WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CMB Management Limited v. 1&1 Internet Limited, 1&1 Internet Limited / Ben Mason
Case No. D2018-0766
1. The Parties
The Complainant is CMB Management Limited of Belize City, Belize, represented by Anthony Jacobs, United States of America.
The Respondent is 1&1 Internet Limited, 1&1 Internet Limited of Gloucester, United Kingdom of Great Britain and Northern Ireland / Ben Mason of London, United Kingdom of Great Britain and Northern Ireland,
2. The Domain Name and Registrar
The disputed domain name <belizeoceanclubresort.com> is registered with 1&1 Internet SE (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 5, 2018. On April 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2018, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 17, 2018.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 9, 2018.
The Center received a communication from the Respondent on May 10, 2018.
The Center appointed Luca Barbero as the sole panelist in this matter on May 16, 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 owns and operates a resort in Belize named Belize Ocean Club, which is promoted through the website "www.belizeoceanclub.com", where the Complainant offers online booking, information, photos and guides, as well as other marketing and promotional material.
The Complainant owns the Belize trademark registration No. 13285.17 for BELIZE OCEAN CLUB ADVENTURE RESORT (word mark), filed on January 3, 2017 and registered on July 21, 2017, for hotel services and hotel reservations in class 43.
The Complainant's domain name <belizeoceanclub.com> was registered on September 8, 2010.
The disputed domain name <belizeoceanclubresort.com> was registered on December 12, 2017 and is currently pointed to a landing page indicating that the website has been suspended. According to the evidence provided by the Complainant and not contested by the Respondent, the disputed domain name was previously pointed to a website which reproduced contents available on the Complainant's website "www.belizeoceanclub.com".
5. Parties' Contentions
The Complainant states that the disputed domain name fully incorporates its name Belize Ocean Club Resort, even though there is only one existing Belize Ocean Club, which is the property that the Complainant owns and operates.
The Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain name because:
i) the Complainant has not authorized the Respondent to use its trademark BELIZE OCEAN CLUB ADVENTURE RESORT;
ii) the fact that the Complainant's trademark is featured on the website to which the disputed domain name resolves creates an incorrect impression that the services provided by means of said website are related to, or authorized by the Complainant;
iii) the Complainant's website, to which the disputed domain name resolves, does not accurately disclose that the Respondent does not have any relationship with the Complainant, and thus that the services offered by means of said website cannot be made in good faith;
iv) the Respondent is actively creating the impression that it is affiliated with the Complainant;
v) the Respondent is not, and has not been, commonly known by the disputed domain name;
vi) the Respondent's intention is to misleadingly divert customers by trying to create an impression of affiliation between the Respondent and the Complainant's services by using the Complainant's copyrighted logo and, until April 2018, a fully cloned copy of the Complainant's website.
The Complainant further states that the Respondent's bad faith registration and use of the disputed domain name can be inferred from the following circumstances:
i) the Respondent is actively using the Complainant's trademarks and is making reference to the Complainant's services, which shows that the Respondent was aware of the Complainant's trademark;
ii) the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or of the services provided by the Respondent by means of the website to which the disputed domain name resolves.
The Respondent did not submit a timely Response to reply to the Complainant's contentions.
After the notification of the Respondent's default, the Respondent sent an email communication to the Center, stating that it contested the Complainant's claims and that it had purchased the disputed domain name legitimately.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the trademark BELIZE OCEAN CLUB ADVENTURE RESORT based on the trademark registration cited under Section 4 above.
As stated in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), "The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant's trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name".
A visual comparison between the Complainant's trademark BELIZE OCEAN CLUB ADVENTURE RESORT and the disputed domain name <belizeoceanclubresort.com> clearly shows that the latter incorporates the majority of the words ("belize", "ocean", "club" and "resort") encompassed in the Complainant's trademark, with the sole exception of the term "adventure", which has been omitted.
The Panel finds that the terms incorporated in the disputed domain name constitute the core of the Complainant's trademark, and that the omission of the dictionary word "adventure" is not sufficient to distinguish the disputed domain name from such trademark.
Therefore, the Panel concludes that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie case and that the Respondent has failed to provide any evidence to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.
According to the records, there is no relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain name.
Moreover, there is no evidence that the Respondent might have been commonly known by the disputed domain name or that it might have used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use before receiving any notice of the dispute.
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.
The Panel finds that, in light of: i) the prior registration and use of the Complainant's trademark BELIZE OCEAN CLUB ADVENTURE RESORT in connection with the Complainant's hotel services, ii) the confusing similarity of the disputed domain name with the Complainant's trademark, and iii) the references to the Complainant which were previously available on the Respondent's website according to the records, the Respondent very likely registered the disputed domain name having the Complainant's trademark in mind.
With reference to the use of the disputed domain name, the Panel notes that is currently pointed to a landing page indicating that the website has been suspended. However, it is well established that passive holding of a domain name could amount to bad faith under certain circumstances as decided, i.a., in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In the case at hand, in view of the absence of any documented rights or legitimate interests of the Respondent in the disputed domain name and of the prior use of the disputed domain name to redirect users to a website reproducing contents taken from the Complainant's website (as demonstrated by the documents submitted by the Complainant and not contested by the Respondent), the Panel finds that the current passive holding of the disputed domain name does not prevent a finding of bad faith registration and use.
Therefore, the Panel finds that the Complainant has also proven the requirement prescribed by 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 <belizeoceanclubresort.com> be transferred to the Complainant.
Date: May 30, 2018