WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Desarrollo Marina Vallarta, S.A. DE C.V. v. Hector Rangel
Case No. D2014-1856
1. The Parties
The Complainant is Desarrollo Marina Vallarta, S.A. DE C.V., of Guadalajara, Jalisco, Mexico, represented by Holland & Knight LLC, United States of America.
The Respondent is Hector Rangel of Guadalajara, Jalisco, Mexico.
2. The Domain Name and Registrar
The disputed domain name <mayanresortsmembers.com> is registered with Instra Corporation Pty Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 22, 2014. On October 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 2014, 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 27, 2014 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 30, 2014.
The Center verified that 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 31, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 24, 2014.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on December 5, 2014. 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.
The proceedings were conducted in English for that is the language of the disputed domain name's registration agreement, as confirmed by the Registrar.
4. Factual Background
The Complainant is a holiday services company. It operates mega resorts in Acapulco, Puerto Vallarta, Nuevo Vallarta, Mazatlán, Puerto Peñasco, Los Cabos, and Riviera Maya for use by its members and time share exchange members only.
The Complainant holds trademark registrations in Mexico for MAYAN RESORTS, filed November 30, 1999, in connection with services pertaining to international classes 35, 38, and 42. These trademark registrations are in good standing.
According to the Registrar's verification response, the disputed domain name was registered on August 20, 2014.
The disputed domain name has been inactive since registration.
5. Parties' Contentions
In summary, the Complainant contends as follows:
(i) The Panel in Desarrollo Marina Vallarta, S.A. de C.V. v. Stacey Davis / Domains by Proxy, Inc., WIPO Case No. DCO2011-0031, has determined that "the Complainant's [MAYAN RESORTS] trade marks are well known in Mexico and more broadly"; accordingly, it is the Complainant's belief that the Panel may conclude that the Complainant has rights in the service mark MAYAN RESORTS and that the mark is well known;
(ii) The disputed domain name has been formed by: a) co-opting the literal portion of the Complainant's MAYAN RESORTS mark, and b) adding wording which suggests services directed to the Complainant's time share program members;
(iii) The disputed domain name immediately conveys the false and misleading impression that it is a Complainant's website, while being confusingly similar to the Complainant's MAYAN RESORTS service mark;
(iv) The Complainant has not authorized the Respondent to register or use the disputed domain name and there is no connection between the Complainant and the Respondent;
(v) The Respondent is not commonly known by the disputed domain name, the name MAYAN RESORTS, or any name reflected thereby;
(vi) According to a trademark search conducted by the Complainant, the mark MAYAN RESORTS MEMBERS is not registered in Mexico;
(vii) The Respondent has made no legitimate commercial or noncommercial use of the disputed domain name;
(viii) There is no website associated with the disputed domain name, which resolves instead to a webpage bearing only the following letters, words, and symbols on a blank screen;
(ix) The Complainant's MAYAN RESORTS mark was well-known prior to the date upon which the Respondent registered and used the confusingly similar domain name incorporating the mark;
(x) The Respondent has been sending fraudulent email communications to the Complainant's time share program members from the email address […]@mayanresortsmembers.com;
(xi) The Respondent has also been sending fraudulent letters to the Complainant's time share program members which include the Complainant's MAYAN RESORTS mark and the email address […]@mayanresortsmembers.com;
(xii) The facts and circumstances of this case suggest that the Respondent has registered and used the disputed domain name with the bad faith intent to defraud the Complainant's customers by impersonating the Complainant to obtain, inter alia, banking information from the Complainant's time share program members.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, 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 is registered and is being used in bad faith.
These elements are discussed in turn below. 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.
A. Identical or Confusingly Similar
As explained in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), the test for confusing similarity under the UDRP involves a straightforward visual or aural comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent Internet user confusion.
In the Panel's view, MAYAN RESORTS stands out in the disputed domain name as the Complainant's well positioned service mark in the holiday industry within and without Mexico.
