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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Desarrollo Marina Vallarta, S.A. DE C.V. and Daniel Jesus Chavez Moran v. Jesse Ellis

Case No. D2013-1732

1. The Parties

The Complainants are Desarrollo Marina Vallarta, S.A. DE C.V. of Guadalajara, Jalisco, Mexico; and Daniel Jesus Chavez Moran of Zapopan, Jalisco, Mexico, represented by Holland & Knight LLC, United States of America (“US”).

The Respondent is Jesse Ellis of Vernon, British Columbia, Canada.

2. The Domain Name and Registrar

The disputed domain name <mayangrandpalace.com> is registered with 1&1 Internet AG (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2013. On October 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 14, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 17, 2013 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 22, 2013.

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 October 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2013.

The Center appointed James A. Barker as the sole panelist in this matter on November 18, 2013. 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 first Complainant, Desarrollo Marina Vallarta, is a corporation organized under the laws of Mexico. The first Complainant is the owner of a number of registered marks including the term “Mayan”. These include the marks MAYAN PALACE, THE GRAND MAYAN, THE SIGNATURE AT MAYAN PALACE, THE ELITE AT MAYAN PALACE and THE MAYAN PALACE VACATION CLUB. The marks are registered for hotel resource and time share services, temporary lodging, real estate negotiations, and golf services. The Complainant also operates websites at “www.mayanpalace.com”, “www.thegrandmayan.com”, and “www.mayanresorts.com”. The Complainant provided evidence of promotional materials relating to its branded products. The earliest of its marks was issued in 2000.

The second Complainant, Daniel Jesus Chavez Moran, is a founding member of the first Complainant, and owns registered marks which include GRUPO MAYAN. The first Complainant is the exclusive licensee of the second Complianant. (For convenience, references to “the Complainant” which follow are references to both the first and second Complainants).

The disputed domain name was registered in June 2013. From screenshots dated August 2013, the Complainant provided evidence that the disputed domain name reverted to a website ostensibly advertising accommodation under the Complainant’s brand.

5. Parties’ Contentions

A. Complainants

The following is summarized from the Complaint.

The Complainant is one of the largest providers of resort services in Mexico. In this connection, the Complainant introduced the popularized MAYAN branded services in Mexico on the 1970s, and has since experienced exponential growth in its business. The Complainant opened a number of resorts under the MAYAN PALACE mark, and opened its first resort under the brand name “The Grand Mayan” in 2003.

Both the first and second Complainant have a common legal interest and grievance against the Respondent. As such, the Complainant requested that its Complaint be consolidated for the purpose of these proceedings.

In relation to the grounds under paragraph 4(a) of the Policy, the Complainant claims that the disputed domain name is confusingly similar to its marks. All of the Complainant’s marks were issued well before this dispute. The disputed domain name consists of the Complainant’s combined MAYAN formative marks, i.e. the Complainant’s well-known MAYAN PALACE and THE GRAND PALACE, with the only difference being that the article “the” is not included.

The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not been licensed or authorized to use the disputed domain name and there is no connection between the parties. The Respondent is not commonly known by the disputed domain name, or any related name. The disputed domain name resolves to a website that purports to offer accommodation for rent in the Complainant’s resort properties in Mexico. Nowhere on the Respondent’s site does the Respondent disclose or even hint at the Respondent’s relationship with the Complainant. Overall, the Respondent’s website misleadingly suggests an association with the Complainant.

The Complainant also claims that the disputed domain name was registered and has been used in bad faith. The Respondent had notice of the Complainant’s marks when he registered the disputed domain name. The Respondent registered the disputed domain name in June 2013, well after the Complainant’s trademark registrations. The Complainant’s marks are also well-known in the hospitality industry. The content of the Respondent’s website clearly shows that the Respondent registered and is using the disputed domain name to intentionally attract Internet users for commercial gain, by creating a likelihood of confusion. Such circumstances are evidence of bad faith under paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below, immediately after consideration of a procedural issue raised by the Complainant in relation to the consolidation of the Complaint.

A. Consolidation of the Complaint

The Complainant argues that both the first and second Complainant’s should be permitted to file a consolidated Complaint, as they are both legally related and share a common grievance against the Respondent.

