUROPE trademark. These aspects have been dealt with by Spanish Courts and shall not be further scrutinized in this case.
3. The domain name was registered and is being used in bad faith.
On November 23, 2001, <travelsunterra.com> was registered in the name of Respondent with the intention of diverting the Complainant’s clients to Respondent’s business. It is clear that the Respondent registered the disputed domain name under a fictitious name, since as explained in the following point, they only registered the company name Sunterrea Europe in 2002.
Immediately, Respondent created a website associated with this domain name including a brochure which showed the SUNTERRA logo thereby infringing Complainant’s prior rights.
Respondent is still using the domain name <travelsunterra.com> as well as Complainant’s trademark in the associated website for the purpose of disrupting the business of a competitor.
Moreover, the Respondent is intentionally attempting to attract for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
In the opinion of the Complainant, the above-referred facts and evidence are self-explanatory of the bad faith of the Respondent when registering and using the disputed domain name, see Jacoby & Meyers LLC v. Jacob Y. Meyers aka Jacob Yale Meyers, Jacob Yosef Meyers and Eminent Domain, WIPO Case No. D2002-1046.
1. Whether the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
Respondent has no intention denying that the domain name <travelsunterra.com> is similar to the complainant’s trademark ‘SUNTERRA’. Actually, the domain name includes the trademark ‘SUNTERRA’. Moreover, in its origin, the company that registered <travelsunterra.com> (Sunterra Europe Travel s.l.) was created to offer complementary holiday services to Sunterra’s Russian customers. The analogy is conceded.
2. Whether the Respondent has rights or legitimate interests in respect of the domain name;
The respondent must be considered as having rights and legitimate interests in respect of the domain name, due to her prior engagement in organizing and generating new customers from the Russian market, offering a holiday break on the Costa del Sol and Tenerife, for the company GVC. The purpose was to sell them a Timeshare ownership when they arrive for their holiday.
In 2001, the Complainant took over GVC and started to sell property on a timeshare basis in Spain through its operator GVC Spanish Sales s.l. On June 2000, Respondent came to an agreement with the marketing manager, to set-up some additional holiday services for clients in order to increase their overall satisfaction of the company. Only the Russian customers were concerned, as no services was available to them in their native tongue. Some leaflets were printed offering excursions and tours on the Costa del Sol, in the company’s name. No written agreement was signed as the number of clients concerned by this offer was very low.
On November 2001, <travelsunterra.com> was registered and a basic website uploaded in order to give an online access to this information: description of excursions, tours and visited cities; exclusively in a Russian language.
Therefore it is clearly demonstrated that Respondent has legitimate interest in respect of the domain name. Respondent is a legal and registered Spanish travel agency and has been trading with “www.travelsunterra.com” for almost 3 years. Respondent is known by its name and domain name and has no intention of benefiting from confusion with the timeshare operator Sunterra Corporation.
3. Whether the domain name has been registered and is being used in bad faith.
Respondent denies registration and use in bad faith and contests much of the information provided in the Complaint.
The domain name <travelsunterra.com> was registered in order to provide general information about the services offered to Sunterra’s Russian customers when arriving at the Costa del Sol, Spain (tours and excursions). Sunterra Corporation was provided for Russian customers: one week accommodation in one of their resorts, an aggressive commercial presentation of their timeshare product and nothing else.
The domain name <travelsunterra.com> is not a competitor to Complainant. Respondent offer hotels, excursions and tours in the south of Spain and Portugal, “www.sunterra.com” is an on-line exchange system for Club Sunterra’s members (timeshare owners).
Respondent has never had and will never have any intention to sell the domain name to the Complainant.
The website “www.travelsunterra.com” has always had descriptions and links to Complainant’s resort as well as all the hotels and apartment-hotels that Respondent has an agreement with.
The role of Respondent is to provide VIP holiday services such as individual excursions and tours, exclusive accommodation and luxury car rentals. The actual main market is Russia and all Russian-speaking countries but there are plans to extend to UK, France and Germany.
6. Discussion and Findings
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the 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. The Panel wants to stress that the UDRP is only available to deal with the question of the possible bad faith registration of the contested domain name. The other relations between the parties thus fall outside the scope of these proceedings.
In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:
(i) The domain name is 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from, as it considers appropriate.
A. Identical or Confusingly Similar
Complainant has rights to the trademark SUNTERRA. The dominant and distinctive part of the contested domain name <travelsunterra.com> is identical to this trademark. The addition of the descriptive term “Travel” must be taken into account but is not sufficient to alter the fact that the domain name must be considered to be confusingly similar to the trademark SUNTERRA.
The prerequisites of Paragraph 4(a)(i) are thus met.
B. Rights or Legitimate Interests
The contested domain name was registered by the Respondent on November 23, 2001. The Registrant at this point in time was indicated to be Sunterra Europe. The Panel notes that a person related to Respondent appears to have registered the name Sunterra Europe Travel s.l. in 2000, but the information on this is not entirely clear. Other information that indicates that the company named Sunterra Europe Travel s.l. was not registered until March 2002. It is uncontested that Respondent formed and registered the company Travel Sunterra s.l.l. in July 2003.
The Policy Paragraph 4(a)(ii) cf. Paragraph 4(c) is not entirely clear as to the time on which Respondent’s possible legitimate interests shall be present – at the time of registration of the domain name or at the time of filing the complaint. The Panel reads the paragraph in the way that the legitimate interest in principle shall be present at the time of registration, but that circumstances appearing after registration can be taken into account. It must however be clear that these circumstances such as the acts performed by the registrant can only be recognized if they are done bona fide.
The Panel is of the view that it is questionable whether the registration of the company name Travel Sunterra s.l.l. has been done in good faith. Respondent has not explained the reasoning behind choosing the name, which does not, on the face of it, appear to be a natural choice of name for a travel agency. It can therefore not be ruled out that the registration has been done solely as a defence, i.e. with the purpose of legitimizing the registration of the contested domain name, cf. the deliberations below on bad faith.
The Respondent further states in the Response that the website “www.travelsunterra.com” “was created to offer complementary holiday services to Sunterra’s Russian customers”, but has not provided any evidence that this use of a domain name that incorporates the trademark of the Complainant was licensed or otherwise permitted by the Complainant. Since Respondent did not inform Complainant of registration nor seek any permission to use the mark, the Panel finds that the use of the domain name is not bona fide. The relationship between the parties does not justify the registration of the domain name. Therefore the Respondent lacks legitimate interests in the domain name.
C: Registered and Used in Bad Faith
It is uncontested that Respondent was fully aware of Complainant’s activities and of their trademark rights in SUNTERRA when the contested domain name was registered and that the domain name was registered “to offer complementary holiday services to Sunterra’s Russian customers”. In addition, at that point in time Respondent did not have any rights to the name “Sunterra” alone or to the combination “Travelsunterra”. The Panel therefore finds that the registration of the domain name was done in bad faith.
Initially the corresponding web page “www.travelsunterra.com” used the logo of Complainant and it was also indicated on the web page that copyright to the content was vested in “Sun Terra”. By comparing the present content of this web page with the web page of Complainant under “www.sunterra.com”, as done in Annex 16 of the Complaint, it is clear that the content of Respondent, s website to a large extent is copied from Complainant, s website (identical texts, photos and maps). Since the Panel is not convinced that Respondent has legitimate rights or interests in the domain name, the Panel finds that the domain name is used in bad faith.
The prerequisite of Paragraph 4(a)(ii) is also met.
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, <travelsunterra.com> be transferred to the Complainant.
Dated: December 3, 2004