WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Palace Resorts S.A. de C.V v. Super Privacy Service LTD c/o Dynadot, DYNADOT LLC
Case No. D2018-2603
1. The Parties
The Complainant is Palace Resorts S.A. of Cancun, Quintana Roo, Mexico, internally represented.
The Respondent is Super Privacy Service LTD c/o Dynadot of San Mateo, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <thepalaceresorts.com> (the “Disputed Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2018. On November 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 14, 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. In response of a clarification request from the Center, the Complainant filed an amendment to the Complaint on November 22, 2018. The Complainant sent an email communication to the Center on November 21, 2018. The Complainant filed an amendment to the Complaint on November 22, 2018. The Complainant sent additional email communications to the Center on November 22 and 23, 2018. The Complainant filed an amended Complaint on November 24, 2018.
The Center verified that the Complaint together with the amendment to the Complaint and 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 November 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2018.
The Center appointed Nick J. Gardner as the sole panelist in this matter on January 4, 2019. 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 Complaint is lacking in information in multiple respects. Very little information is provided about the Complainant or its business. This is discussed further below. The Complaint does identify that the Complainant’s principal website is linked to the domain name <palaceresorts.com> which it has owned since 1996. The Panel has, pursuant to its general powers, visited that website (on the topic of panel’s independent research, see section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). It appears from the content at that website that the Complainant operates a number of luxury hotels most of which are in Mexico. There appear to be ten hotels in total most of which contain the word “palace” in their name (e.g., “Beach Palace”, “Cozumel Palace”, and so on). Each hotel appears to promote itself under its own name while the Complainant promotes its hotels collectively as “Palace Resorts”. The website bears a stylized logo incorporating the words “Palace Resorts” with what may be an ® sign alongside (it is very small and somewhat blurred) possibly suggesting a registered trademark may exist.
The Disputed Domain Name was registered on August 8, 2018. The evidence filed with the Complaint shows that it used to resolve to a web page which contained an image of a beach at sunset with text that contained various references to “Palace Resorts” and the text “the future home of Palace Resorts quite cool. Check back soon”. The page also contained a box indicating the Disputed Domain Name was for sale via the SEDO marketplace and a further footer indicating it was for sale for 19,998 Euros. The Disputed Domain Name now resolves to a website called “thepalaceresorts, GOA AND YANAM – India” which contains the text “Notice: ThePalaceResorts.com is not related or affiliated with Palace Resorts S.A. de C.V. (Mexico) We are about to launch our resorts in Panaji - Goa and Yanam – India around July 2019”.
Emails were sent to the Complainant on 9 August 2018 and October 27, 2018 from two different email accounts, neither being in the name of the Respondent, each drawing the Complainant’s attention to the Disputed Domain Name and the fact it was available for sale each saying in substance “I thought you might be interested in it”.
5. Parties’ Contentions
The Complainant’s case is expressed in a very brief manner (see further the discussion below). It is simplest to quote it verbatim:
“A. The domain name(s) is(are) identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(Policy, Paragraph 4(a)(i), Rules, Paragraphs 3(b)(viii), (b)(ix)(1))
The domain ‘thepalaceresorts.com’ is very similar to the official domain name of Palace Resorts which is ‘palaceresorts.com’. Dynadot offers this specific domain on a higher price than other similar domains showing the bad faith on the domain name registration. In addition, Palace Resorts received two emails that notified the existence of the domain ‘thepalaceresorts.com’ as soon as the domain was registered, the cyber actor that sent the emails used different emails accounts and different alias as well. The emails could be evidence of bad faith because had the same text that involves the selling of the domain ‘thepalaceresorts.com’ and the possibility that Palace Resorts group could be interested on the buying of the domain at a price that is way above of a regular one.”
“B. The Respondent has no rights or legitimate interests in respect of the domain name[s];
(Policy, Paragraphs 4(a)(ii), 4(c), Rules, Paragraph 3(b)(ix)(2))
Super Privacy Service LTD c/o Dynadot has no relation with the name ‘Palace Resorts’ and the respondent is setting the price of ‘thepalaceresorts.com’ based on the reputation of Palace Resorts’ hotels brand.”
“C. The domain name(s) was/were registered and is/are being used in bad faith.
(Policy, Paragraphs 4(a)(iii), 4(b); Rules, Paragraph 3(b)(ix)(3))
The domain thepalaceresorts.com is being offered on the primary site of DYNADOT LLC for sale at a higher price than the average cost of a domain in the site, in addition Palace Resorts received emails of bad faith that notified the existence of the sale of the domain ‘thepalaceresorts.com’. The cyber actor behind the emails sent two emails one in August and the other one in October.”
The Complainant also annotated a screenshot of its own website with the text ‘This is the official site of the Palace Resorts group, as you can see in the screenshot, the domain ‘thepalaceresorts.com’ uses the same name and probably some cyber actor bought the domain ‘thepalaceresorts’ in bad faith to sell the domain to the Palace Resorts group and take advantage of the situation making more money reselling the domain’. In addition it annotated a screenshot of various other domain names the Respondent was selling with the text “This is the evidence of the domain sale in bad faith, because the other similar domains are cheaper against the ‘thepalaceresorts’ domain”.
No Response has been filed.
6. Discussion and Findings
A. Nature of the Complaint
This case is not straightforward because of the manner in which the Complaint has been prepared and the fact that in some respects it lacks important information. The Complaint appears to have been prepared by taking the model complaint, which the Center makes available as a pro-forma electronic template, and then inserting additional text without (in some cases) deletion of the guidance text provided in the template. Thus by way of example paragraph 10 of the amended Complaint reads as follows:
“To the best of the Complainant’s knowledge, the language of the Registration Agreement is spanish, a copy of which is provided as Annex 2 - Ownership of the brand Palace Resorts.pdf to this Complaint. The Complaint has been submitted in english / [pursuant to an agreement between the parties stipulating that English should be the language of the administrative proceeding, a copy of which is provided as Annex 2 - Ownership of the brand Palace Resorts.pdf / [The Complainant requests that the language of proceedings be English and provides the following supporting arguments and evidence.] […]”
This paragraph makes little sense. Despite what is said, Annex 2 to the Complaint is not the registration agreement. The registration agreement has not been provided to the Panel so it cannot tell whether or not that agreement it is in Spanish, although the Registrar’s confirmation sent by the Registrar to the Center indicated that the registration agreement was in English. Annex 3 to the Complaint appears to be a document prepared by the Registrar in English which in effect sets out the Policy and states that it is incorporated by reference into the registration agreement. Annex 2 to the Complaint is a document in Spanish which appears to be a 2018 communication from the Mexican Intellectual Property Office to the Complainant confirming registration of Mexican trademark number No. 962897. The Panel cannot discern from that document what the trademark in question actually comprises. Despite what the Complaint says the Panel has not been provided with any agreement in English between the Complainant and the Respondent nor does it seem likely such a document exists given the nature of the other allegations made by the Complainant. Overall, the Complaint is difficult to follow. Whilst the general thrust of the Complainant’s case is clear, that case is lacking important information which is essential to the case, in particular as to the trademark(s) relied upon (see discussion below).
B. Lack of Response
The Panel has approached this case by trying to make as much sense as possible of the Complaint as filed, despite its deficiencies. In doing so the Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice to Respondent”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
C. Substantive Requirements
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The Disputed Domain Name is identical with 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;
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
D. Identical or Confusingly Similar
The Complainant’s case here is expressed in a single sentence, as follows: “The domain ‘thepalaceresorts.com’ is very similar to the official domain name of Palace Resorts which is ‘palaceresorts.com’.” No other information is provided. The Panel has no difficulty in agreeing with what the Complainant has said but the difficulty is that the Complainant also needs to show that the similarity is to “a trademark or service mark in which the Complainant has rights”. The Complaint does not attempt to identify what trademark is relied upon and whether it is registered or not. The Panel infers that the Complainant is likely to be asserting rights in the words “Palace Resorts” but no information is given in this regard. The words “palace” and “resorts” are two ordinary English words. The Panel considers it is entirely possible that trademark rights (registered or otherwise) may subsist in such words particularly if substantial use of the words as a trademark has taken place so that a significant reputation attaches to them. The annexes to the Complaint do not assist – as discussed above Annex 2 to the Complaint appears to be an official communication regarding a Mexican registered trademark but the Panel cannot discern what the trademark in question actually comprises. The Complainant’s website as visited by the Panel (see above) would seem to indicate that a case properly explaining the trademark rights in question could be made out. However the information actually set out in the present Complaint falls very considerably short of establishing what is required in this regard. It is not the function of the Panel to carry out its own research to fill in obvious gaps in the case the Complainant should have made out. That is particularly so in circumstances where, for whatever reason, the Respondent has not filed a Response – if the Panel were to add substantively to the material the Complainant has provided the Respondent would necessarily have to be afforded an opportunity to comment upon it – and the procedure under the Policy is not intended to allow that type of extended process to be followed.
Accordingly and with some reluctance the Panel concludes that the Complainant has failed to establish that the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights. It seems to the Panel that this is a case where those completing the Complaint may have misunderstood the Policy and what information the Complaint should have included. In all the circumstances the Panel has no choice but to dismiss this Complaint but will do so without prejudice to the Complainant’s right to file a further complaint in respect of the same facts and matters, such a complaint to contain adequate information about the Complainant’s case generally, and in particular as to the trademark rights relied upon. The Panel would respectfully suggest that in preparing any such further Complaint, the Complainant pays attention to ensuring it sets out fully all the details and evidence it wishes to rely upon, and that it makes sure it adapts any model template it uses so as to prepare a complaint which makes sense and avoids inconsistencies.
E. Rights or Legitimate Interests
In view of the Panel’s conclusion under D above it is not necessary to reach a conclusion on this issue.
F. Registered and Used in Bad Faith
In view of the Panel’s conclusion under D above it is not necessary to reach a conclusion on this issue.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Complaint be dismissed, such dismissal to be without prejudice to the Complainant’s right to file a further complaint in respect of the same facts and matters, such a complaint to contain adequate information about the Complainant’s case generally and in particular as to the trademark rights relied upon.
Nick J. Gardner
Date: January 7, 2019