Although the Policy does not explicitly provide for multiple Complainants to be treated as one, neither does it explicitly preclude it. The majority of panels also appear to have accepted complaints filed by multiple complainants, particularly where they are related entities. (See, e.g., Starwood Hotels & Resorts Worldwide, Inc., Sheraton, LLC, and Sheraton International Inc. v. Jake Porter, WIPO Case No. D2007-1254; Media West-CPI, Inc., Media West-DMR, Inc., Media West-GMP, Inc., Media West-GSI, Inc., Media West-PNI, Inc., Media West-PNJ, Inc., Media West-SJC, Inc., Media West-NPP, Inc., Cape Publications, Inc., Des Moines Register and Tribune Co., Gannett Satellite Information Network, Inc., Multimedia Holdings Corp., Phoenix Newspapers, Inc., Gannett Co., Inc. v. Unasi, Inc., WIPO Case No. D2005-1336). The Complainants in this case are clearly related. The first Complainant is an exclusive licensee of the second Complainant. The Panel does not consider that the Respondent would be disadvantaged by the consolidation of the Complaint. The overall interests of fairness and efficiency would appear to be advanced by allowing the consolidation of the Complainant in these circumstances. Accordingly, the Panel has allowed the Complaint to proceed in the name of both Complainants.

B. Identical or Confusingly Similar

Under paragraph 4(a) of the Policy, the Complainant must demonstrate both that it “has rights” in a mark, and that the disputed domain name is identical or confusingly similar to that mark.

The Complainant clearly has rights in its various marks, including for MAYAN PALACE and THE GRAND MAYAN. The disputed domain name is not relevantly identical to either of those marks. The issue then is whether the disputed domain name is confusingly similar. The Complainant says that the Respondent has, essentially, registered an amalgam of its marks.

The test of whether a domain name is confusingly similar “requires considering what the overall impression is, bearing in mind the dominant components of the domain name and whether the domain names would be considered perplexing to a customer or potential customer trying to locate the Complainants on the Internet.” (See EADS Deutschland GmbH et al. v. Wolfgang Koellen, WIPO Case No. D2000-1639).

Having regard to this test, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s marks. The disputed domain name includes key, recurring terms from the Complainant’s various marks: in particular, MAYAN PALACE and THE GRAND MAYAN. The overall impression created by the disputed domain name is of a similarity with the Complainant’s marks. The Complainant provided evidence (although largely based on its own websites) which suggests that its marks are well-known. This evidence further supports the conclusion that the disputed domain name could readily be associated with the Complainant’s marks.

For these reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s MAYAN PALACE and THE GRAND MAYAN marks.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests. Once a Complainant establishes a prima facie case against the Respondent under this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with Complainant. See e.g. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.

The Complainant has established a prima facie case against the Respondent in this case, which is not otherwise contradicted by the evidence in the case file. The Complainant provides substantial evidence that the Respondent’s website is designed to give the misleading appearance of one authorized by the Complainant. Absent evidence to the contrary, such a use cannot be a foundation for a right or legitimate interest.

Paragraph 4(c) of the Policy sets out defenses which may provide evidence of a right or legitimate interest. The Respondent provided no evidence of having such rights or legitimate interests in the disputed domain name. Neither was there evidence in the case file to suggest such a right or legitimate interest.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides that one of the circumstances evidencing registration and use of a domain name in bad faith is that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line locations, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product or service on the respondent’s web site or location.

The Panel considers that there is evidence of such bad faith registration and use in this case. This is for the following reasons.

Firstly, the disputed domain name contains terms that are closely associated with the Complainant’s marks. There was little evidence that these terms, in the combination included in the disputed domain name, would have a more general association. In other words, the disputed domain name is so obviously connected with the Complainant that its very use by the Respondent is indicative of bad faith.

Secondly, the Respondent’s own website clearly suggests that the Respondent was aware of the Complainant and its marks, and sought to suggest that its site offered similar services to those of the Complainant.

Thirdly, both the Complainant and Respondent are geographically proximate. The Complainant also (by its own evidence) has a strong presence on the Internet. These factors reinforce the conclusions above, that the Respondent was motivated by the Complainant’s reputation to take advantage of its marks.

Fourthly, the Respondent has presented no rebuttal of the Complaint against it. While it is ultimately the Complainant’s burden to prove its case, the Complainant has provided a strong prima facie showing against the Respondent. The Policy provides ample opportunity for a Respondent to submit some reply. The Respondent has chosen however to make no communication in connection with this case. It is therefore open to the Panel to draw a negative inference against the Respondent.

Finally, there is no other plausible explanation that presents itself to the Panel from the material in the case file. The terms “Mayan”, “grand” and “palace”, taken alone, have obviously general associations. However, when all combined, the terms have a clear association with the Complainant’s marks, which were registered well before the registration of the disputed domain name.

For these reasons, the Panel finds that the disputed domain name was registered, and has been used, 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 <mayangrandpalace.com> be transferred to the Complainant.

James A. Barker
Sole Panelist
Date: December 2, 2013

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