WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EPI Gestion, S.L. v. Media Insight
Case No. D2018-0402
1. The Parties
The Complainant is EPI Gestion, S.L. of Alicante, Spain, represented by Abril Abogados, Spain.
The Respondent is Media Insight of Miami Beach, Florida, United States of America ("United States"), represented by Gaebe, Mullen, Antonelli, & Dimatteo, United States.
2. The Domain Names and Registrar
The disputed domain names <sandoscancunresort.com>, <sandoscaracoleco.com>, <sandoscaracolresorts.com>, <sandosloscabosresort.com>, and <sandosplayacarriviera.com> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 22, 2018. On February 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 23, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant submitted an amendment to the Complaint on March 2, 2018 to address an administrative formality.
The Center verified that 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 March 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2018. The Response was filed with the Center on March 22, 2018.
On April 5, 2018 the Complainant submitted a Supplemental Filing. On April 9, 2018 the Respondent also submitted a Supplemental Filing. The status of both filings is considered below.
The Center appointed Antony Gold as the sole panelist in this matter on March 28, 2018. 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 a Spanish company which manages hotels and resorts, a number of which are branded SANDOS. Five of its SANDOS-branded hotels are located in Spain and four in Mexico. The names of the hotels in Mexico are Sandos Caracol Eco Resort, Sandos Finisterra Los Cabos, Sandos Playacar Beach Resort, and Sandos Cancun Lifestyle Resort.
The Complainant is the owner of a number of a number of trade marks which comprise or include the word SANDOS. Among them are;
- European Union Trade Mark, Registration No. 2430056 for SANDOS, registered on December 21, 2004 for various services, including hotel services;
- United States trade mark, Registration No. 77913915, for SANDOS HOTELS & RESORTS, registered on January 4, 2011 for various services, including hotel services;
- Mexican Trade mark, Registration No. 1009986 for SANDOS CARACOL, registered on August 24, 2009 for, amongst other goods and services, hotels;
- Mexican Trade Mark, Registration No. 1009988 for SANDOS PLAYACAR, registered on August 24, 2009 for, amongst other goods and services, hotels.
The disputed domain names were registered on various dates between November 2006 and March 2012. The disputed domain name <sandoscaracolresorts.com> was registered on November 11, 2006; <sandosplayacarriviera.com> was registered on June 28, 2007; <sandoscaracoleco.com> was registered on December 3, 2008; <sandoscancuresort.com> was registered on March 29, 2010; and <sandosloscabosresort.com> was registered on March 2, 2012. Each of the disputed domain names points to websites providing information about the Complainant's hotels. The content of each website is considered in further detail below, as are the dealings between the Complainant and the Respondent.
5. The Parties' Supplemental Filings
It is convenient to deal at this point with the Parties' Supplemental Filings.
The Rules and Supplemental Rules provide for service of a complaint and a response. There is no explicit provision for additional filings save in respect of further statements or documents which are provided in response to a request from the Panel (paragraph 12 of the Rules). Pursuant to paragraph 10 of the Rules, the Panel is obligated to "ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case" and to "conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules".
The decision whether to accept supplemental filings is at the discretion of the panel, but is exercised sparingly. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.6 and, in particular, the commentary that "[u]nsolicited supplemental filings are generally discouraged, unless specifically requested by the panel" and the comment that "panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some 'exceptional' circumstance)".
The Complainant should, to a large extent, have anticipated the points which the Respondent would raise in its Response. However, this is a factually complex matter and it might not have been able to anticipate the specific documents on which the Respondent would rely. Moreover, the Complainant's Supplemental Filing is very short and, to the extent that it addresses matters raised in the Response, the Panel has considered it. As that, in turn, raises issues on which the Respondent could not reasonably have anticipated when serving its Response, it has been appropriate for the Panel to consider the Respondent's equally brief Supplemental Filing.
6. Parties' Contentions
The Complainant says that the disputed domain names are identical or confusingly similar to trade marks in which it has rights.
For the purpose of the comparison, the extension of the disputed domain names, that is ".com", should be disregarded. So far as the remaining element of the disputed domain names is concerned, the Complainant draws attention to the panel's decision in Blue Diamond Hotels and Resorts Inc. v. Media Insight, WIPO Case No. D2014-0445, the facts of which also concerned a chain of hotels, in which the panel said that where domain names comprised a complainant's distinctive trade mark in combination with descriptive elements such as the location and/or the type of facility (such as "resort" or "hotel") these additional words served to reinforce the perceived connection between the domain names and the complainant's trade mark. The domain names were therefore held to be confusingly similar to the complainant's trade mark.
Each of the disputed domain names comprises the Complainant's distinctive SANDOS trade mark, coupled with the descriptive elements which have the same character as those considered by the panel in Blue Diamond Hotels and Resorts Inc. These elements reinforce the connection which Internet users are likely to make with the Complainant's trade mark and the disputed domain names are accordingly confusingly similar to them.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It has been using the term SANDOS continually since 2001 and this trade mark is associated with the Complainant's image, activities, services and goodwill. The Respondent does not trade as SANDOS nor has it applied for, nor does it own, any trade marks including the word "sandos". The Respondent is not a distributor, reseller or client of the Complainant. The Complainant is fully aware of the activities of the Respondent but never entered into any contractual and/or commercial relationship with it, nor authorised it to use its SANDOS trade mark as a component of the disputed domain names. The use of the disputed domain names creates a high risk of confusion with the Complainant's activities, in that the websites to which the disputed domain names resolve lead Internet users to believe, incorrectly, that the Respondent is affiliated with, or related to, the Complainant.
In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the panel explained that resellers might be able to establish a legitimate interest in a domain name which incorporated the complainant's trade mark if, amongst other considerations, the website to which the domain name pointed accurately disclosed the respondent's relationship with the trade mark owner. The Respondent's websites plainly do not do this and thereby increase the likelihood of confusion being caused to Internet users.
Moreover, the Respondent has registered five disputed domain names, each of which separately references a different hotel of the Complainant. Each website has a section called "Resorts" which displays a link to the rest of the Respondent's websites. This is apt to cause confusion. The Respondent's activities are closer to a "fake booking engine" than a real intermediation service. The burden is for the Respondent to prove that it has a commercial relationship with the Complainant but, even if it can, the use of the Complainant's trade mark without its authorisation cannot be deemed as fair or legitimate. Furthermore, the Oki Data criteria are a narrow exception to the general rule that it is not permissible knowingly to register a domain name that is the same as a third party's trade mark and to use the domain name to direct traffic to a commercial website; see Six Continents Hotels, Inc. v. Helen Siew, WIPO Case No. D2004-0656.
The Complainant asserts, finally, that the disputed domain names were registered and are being used in bad faith. The descriptive words which accompany the Complainant's SANDOS trade mark in each of the disputed domain names establishes that the Respondent was aware of the Complainant and its business as at the date of registration of each disputed domain name. As at the time of registration of the disputed domain names, the Complainant had already registered and used its SANDOS trade mark and its main website at "www.sandos.com" was already operational. The Respondent cannot claim ignorance of the SANDOS trade mark nor avoid the accusation that it has taken unfair advantage of the Complainant's name and goodwill.
The websites to which the disputed domain names point offer consumers the chance of booking a hotel room for which they will voluntarily give personal data, including financial data. This is a fraudulent use of the disputed domain names and an improper way of obtaining illicit revenues, to the prejudice of the Complainant, as well as jeopardising both the Complainant's and its customers' rights and financial security. This reveals undoubted bad faith on the part of the Respondent. The possibility of a misled consumer contacting the Respondent and providing personal details, "easing a fraudulent impersonation is real and plausible" and a transfer of the disputed domain names to the Complainant will preserve both the Complainant's rights and also the security of Internet users. The disputed domain names could be "an excellent way for scammers to practice phishing on consumers' prejudice". Accordingly, "if only for this reason of protection" the disputed domain names should be transferred to the Complainant.
The Respondent says that it is the media division of a wholesale tour operator, Vacation Store, who provides tour operations and travel packages for travel to destinations outside the United States. In its Response it uses "Respondent" to refer to both itself and Vacation Store.
The Respondent does not own or operate any hotels but, as tour operator, books rooms in third party hotels, including those of the Complainant. Vacation Store and the Complainant have had a long-standing business relationship which began in 2006 when the Respondent was first authorized to sell rooms in the Complainant's hotels. The contracts provide for reduced rates in return for the large numbers of bookings made by the Respondent. The websites to which the disputed domain names point do not divert users from the Complainant's business but, in fact, result in substantial bookings for them.
For the purpose of responding to the Complaint, the Respondent does not provide any substantive challenge to the Complainant's assertion that the disputed domain names are confusingly similar to trade marks in which it has rights.
The Respondent says that it is using the disputed domain names in connection with a bona fide offering of goods and services. It has rights or interests in respect of the disputed domain names and the Complainant has licensed or otherwise authorized it to use its trade marks and the websites to which the disputed domain names point. The Respondent has had business dealings with the Complainant for over twelve years. It produces copies of contracts between the Complainant and Vacation Store, starting in 2012, at a time when the Respondent operated web pages on behalf of the Complainant and the Complainant was aware of, and approved, the Respondent's use of those web pages.
The Respondent produces copies of a number of documents to support its contentions, including emails between the parties in which the Complainant provided information for the Respondent to use on its web pages and asked the Respondent to increase the prices listed. In addition, an affidavit is produced from the President of Vacation Store confirming and amplifying the Respondent's assertions in this respect as well as appending various correspondences pointing to the provision of an advertising budget provided by the Complainant to the Respondent for the promotion of its hotels. Moreover, the Complainant provided photographs and other material for the Respondent to use on the web pages to which the disputed domain names pointed. Accordingly, the Complainant has no basis for its assertion that it had not authorized and had not known of the Respondent's use of the disputed domain names.
To the extent that an issue has arisen as to whether the Complainant has been deprived of a remedy to which it might otherwise have been entitled by virtue of its acquiescence in the Respondent's use of the disputed domain names, such issues cannot be determined by a summary process and require a full analysis and consideration by a court; see Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006. If any question of legitimate use turns on its facts, it should be decided by the courts. Moreover, equitable considerations would dictate against the Complainant prevailing. The Complainant has known of the Respondent's use of the websites for many years and it would be inequitable for the Complainant to be able to take over the disputed domain names and websites, which the Respondent has taken a long time to develop.
The Respondent says that the disputed domain names were not registered and used in bad faith. The Complainant has known the Respondent's use of the disputed domain names for twelve years and has provided funding for them. The Respondent reasonably believed that it had the authority to register and use the disputed domain names; see The Bank of Nova Scotia v. Working Word Co-operative Ltd, WIPO
Case No. D2010-0167, where bad faith was not made out when the complainant's agents had been aware of the respondent's registration of the domain name and provided it with information to update web pages.
Finally, the Respondent objects strongly to the Complainant's assertion that it is using the disputed domain names as part of a phishing scam to attempt to obtain illicit revenues. The Respondent says that no evidence at all has been put forward to justify this claim. It points to the established dealings between the Parties and says that there have not been any complaints from any customers claiming fraudulent use of the information given to the Respondent. Moreover, it says that Vacation Store enjoys an A+ rating with the Better Business Bureau.
C. Complainant's Supplemental Filing
The Complainant asserts that the documents on which the Respondent relies as establishing authorization to use the websites came only from the hotel managers who had no authorization to grant sublicenses of the Complainant's trade mark or to permit the Respondent to use its websites. There is no evidence of approval from the trade mark owner or someone explicitly authorized on its behalf to provide approval, nor any evidence of contact between the trade mark owner or the Complainant and the Respondent.
Similarly, the hotel bookings made with the Respondent in respect of the Complainant's hotels were made by booking agents who could not authorize use of the Complainant's copyright, trade marks or other intellectual property.
In addition, it says that affidavits per se cannot be valid evidence in support of the Respondent's allegations.
D. Respondent's Supplemental Filing
The Respondent says that the Complainant's Supplemental Filing does not deny that the Complainant had a business relationship with the Respondent. Furthermore, it has not addressed those documents evidencing the relationship between them which were created by the Complainant.
7. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain names are identical or confusingly similar to a trade mark 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trade mark SANDOS. Each of the disputed domain names includes the Complainant's trade mark in full and is coupled with descriptive content which is likely to increase, rather than diminish, the likelihood that Internet users will associate the disputed domain names with the Complainant's mark.
The Respondent has accepted, albeit only for the purpose of these proceedings, that each of the disputed domain names is confusingly similar to the Complainant's trade mark and the Panel so finds.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, three circumstances by which a respondent might show that it has rights or legitimate interests in a domain name, namely;
(i) before any notice to it of the dispute, it had used or made 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) it had been commonly known by the domain name, even if it had acquired no trade mark or service mark rights; or
(iii) it was making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent's activities do not fall within the circumstances outlined at paragraph 4(c)(ii) or 4(c)(iii) of the Policy; it has not been commonly known by any of the disputed domain names and the disputed domain names point to websites which are clearly commercial in character.
The question of what services might be considered bona fide for the purpose of paragraph 4(c)(i) of the Policy requires more detailed consideration. The decisions of earlier panels which have considered the position of resellers or distributors provide helpful guidance as to the underlying principles which can usefully be applied in circumstances where a respondent asserts that its rights to use a domain name incorporating a complainant's trade mark derive from its business relationship with the complainant. In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the panel set out a number of cumulative requirements which, if present, would indicate that a reseller or distributor had a legitimate interest in a domain name which included the trade mark of the party whose goods or services it was supplying. These were if;
(i) the respondent is actually offering the goods or services at issue;
(ii) the respondent is using its website to sell only the trade marked goods or services;
(iii) the website accurately and prominently discloses the respondent's relationship with the trade mark holder; and
(iv) the respondent must not try to "corner the market" in domain names that reflect the trade mark.
As the Complainant has pointed out, there are two respects in which the Respondent does not meet the Oki Data criteria. First, the websites to which the disputed domain names point do not make it clear that the websites are operated by a company other than the Complainant; save for the words "Vacation Store Miami" which appear in small grey font at the top of each web page, there is nothing in the website content which would enable the Internet user to appreciate that the websites are not actually those of the Complainant. Second, the Respondent has registered multiple domain names, albeit with the respective websites promoting the specific hotel or resort to which the corresponding domain name refers, rather than using a single domain name to point to a website which provides information about all the resorts of the Complainant which it was promoting.
However, there are two other issues which require consideration;
First, the parties have been engaged in a business relationship for a long time. The disputed domain name <sandsoscaracolresorts.com> was registered in 2006 and the remaining disputed domain names in 2007, 2008 and 2010 and 2012 respectively. The Respondent's evidence, which the Panel accepts, is that the parties have been dealing with each other for approximately twelve years.
Notwithstanding that the Complainant has plainly been aware of the form of Respondent's websites for many years, there is no information provided by the Complainant referring to when it first became aware of the Respondent's registration of the disputed domain names, nor whether it has previously objected to their registration or the use to which they have been put, nor any explanation as to why it has now chosen to do so. The Complainant has asserted merely that it was aware of the Respondent but claims that it had never entered into any contractual and/or commercial relationship with it. A more accurate picture of the Parties' relationship has only become evident as a result of the evidence submitted by the Respondent.
Section 4.17 of the WIPO Overview 3.0 considers whether "delay" in bringing a complaint may bar a complainant from filing a case under the Policy. It explains that "Panels have therefore declined to specifically adopt concepts such as laches or its equivalent in UDRP cases. Panels have however noted that in specific cases, certain delays in filing a UDRP complaint may make it more difficult for a complainant to establish its case on the merits, particularly where the respondent can show detrimental reliance on the delay".
In NYLSTAR S.A. v. Domain Administrator, Meryl Blog, WIPO Case No. D2016-0561, the three member panel considered a complaint filed in 2016 in relation to a domain name initially registered in 2003. The majority view of the panel was that "While laches may be an equitable concept, the Majority does not accept that it should be precluded entirely from taking delay into account, in weighing up the merits of a complaint and lengthy delay should, in its view, be a factor which either supports a complaint or in the case of relatively lengthy delay (as here) may work in Respondent's favour. […] In the Majority's view it is not unreasonable that relevant delay can be taken into account. It seems extreme to say as some panels have said that it is irrelevant and cannot even be looked at. Further, the Majority respectfully adopts the position that this is contrary to the Rules, which make it clear that the Panel is able to take any relevant consideration into account particularly principles of law."
In Green Bay Packers, Inc. v. Moniker Privacy Services / Montgomery McMahon, WIPO Case No. D2016-1455, the panel applied a different analysis, albeit one which led in substance to the same outcome for the respondent. The panel expressly declined to apply a doctrine of laches but found that "lengthy delay in seeking legal or administrative remedies may have the effect of undermining a complainant's arguments with respect to the respondent's rights or legitimate interests in a domain name, or the respondent's alleged bad faith in registering and using it".
A substantial delay in bringing proceedings was also considered in Board of Trustees of the University of Arkansas v. FanMail.com, LLC, WIPO Case No. D2009-1139 where the panel commented that "the inordinate delays on the part of Complainant in bringing the Complaint must have seen to the objective observer to add successive years of legitimacy to the use Respondent was making of the Domain Name and legitimacy acquiesced in by Complainant. In such circumstances it is unsafe for the panel to decide as a matter of positive fact that a respondent has no rights or legitimate interests in a domain name".
