WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Royal Caribbean Cruise Lines, Ltd. v. Alberto Antonio Rincon Toribio

Case No. D2018-2305

1. The Parties

The Complainant is Royal Caribbean Cruise Lines, Ltd. of Miami, Florida, United States of America (“USA”), represented by Carey Rodriguez Milian Gonya, LLP, USA.

The Respondent is Alberto Antonio Rincon Toribio of Santo Domingo, Dominican Republic, self-represented.

2. The Domain Name and Registrar

The disputed domain name <royalcaribbeansolutions.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2018. On October 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 12, 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. On October 17, 2018, the Complainant submitted an amended Complaint.

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 October 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2018. On October 18, 2018 and October 19, 2018, the Respondent submitted two informal emails. On October 22, 2018, the Center notified the Parties that if they wish to explore settlement options, the Complainant should submit a request for suspension by October 29, 2018. The Complainant did not request for suspension. The Respondent did not submit a formal Response by the specified due date. On November 8, 2018, the Center notified the Parties that it would proceed with panel appointment process.

The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on November 12, 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 the owner of the ROYAL CARIBBEAN trademark in the USA with registration number 1,397,148 and registered on June 10, 1986. However, the trademark has been in use since 1970 in connection to travel cruises.

The disputed domain name <royalcaribbeansolutions.com> was registered on September 3, 2018. The disputed domain name resolved to a website in connection to travel vacation services. The Respondent suspended the website to which the disputed domain name directed once the Complaint was received.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <royalcaribbeansolutions.com> fully incorporates the ROYAL CARIBBEAN mark with the addition of a generic word, that is to say “solutions”. Such an addition does not affect a finding of identity or confusing similarity to the Complainant´s trademark in the terms of the Policy.

With regard the second element, the Complainant alleges that the Respondent has no rights or legitimate interests. The Respondent is not a licensee of the Complainant, nor the Respondent has been otherwise authorized to use ROYAL CARIBBEAN mark for any purpose. Further, the Respondent is not commonly known as “royalcaribbeansolutions”.

The Complainant also points out that the disputed domain name directs users to a website for vacation travel services while the Complainant provides travel services related to cruises.

The Complainant argues that the Respondent registered and used the disputed domain name in bad faith. Indeed, the Respondent knowingly registered the disputed domain name of a well-known trademark to capitalize on consumer recognition of the ROYAL CARIBBEAN mark. Such a recognition and distinctiveness makes unlikely that the Respondent devised the term “royalcaribbeansolutions” on its own.

The Complainant also alleges that the Respondent is using in bad faith the ROYAL CARIBBEAN trademark when providing a memorandum to customers in an attempt to pass off or deceive potential customers of authorization by and/or affiliation with the Complainant.

Moreover, the Respondent registered and is using the disputed domain name primarily to profit from and exploit the Complainant’s ROYAL CARIBBEAN mark. The Respondent is using the disputed domain name to misdirect Internet users to its own website. Paragraphs 4(b)(iii) and (iv) of the Policy provide that a complainant may establish that the registration and use of a domain name was in bad faith by showing that by using the domain name, the respondent attempted to intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the complainant’s marks as the source of the website or of a product or service on that website.

B. Respondent

As set out above, the Respondent did not submit a formal response. However, two informal emails were received by the Center. One, alleging not to be the owner of the disputed domain name and advising the Center that it would direct the claim to the corresponding owner of the disputed domain name, and the second where the Respondent states to have received orders from the owner of the disputed domain name to suspend the site. The Respondent came forward with evidence of suspension of the site through a screenshot.

6. Discussion and Findings

In order for the Panel to decide to grant the remedy requested of the disputed domain name to the Complainant, it is necessary that the Complainant proves, as required by paragraph 4(a) of the Policy, that:

(i) the disputed domain name is identical or confusingly similar to a trademark 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; and

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

A. Identical or Confusingly Similar

The Complainant has made continuous use of its marks since 1970. Further, the Complainant has provided evidence of its registration since 1986. The Panel is satisfied that the Complainant has rights in the ROYAL CARIBBEAN trademark.

It is clear from a side-by-side comparison of the disputed domain name <royalcaribbeansolutions.com> and the ROYAL CARIBBEAN trademark that the latter is recognizable within the disputed domain name. The addition of a descriptive term, such as “solutions”, does not prevent a finding of confusing similarity.

Moreover, it is well established that generic Top-Level Domains (“gTLDs”), as such “.com”, are typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.

The Panel, therefore, concludes that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent is not and has not been commonly known by the disputed domain name, nor has it been licensed or otherwise authorized to use the Complainant’s ROYAL CARIBBEAN mark. Further, the Panel takes also into consideration the Complainant’s allegation that the site to which the disputed domain name resolved offered vacation services similar to those offered by the Complainant.

According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.: “[W]here a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.”

The informal emails of the Respondent with the limited evidence provided, do not demonstrate rights or legitimate interests in the disputed domain name pursuant the Policy paragraph 4(c). On the contrary, the Panel finds that the Respondent’s denial of it being the registrant and agreeing to the suspension of the site, show its lack of rights or legitimate interests. The Respondent did not rebut the prima facie case and therefore no allegations or evidence has been put forward to the Panel to undermine the Complainant’s allegations.

In the circumstances, the Panel finds that the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain name to the satisfaction of the Policy.

C. Registered and Used in Bad Faith

Upon the information in the file, the ROYAL CARIBBEAN trademark is well known. The Respondent registered the disputed domain name forty-eight years after the first use of the ROYAL CARIBBEAN trademark. The disputed domain name wholly incorporates the Complainant’s ROYAL CARIBBEAN trademark and later the Respondent used the logo in a corresponding business memorandum with its clients. Accordingly, the Respondent knew or should have known about the Complainant’s trademark when registering the disputed domain name.

The Panel now looks at how the disputed domain name has been used. The Panel finds that the composition of the disputed domain name effectively impersonates or suggests sponsorship or endorsement by the Complainant, in an attempt to give the impression of being an authorized dealer or otherwise affiliated to the Complainant. In the Panel´s view, this impersonation is the most likely source of traffic that the disputed domain name would generate. One of the examples of bad faith registration and use is paragraph 4(b)(iv) of the Policy if the Respondent “intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location”. The memorandum produced by the Complainant reinforces such a conclusion.

Further, currently the disputed domain name resolves to an inactive site as evidenced by the Respondent. In these circumstances registration and use in bad faith may also be found according to the principles established in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 in case of “passive holding”.

Accordingly, the Complainant has established the third element of the Policy.

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 <royalcaribbeansolutions.com> be transferred to the Complainant.

Manuel Moreno-Torres
Sole Panelist
Date: November 22, 2018