The Panel is also of the view 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. See Members Equity PTY Limited v. Unasi Management Inc. WIPO Case No. D2005-0383 (where a domain name includes generic or descriptive terms directly relevant to the complainant's business, the public is likely to assume that the domain name is that of the complainant or that it is somehow connected to the complainant's business.)
Furthermore, it is widely accepted that a generic Top-Level Domain ("gTLD") such as ".com" may be excluded from the comparison of a complainant's trademark and a domain name.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's marks in the sense of Policy, paragraph 4(a)(i).
The Complainant has thus passed through the first gateway of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that "any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
i. before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
ii. you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii. you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
As noted in paragraph 2.1 of the WIPO Overview 2.0, the burden is on the Complainant to establish the absence of the Respondent's rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
The Complainant represents not having any connection with Respondent, and not having authorized use of its MAYAN RESORTS mark to the Respondent.
The Complainant further submits that the Respondent is not using the disputed domain name, either in relation to a bona fide offering of goods or services, or for a legitimate noncommercial purpose.
Finally, having conducted a trademark search, the Complainant asserts that the Respondent does not hold a trademark by the name of "Mayan Resorts Members", nor is it known by the disputed domain name.
The foregoing representations and submissions are deemed credible by the Panel, and to the extent that the Respondent has failed to rebut any of the allegations against it, the Panel construes the Respondent's default in the instant proceedings as an admission of its lack of rights and legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that the respondent's failure to respond can be construed as an admission that it has no rights or legitimate interests in the domain name); Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., eResolution Case No. AF-0336 (finding no rights or legitimate interests where no such rights or interests were immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed).
Furthermore, the Panel finds that the Respondent's use of the disputed domain name to defraud Complainant's customers, as elaborated in Section 6.C. infra, negates rights or legitimate interests within the meaning of the Policy.
Consequently, the Complainant has satisfied the second prong of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a complainant to show that the domain name has been registered and is being used in bad faith in order to be successful in its complaint. Paragraph 4(b) of the Policy sets forth a number of non-exclusive grounds of bad faith registration and use:
"(i) circumstances indicating that you [the respondent] have registered or…acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your [the respondent's] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [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 your [the respondent's] website or location or of a product or service on your [the respondent's] website or location."
The Panel accepts that the Complainant holds registered trademark rights in Mexico in MAYAN RESORTS, dating back to November 30, 1999. On the contrary, the Panel does not accept the Complainant's proposition that its MAYAN RESORTS mark is "well-known in Mexico and more broadly", based on the statement made to that effect by the panel in Desarrollo Marina Vallarta, S.A. de C.V. v. Stacey Davis / Domains by Proxy, Inc., WIPO Case No. DCO2011-0031.
That is because the Complainant failed to proffer suitable evidence in order for this Panel to assess the notoriety or fame of the Complainant's mark under the meaning of the Mexican Industrial Property Act, which applies to both the Complainant and the Respondent by reason of their country of incorporation and/or domicile.
Despite this, in view of i) the inactivity of the website associated with the disputed domain name; ii) the substantial goodwill attaching to the Complainant's MAYAN RESORTS mark; and iii) the fact that the Respondent is domiciled in the city where the Complainant has its corporate seat, the Panel finds plausible the Complainant's evidence showing that the Respondent has been using the email address […]@mayanresortsmembers.com to create the impression that the Respondent's communications originate from the Complainant.
Further, because the Respondent's personalized email communications to Complainant's time share program members may involve deception, consumer fraud, phishing, passing off, and/or unfair competition at the very least, based on the available record, and on the balance of possibilities, the Panel is persuaded that the Respondent registered and used the disputed domain name in bad faith within the meaning of the Policy. See Tetra Laval Holdings & Finance S.A. v. VistaPrint Technologies Ltd, WIPO Case No. D2014-1387 (the respondent has used the disputed domain name in scam email correspondence with a customer of the complainant creating the impression that the email was sent by an employee of the Complainant).
The Complainant has therefore discharged its burden in connection with paragraph 4(a)(iii) of the Policy.
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 <mayanresortsmembers.com> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Date: December 19, 2014