The Panel considers that the lengthy and unexplained delay by the Complainant, not only in bringing its Complaint but in even objecting to the Complainant's registration and use of the disputed domain names substantially undermines its assertions that the use made by the Respondent of the disputed domain names did not comprise a bona fide offering of goods and services.
Second, the Respondent has produced ample evidence of positive consent by the Complainant to the form and contents of the websites to which the disputed domain names pointed. This includes, by way of example only;
- a sworn statement of the (then) Vice-President of Operations of Vacation Store which asserts that he has known the Complainant's Director of Sales and Marketing for 15 years and that the form of the Respondent's websites was discussed and agreed with him;
- a further sworn statement from the President of Vacation Store asserting that the Complainant and Vacation Store have had a commercial relationship since 2006 which appends contracts between the parties for the period 2012-2017 inclusive. The deponent also asserts that the Complainant provided content for the Respondent to use on its websites and frequently requested updates to the webpages. The deponent says that she was never informed by any representative of the Complainant that Vacation store was not authorized to develop the domain names and web pages to the Complainant's hotels;
- an email from the Complainant dated June 12, 2014 in which the Regional Sales Manager of the Complainant provided the Respondent with fact sheets on its hotels in Mexico containing up to date information on each of them, as well as links from which the Complainant's recent photographs of the resorts could be downloaded;
- an email from the Complainant's Director of Sales and Marketing to the Respondent attaching "the net rate agreements/contracts for our 4 hotels valid for next year" and explaining that, in a following email, the Respondent will receive "a series of photos that you might want to use in the step up of the page(s) for our Sandos Finisterra Los Cabos Resort";
- an email sent by it to the Complainant dated April 30, 2016 with the subject being "Signed Contract between Sandos and Vacation Store of Miami 2016-2017". The Respondent also produces copies of numerous booking schedules of rooms booked by the Respondent at the Complainant's hotels;
- a series of annual requests by it for the Complainant to contribute to its marketing budget which are counter-signed as approved by employees of the Complainant including, in at least one instance, by its Director of Sales and Marketing.
None of this evidence has been the subject of serious challenge in the Complainant's Supplemental Filing. The Complainant has asserted only that "There is no evidence of such approval issued by the trade mark owner and/or somebody explicitly authorised on her behalf to do so" and that "Affidavits per se cannot be valid evidence in support of the Respondent allegations", without suggesting that the contents of the affidavits are in any way incorrect.
But the Complainant's criticism, in any event, misses the point; the volume of material which the Respondent has produced, the frequency and scale of the dealings between the Parties and the length of time over which they were transacted is such that those in authority at the Complainant could not have been unaware that they were transacting with the Respondent, that it owned the disputed domain names and that it was pointing them to websites which promoted their business and solicited bookings. Accordingly, there is ample evidence that the parties actively engaged in business dealings in relation to the Complainant's hotels, including their promotion through the Respondent's websites, and that the Complainant at various points consented to the Respondent's use of the disputed domain names and the form of the websites to which they pointed.
Section 2.8.1 of the WIPO Overview 3.0 explains that the Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant's trade mark. The evidence suggests that this is what has occurred; there has been an agreement between the parties, established through, at least, a course of dealings, which allowed the Respondent to use the disputed domain names.
Accordingly, the combination of substantial delay by the Complainant in bringing its Complaint, coupled with its inability or unwillingness to provide any explanation for that delay, as well as persuasive evidence that the Complainant had at least previously positively consented to the Respondent's use of the disputed domain names, leads the Panel to conclude that the Complainant has not satisfied the obligation of demonstrating, on a balance of probabilities, that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
As the Complainant is required to prove all three elements of paragraph 4(a) of the Policy in order to succeed in its Complaint, it is not necessary to consider the parties submissions in relation to bad faith registration and use.
Finally, the Panel endorses the concerns expressed on behalf of the Respondent that the assertions made by the Complainant of serious wrongdoing on the part of the Respondent were both unjustified and inappropriate, not least when the Complainant was well aware of its commercial dealings with the Respondent over many years and, misleadingly, chose to exclude all reference to them in its Complaint.
On the facts of this case, the Panel does not have sufficient information to conclude that the Complaint was brought in bad faith or that it was brought primarily to harass the Respondent. Accordingly, it does not make a finding of Reverse Domain Name Hijacking under Paragraph 15(e) of the Rules. However, conduct of this nature is firmly to be discouraged.
For the foregoing reasons, the Complaint is denied.
Date: April 11, 2018