WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Centro de Promociones Los Cabos San Lucas, S.A. de C.V. v. Whoisguard Protected, Whoisguard, Inc. / Name Redacted
Case No. D2017-0990
1. The Parties
The Complainant is Centro de Promociones Los Cabos San Lucas, S.A. de C.V. of Cabo San Lucas, Baja California Sur, Mexico, represented by CAYAD, S.C., Mexico.
The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama City, Panama / Name Redacted.1
2. The Domain Name and Registrar
The disputed domain name <solmar.club> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2017. On May 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 May 30, 2017, 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 amendment to the Complaint on June 4, 2017.
The Center verified that the Complaint together with the amendment to 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 June 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2017. On June 16, 2017, the Respondent submitted an email claiming that the registration of the disputed domain name had been made without its knowledge or authorization by a third party using its identity. The Respondent did not submit any substantive response regarding the arguments in the Complaint.
The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on July 6, 2017. 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 Centro de Promociones Los Cabos San Lucas, S.A. de C.V., a corporation based in Cabo San Lucas, Mexico. The Complainant is a Mexican hotel group incorporated since 1973, currently operating five hotels and developing its sixth. The company also operates as a timeshare sales company and many restaurants in the Los Cabos area.
The Complaint holds trademark rights for a number of different trademarks granted by the Mexican Institute of Industrial Property (IMPI), such as: (i) SOLMAR (Reg. no. 1149459, filed on November 20, 2009 and granted on March 19, 2010); (ii) GRAND SOLMAR VACATION CLUB (Reg. no. 1500201, filed on August 20, 2014 and granted on December 4, 2014); and, (iii) GRAND SOLMAR LAND’S END (Reg. no. 1106527, filed on May 27, 2009 and granted on June 17, 2009).
The Respondent did not send a Response. However, the Center received an email communication from an individual, whose name and address match the WhoIs records of the disputed domain name, and who alleges that he has no relation whatsoever with the disputed domain name and claims that the real owner is using his identity to scam other people.
Additionally, according to the same email, there is another domain name dispute being handled by the Center ( WIPO Case No. DMX2017-0016, <vidantagroup.mx>) that portrays a similar fraudulent use of his identity to register domain names related to Mexican businesses and scam other people.
The disputed domain name was registered on January 26, 2017 and did not resolve to any active website at the time the Complaint was filed.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is identical to one of its registered trademarks, namely trademark SOLMAR (Reg. no. 1149459) registered with the IMPI, with the addition of the generic Top-Level Domain (“gTLD”) “.club”. The disputed domain name is also confusingly similar to the Complainant’s other trademarks (GRAND SOLMAR VACATION CLUB and GRAND SOLMAR LAND’S END, Reg. no 1500201 and 1106527, respectively).
The Complainant states that no content is found in the disputed domain name’s website. Therefore, the Respondent has not used the disputed domain name in connection with the offering of goods and services, maintaining a passive holding of the disputed domain name.
However, although no content is shown in the website, the Complainant claims that the Respondent has been sending scam emails using the email service associated with the disputed domain name to the Complainant’s clients, with the Complainant’s trademarks and logos, without authorization nor license, offering sales and reservation services, defrauding customers and misleading them by contacting them and associating themselves with the Complainant’s hotels and resorts. The Complainant alleges that this use of the disputed domain name proves that no bona fide offering of services is, or has been, taking place in association with the disputed domain name.
Also, the Complainant points out that the emails sent by its representatives are associated with the Complainant’s domain names, such as <solmar.com>. Therefore, it’s clear that the Respondent has been practicing phishing activities using the disputed domain name and the Complainant’s trademark.
Finally, the Complainant asserts that the Respondent uses the disputed domain name in bad faith for fraudulent activities and, therefore, requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
However, an individual named as the Respondent, has sent an email to the Center, in response to the notification of the Complaint he received via DHL at his home.
The person named as the Respondent alleges that he had his identity stolen in a scam that took place in 2013, and since then, has had his name associated with a number of fraudulent businesses.
The person named as the Respondent states that another complaint has been filed against him at the Center ( WIPO Case No. DMX 2017-0016, for the domain name <vidantagroup.mx>) and he has already contacted the legal case manager to explain his position and identity theft.
Therefore, the person named as the Respondent suspects that this is another case in which criminals have used his name for illegal purposes and requested that his name be removed from the records.
6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain the remedy sought. These elements are:
(i) The disputed domain name is identical or confusingly similar to the trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name;
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant owns trademark registrations for SOLMAR and different expressions that include the “Solmar” term. The Panel finds that the disputed domain name is, indeed, confusingly similar to the Complainant’s marks.
The Panel also finds that the mere addition of the gTLD “.club” is not enough to distinguish the disputed domain name from the Complainant’s trademarks. Besides, one of the Complainant’s trademarks is GRAND SOLMAR VACATION CLUB, which consists not only of the “Solmar” expression, but also the word “club”, that is used in the disputed domain as a gTLD.
The Panel, therefore, concludes that the Complainant has established the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has alleged that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name.
Considering that the Respondent did not send a Response to the Complaint, this Panel finds that there is nothing suggesting that the Respondent has or might have had rights or legitimate interests in respect of the disputed domain name.
Moreover, the Panel verifies that the Respondent has been using the disputed domain name in association with an email address that has been used to send emails of fake services and sales as if it was a representative of the Complainant.
Thus, in the absence of any evidence of the contrary, the Panel concludes that the Complainant has succeeded to establish the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent has intentionally registered the disputed domain name, which is confusingly similar to the Complainant’s marks and domain names and has been used in connection with phishing activities.
The Complainant’s evidence show that customer of the Complainant received emails sent by the Respondent offering sales and reservation services in connection with the Complainant’s trademarks, in a clear attempt to obtain sensitive information.
In fact, the Respondent’s use of the disputed domain name in a phishing scheme demonstrates that the Respondent not only knew of the Complainant, its business and marks, but also attempted to pass itself off as the Complainant.
In this sense, the Panel agrees with previous UDRP panels that phishing is a clear evidence of registration and use of a domain name in bad faith. See The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado, WIPO Case No. D2012-2093 (“[u]se of a disputed domain name for the purpose of defrauding Internet users by the operation of a ‘phishing’ website is perhaps the clearest evidence of registration and use of a domain name in bad faith. The fact that the website is currently inactive does not negate such a finding”).
The Panel also notes that the allegations of bad faith made by the Complainant were not contested, being in fact reinforced by the assertions made by the person named as the Respondent.
Under these circumstances, the Panel finds that the Respondent’s passive holding of the disputed domain name also demonstrates bad faith. See DCI S.A v. Link Commercial Corporation, WIPO Case No. D2000-1232.
In view of the above, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith.
Therefore, the Panel finds that the Complainant has established the third element of paragraph 4(a) 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 <solmar.club> be transferred to the Complainant.
Luiz E. Montaury Pimenta
Date: July 20, 2017
1 The Panel has decided to redact the name of the Respondent, adopting the criterion of the panel in Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788. In view of the communications sent to the Center by a person named as the Respondent who states that the disputed domain name was registered using his personal data, the Panel has decided that no purpose is to be served by including the named Respondent in this decision, and has therefore redacted its name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances