WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grupo Posadas, S.A.B. de C.V. v. Media Insights
Case No. D2019-0196
1. The Parties
The Complainant is Grupo Posadas, S.A.B. de C.V. of Mexico City, Mexico, represented by Santamarina y Steta, Mexico.
The Respondent is Media Insights of Miami, Florida, United States of America (“United States”), represented by Gaebe, Mullen, Antonelli & Dimatteo, United States.
2. The Domain Name and Registrar
The disputed domain name <aquacancunresort.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 January 25, 2019. On January 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 28, 2019, 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 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 February 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 27, 2019. The Response was filed with the Center on February 27, 2019.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on March 18, 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 Complainant owns and operates what it says are famous and well-known hotels located in several parts of Mexico under the LIVE AQUA brand and trademark. The Complainant is the owner of a large variety of trademarks featuring said mark in both word and figurative/stylized versions, predominantly in Mexico and the United States, and one of the earliest registrations appears to be a Mexican registered trademark for the mixed word and figurative mark LIVE-AQUA and design, registered No. 872725, registered on March 23, 2005 in class 43 for food and drink services and temporary accommodation. The said mark appears to have been originally registered in the name of Posadas Venture B.V. of the Netherlands and was assigned to Grupo Posadas S.A. de C.V. on October 11, 2006. The latter appears to have changed its legal status to become the Complainant, Grupo Posadas S.A.B. de C.V. in around December 2007. One of the Complainant’s earliest United States registered trademarks appears to be no. 3953173, registered on May 3, 2011, claiming priority dating from August 31, 2009 on the basis of a Mexican registered trademark.
The disputed domain name was created on June 1, 2007. The Respondent says that it is the media division of a wholesale tour operator, Vacation Store, which offers tours and travel packages for travel to destinations outside the United States. The Respondent produces affidavits which state that the Respondent has registered domain names and operated web pages on behalf of Vacation Store since 2004, pursuant to agreements between Vacation Store and the various hotel chains with which it has contracts.
In the first affidavit, George Alvarez, the Respondent’s President, states that he was unaware of any trademarks registered by the Complainant when the disputed domain name was created in 2007 and that, following such creation, the Complainant provided photographs and fact sheets to be used on the associated website. Said affidavit goes on to note that Mr. Alvarez only became aware of the Complainant’s marks upon the filing of the present Complaint and asserts that the Complainant’s Mexican trademark from 2005 is only for a design mark. Mr. Alvarez adds that the Complainant never advised that the Respondent was not authorized to use the disputed domain name even though the Complainant has been aware of it since 2007.
In the second affidavit, Rosanna Metz-Mendez, the President of Vacation Store, alleges that the Complainant and Vacation Store have been doing business with one another for twenty years and that, throughout this time, the Complainant has been aware of the Respondent’s websites, has provided consent to use material on said websites and has frequently requested updates. Ms. Metz-Mendez goes on to allege that, “at some point in time”, the Complainant did not renew its contract with Vacation Store, such that the latter began to sell the Complainant’s hotels via an affiliate named GOGO Tours, with which it has had a thirteen year relationship, adding that Vacation Store is thereby authorized to use the trademarks, logos, photos and content of the resorts which it promotes. Ms. Metz-Mendez explains that the Complainant is aware of such affiliate status due to the nature of the bookings which it receives.
In an email dated November 26, 2018, one of the Complainant’s members of staff contacted Vacation Store using the subject line “Live Aqua Boutique Resort Playa del Carmen | Update room photos” stating “We need you to help us updating [sic] the following room photos of the Live Aqua Boutique Resort Playa del Carmen in your website […]” referring to the domain name <lat20liveaquaplaya.com>. The member of staff’s job title or seniority is not specified. It appears that Vacation Store responded to this message, in that another email is produced which features the same subject line and was issued on the same date. This email was issued from <email@example.com>, a different email address to that of the recipient of the original email, and was also addressed to a different email address to that of the sender of the original email. Such email merely stated “We will also update [the disputed domain name]”. The Respondent does not explain the significance or relevance of the different email addresses in the apparent response other than to say that the first email came from “a representative of Live Aqua” and that Vacation Store issued the second email to “the Live Aqua’s representative”.
The Respondent produces a copy of an agreement between Vacation Store and GOGO Vacations, a New York corporation, covering the calendar year 2013 whereby Vacation Store, designated as “Travel Agent”, will receive commission from GOGO Vacations in respect of various package holidays which it sells. Clause 16 of the said agreement states that Vacation Store shall not use names, trademarks, service marks, copyrights or logos of GOGO Vacations or any of its affiliates in any advertising or promotional material without the prior written consent of GOGO Vacations, which may be granted or withheld in its absolute discretion.
The Respondent produces an email from a “Team Leader” at GOGO Vacations dated March 18, 2016 which confirms that Vacation Store books hotel packages with GOGO Vacations and has been a business partner for the past ten years. The Respondent also produces sample bookings made by Vacation Store in association with GOGO Vacations for accommodation in LIVE AQUA branded hotels issued on March 5, 2018, April 12, 2018, June 18, 2018, August 22, 2018, September 25, 2018, November 19, 2018, and December 10, 2018.
Screenshots of the website associated with the disputed domain name produced by the Complainant are headed with the word AQUA in a form which matches the stylized typeface used in the Complainant’s LIVE AQUA marks. Due to the limited quality of the Complainant’s screenshots for the remaining content, which has not rendered well when printed, the Panel has also visited the website at the disputed domain name. The Panel noted that the stylized word AQUA is no longer present on the website, which is now headed “VACATION STORE MIAMI®” in small grey letters followed by the words “LIVE AQUA CANCUN” in larger blue text. The website describes the “Live Aqua Beach Resort Cancun All Inclusive Adults Only” as a “unique and innovative hotel experience”, adding “This ‘Be Yourself’ hotel offers relaxed luxury […]”. At the bottom of the page is a sign “®Vacation Store Miami” [sic] which is also a hyperlink redirecting to the same webpage. The “Contact Us” link points to a page providing contact details for Vacation Store Miami and provides a map referencing what appears to be one of the Complainant’s hotels under the text “Live Aqua Beach Resort Cancun”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant submits that the disputed domain name is identical or confusingly similar to the Complainant’s LIVE AQUA mark, which it notes has been registered since 2005, adding that the mark refers to several famous and well-known hotels located in various parts of Mexico. The Complainant states that the LIVE AQUA homepage is located at “www.liveaqua.com” and that this displays information regarding bookings at the preferred hotel. The Complainant submits that the LIVE AQUA mark is heavily advertised and promoted on the Internet, and on radio, television, and print media. The Complainant asserts that the webpage associated with the disputed domain name makes reference to the Complainant’s LIVE AQUA hotel located in Cancun, Mexico.
The Complainant asserts that the Respondent has not used the disputed domain name for a legitimate noncommercial or fair use. The Complainant submits that the Respondent was familiar with the notoriety of the Complainant’s marks and intentionally registered the disputed domain name without the Complainant’s authorization to profit from the fame and goodwill associated therewith. The Complainant adds that the Respondent intended to make consumers believe that the Respondent’s website content was legitimate and supported by the Complainant. The Complainant adds that it used its said mark for hospitality services before the Respondent registered the disputed domain name.
The Complainant states that the disputed domain name was registered in bad faith because, after registering the disputed domain name, the Respondent included information on the associated website relating to the Complainant’s LIVE AQUA hotel situated in Cancun and is misleading the Complainant’s clients and consumers that the disputed domain name and the associated website content are authorized and original when they are not.
The Respondent notes that it is the media division of a wholesale tour operator named Vacation Store. The Respondent says that it sells travel packages to destinations outside the United States under contractual arrangements with airlines, hotels, and other travel or tour companies which allow it favorable net rates. The Respondent explains that it and other such operators make a profit by putting services together into packages and selling these on to travel agencies at an increased rate. The Respondent claims a long standing business relationship with the Complainant including contracts that began in 2000, providing for reduced rates based on the large number of rooms which the Respondent books with the Complainant. The Respondent explains that it has no interest in any hotels and is only a tour operator and media division which books rooms with various hotels. The Respondent argues that this does not divert users or any business from the Complainant and that, on the contrary, the Complainant has derived a substantial economic benefit from the Parties’ relationship.
The Respondent asserts that it has had contracts to sell hotel rooms with LIVE AQUA branded hotels since 2007. Pursuant to such contracts, the Respondent asserts that it has been authorized to use the Complainant’s marks and logos in its web pages. The Respondent argues that, as a travel agent, there would be no benefit in it taking the Complainant’s customers away from the Complainant.
The Respondent argues that the Complainant has failed to meet its initial burden as the Complainant’s mark and the disputed domain name are not identical or confusingly similar. The Respondent notes that the test is confined to a comparison of the disputed domain name and the trademark alone and that the content of the website must be disregarded. The Respondent notes that the Complainant’s trademark is LIVE AQUA and argues that the disputed domain name contains generic terms which are not protected, noting that countless web pages use the words “aqua”, “cancun” [sic] and “resort” in their domain names, adding that George Alvarez, Vice-President of Operations of Vacation Store, owns over 20 United States trademarks which incorporate those words, referring to an affidavit provided by Mr. Alvarez with the Response. The Panel notes in passing that such affidavit claims 20 United States trademarks incorporating the terms “Cancun”, “resort” or both but does not refer to “aqua” and does not specify these trademarks in any greater detail.
With reference to an affidavit from Rosanna Mertz-Mendez, the President of Vacation Store, the Respondent asserts that the Complainant has been aware of the website associated with the disputed domain name due to the Parties’ business dealings for over 20 years. The Respondent notes from the documentation associated with said affidavit that a representative of the Complainant had requested that the Respondent update its web pages and provided information to use thereon. The Respondent also asserts with reference to said affidavit that the Complainant has provided photographs and fact sheets to the Respondent to allow it to make changes to said web pages.
The Respondent notes that “at some point in time” the Parties no longer entered into individual contracts for various resorts, adding that Vacation Store then became the affiliate of an organization named GoGo Tours to promote the Complainant’s resorts. The Respondent asserts that via such affiliate arrangement, the contract dating from 2013 for which it produces, Vacation Store was authorized to promote such resorts and to use promotional materials supplied by the Complainant (the Panel notes in passing that the contract produced specifically prevents the Respondent from using the trademarks of GoGo Tours or its affiliates, and the use of any such promotional material, without the prior written consent of GoGo Tours, which consent has not been produced by the Respondent).
The Respondent also refers to various bookings in the Complainant’s hotels which are annexed to the said affidavit. The Respondent notes that these indicate that Vacation Store was the agency booking trips through GoGo Tours to the Complainant’s resorts and argues that it is thereby apparent that the Complainant knew of the use of “the domain names” [sic] and authorized these, provided economic benefits to the Respondent and that the Complainant derived economic benefits therefrom. The Respondent explains that it was responsible for the overall page structure of said websites and asserts that the Complainant authorized the Respondent to use the Complainant’s copyrighted materials in such websites, provided access to such materials and enabled the Respondent to obtain the Complainant’s marks and logos directly from the Complainant, also providing photographs and fact sheets to incorporate into such websites. The Respondent asks how the Complainant could claim that it did not authorize or was unaware of the Respondent’s use of the “domain names” in these circumstances.
The Respondent asserts that it has a legitimate interest in the disputed domain name due to its making a bona fide offering of goods and services thereby, noting that this is expressly provided for within the Policy and emphasizing that it has used the disputed domain name over eleven years without complaint by the Complainant and likewise with the permission of the Complainant to use its marks and logos on the corresponding website. The Respondent argues that it had reasonable grounds to consider that its use of the disputed domain name was fair and lawful and that issues as to acquiescence and fair use have arisen which are best determined by the Courts.
The Respondent contends that there was no bad faith on its behalf given the authorization provided by the Complainant to sell rooms at the Complainant’s hotels. The Respondent suggests that equitable considerations dictate against the Complainant prevailing because it has known of the use of the disputed domain name and actively encouraged the Respondent to promote this for years. The Respondent argues that as it is a reseller of the Complainant’s hotels it is permitted to use the disputed domain name according to existing Policy jurisprudence, adding that there is no dispute that the disputed domain name is used solely to sell the Complainant’s hotel rooms. The Respondent notes that it was responsible for the overall page structure of the corresponding website but that other materials were provided by the Complainant and, further, that the Complainant requested that these pages be updated with new materials such that it could not claim to be unaware of the disputed domain name.
The Respondent argues that the disputed domain name was not registered in bad faith and in particular that it was registered prior to the existence of the Complainant’s trademark and after the related website had been used for many years to promote the Complainant’s hotel. The Respondent states that the Complainant provided advertising budgets to the Respondent to promote such website, that the Respondent has expended substantial resources in doing so and that the Complainant received income from such efforts. The Respondent submits that the Complainant’s failure to protect its mark timely should bar the Complainant from the present proceeding and that, in any event, the Complainant has failed to demonstrate registration and use in bad faith.
The Respondent argues that it reasonably believed that it had the authority to register and operate the disputed domain name due to the materials provided by the Complainant and instructions from the Complainant to update the website. The Respondent notes that Policy precedent indicates that if a domain name is registered with the knowledge of agents of a complainant and that such agent provides a respondent with information on updating web pages and makes specific update requests, such complainant cannot prove bad faith. The Respondent points out that in the present case it was the Complainant itself which provided such information and made specific requests, and not its agents.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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 first element of the Policy requires the Complainant to demonstrate rights in a trademark and that the disputed domain name is identical or confusingly similar to such trademark. The Complainant relies upon its LIVE AQUA trademarks and the Panel accepts that it has UDRP-relevant rights in these. The Respondent argues that because the Complainant’s mark is figurative in nature it should not be allowed to rely upon it. However, the Complainant holds both figurative, word, and mixed registered trademarks in the term LIVE AQUA and any of these, even if post-dating the registration of the disputed domain name, are sufficient for present purposes. With regard to figurative or mixed marks, the Panel considers it relatively straightforward to sever any design or stylized elements from the underlying words (see section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) for a discussion of this topic).
The Panel turns to compare the LIVE AQUA mark to the disputed domain name. The latter appears to contain three elements, namely, “aqua”, “cancun”, and “resort”, noting that the generic Top-Level Domain (“gTLD”), in this case “.com”, is typically disregarded in the comparison exercise under the first element of the Policy on the grounds that this is wholly generic and required for technical purposes only. Accordingly, only the single element AQUA is found in both the mark and the disputed domain name.
The Respondent is correct that the website to which a domain name is pointed is not normally considered in the first element comparison exercise. However, it is incorrect to suggest that it is never relevant to the topic. In particular, previous cases under the Policy have found that where it appears prima facie that a respondent seeks to target a trademark through the disputed domain name, this may be brought into consideration (see section 1.15 of the WIPO Overview 3.0).
In the present case, the Panel would find it difficult but not impossible to find confusing similarity purely from a strict comparison of the mark and disputed domain name. The Panel accepts that, taken in isolation, each of the words in the disputed domain name is a dictionary word. The fact that one such word might be present in both might not on its own take the Complainant over what is normally regarded as a relatively low threshold which is intended to establish “a bona fide basis for the complaint” (The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743). Nevertheless, as the panel noted in Levantur, S.A. v. Media Insight, WIPO Case No. D2009-0608, a case also involving the present Respondent, “a combination of words, each of which might individually be generic or descriptive, is perfectly capable of being distinctive as a combination”. If the disputed domain name is taken as a combination of such words, it may be seen that the “aqua” element is the most distinctive and dominant, given that it appears to be the operative word which identifies the resort in Cancun to which the disputed domain name refers.
Furthermore, once the Respondent’s website is taken into consideration, a clearer picture emerges. The website previously used exactly the same stylization of the word AQUA as is found in the Complainant’s mixed mark in a large size and prominent location at the top of the page, as may be noted from the Complainant’s screenshot. The website thus appears to refer to the Complainant’s hotels and, in particular, the map features one such hotel in Cancun. This turns the matter on its head, in that the Panel cannot say that the disputed domain name is not confusingly similar to the Complainant’s mark to any reasonable extent when the website content is factored in. It is clear on this analysis that the Respondent intended the disputed domain name to refer to the Complainant’s mark.
The Panel considers that in the specific circumstances of the present case, it does appear prima facie from the website content that the Respondent sought to target the Complainant’s trademark through the disputed domain name. Indeed, as will be discussed in the next section, the Respondent does not seek to avoid this conclusion but rather presents a justification for such targeting due to the existence of an alleged business relationship with the Complainant. Placed in that context, and in the context of the website content, the Respondent’s submissions that the disputed domain name contains generic terms used by countless web pages, or allegedly feature to some extent in various unspecified registered trademarks, appear to the Panel to be somewhat disingenuous. It does not sit particularly well with the Panel that, on the one hand, the Respondent claims that the disputed domain name refers to and is exclusively intended in connection with the sale of accommodation in the Complainant’s hotels, while, on the other hand, it asserts that the disputed domain name is a wholly generic phrase made of non-distinctive dictionary words.
In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and thus that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Complainant submits that the use of the disputed domain name is not a legitimate noncommercial or fair use, that the disputed domain name has been registered without the Complainant’s authorization and is intended to make consumers believe that the Respondent’s website content is legitimate and supported by the Complainant’s LIVE AQUA mark. These submissions are sufficient in the Panel’s view to establish the requisite prima facie case. The Panel therefore turns to the Respondent’s case to determine whether it contains a sufficient rebuttal of the Complainant’s case.
The essence of the Respondent’s case is that it has traded with the Complainant over a lengthy period and has the Complainant’s permission to use its trademarks in connection with the sale of package holidays to the Complainant’s resort. As the Respondent acknowledges, this alleged use of the Complainant’s mark by a reseller would allow the Respondent to claim rights and legitimate interests in the disputed domain name provided that the criteria laid down in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 were established. The criteria are, first, that the Respondent must be offering the goods or services at issue, secondly, that the Respondent must use the site only to sell the trademarked goods or services, thirdly, that the site must accurately and prominently disclose the registrant’s relationship with the trademark holder and, fourthly, that the Respondent must not try to “corner the market” in domain names that reflect the trademark.
It is clear to the Panel that the Respondent is unable to fulfil the terms of the third of the Oki Data criteria. Neither on the previous nor on the current iteration of the Respondent’s website is the Respondent’s relationship with the Complainant clearly set out. On the contrary, the copy on the said website seems calculated to confuse visitors into believing that the Respondent is the actual owner of the hotels concerned. The fact that the latest iteration now appears to have the words “VACATION STORE MIAMI®” in small grey letters at the top of the page does not assist the Respondent as it is insufficiently prominent, nor in any event is the relationship with the Complainant disclosed. Furthermore, the previous iteration shown in the Complainant’s screenshot showed no such qualification and even employed the Complainant’s stylized typeface. The Panel notes in addition that the website is couched in terms of offering a “unique and innovative hotel experience” at a “‘Be Yourself’ hotel” without any suggestion that the Respondent is, more probably than not, one of a multitude of package tour providers who may make bookings at the Complainant’s hotel. In any event, the website does not identify with sufficient clarity that it is operated by a company other than the Complainant.
As the panel observed in EPI Gestion, S.L. v. Media Insight, WIPO Case No. D2018-0402, another case involving the Respondent, the failure to meet the Oki Data criteria is not necessarily the end of the matter for the Respondent’s case. It is a matter of consensus among panels under the Policy that this 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 (see section 2.8.1 of the WIPO Overview 3.0). The panel in EPI Gestion, S.L., supra was able to accept a volume of evidence from the Respondent which it considered sufficient to establish that such prior agreement was in place. This included sworn statements apparently similar to those produced in the present case, along with booking schedules, but also importantly contained emails from the complainant’s officers or senior staff members. These emails provided the Respondent with fact sheets and contracts, and discussed the future provision of promotional content. Furthermore, requests from the Respondent for the complainant to contribute to its marketing budget were also provided, including one which was counter-signed by the complainant’s director of sales and marketing. Other panels have also been able to make similar findings on the strength of the evidence provided by the Respondent to them (see, for example, Paola Stephania Ornelas Magaña and Irma Michelle Ornelas Magaña v. Media Insight, WIPO Case No. D2017-1235 and Levantur, S.A. v. Media Insight, supra).
The problem for the Panel in the present case is that the evidence before it paints a picture that is altogether murkier. The affidavits are the only evidence provided of an alleged business relationship between the Parties dating back to when the disputed domain name was registered or before that date. The single email from a member of staff of the Complainant requesting changes to content does not indicate that it comes from a senior employee who might be in a position to consent to the use of the Complainant’s marks in the disputed domain name, nor in the Panel’s view does it establish any ostensible authority on which the Respondent could or should have relied in its use of such marks. More importantly, that email dates from November 26, 2018 and does not serve to establish any relationship of any particular substance or duration. Nor does it even refer to the disputed domain name, which is only covered in an apparent response from an unrelated email address, <firstname.lastname@example.org>, and, as previously noted in the factual background section above, this response is sent to a different person at a different email address. The recipient of such email is not evidenced to be the Complainant.
The affidavit of Ms. Metz-Mendez notes that “at some point in time”, otherwise unspecified, the Complainant did not renew its contract with Vacation Store. Presumably, therefore, the latter was no longer authorized to book the Complainant’s hotels directly. The affidavit provides that Vacation Store then began make such bookings via its affiliate relationship with GOGO Vacations. This evidence does not serve to clarify matters or to establish that the Respondent had the Complainant’s permission to register and use the disputed domain name at any point. The Respondent does not engage with the obvious issue that any permission it may have had to use the Complainant’s name and trademark, if it ever existed, may likewise have been terminated along with the Complainant’s termination of the direct relationship, at whatever unspecified point such termination took effect.
Furthermore, the GOGO Vacations agreement does not assist the Respondent, given that the evidence shows, contrary to the submission at paragraph 13 of the affidavit of Ms. Metz-Mendez, that there is an express prohibition on the use of trademarks of any of GOGO Vacations’ affiliates save with prior written consent. No such written consent was referred to in said affidavit, nor has any been produced by the Respondent. The email from the “Team Leader” at GOGO Vacations does not make any reference to this. The apparent and unexplained contradiction in the GOGO Vacations agreement to what is said in the affidavit of Ms. Metz-Mendez also suggests to the Panel that, in the absence of other supporting evidence, it should be cautious about placing too much weight on the Respondent’s affidavit evidence in general.
In conclusion on this topic, the Panel is unpersuaded by the Respondent’s evidence when it is taken as a whole. Given the nature of the Respondent’s case, relying as it does on an alleged twenty year relationship with the Complainant, it should have been possible for the Respondent to produce far more detailed and convincing evidence of its dealings with the Complainant, including contemporaneous evidence of the existence of permission to use the variant of the Complainant’s mark in the disputed domain name and website content or at least clear evidence from which the Complainant’s acquiescence with regard to such use might reasonably be inferred. In contrast, all of the hotel bookings put forward by the Respondent date from 2018 and are made via the Respondent’s relationship with GOGO Vacations, not directly with the Complainant. The email exchanges likewise date from 2018. Accordingly, as matters stand, and on the balance of probabilities, the Panel rejects the Respondent’s argument that it has rights and legitimate interests in the disputed domain name because it registered and used this with the Complainant’s full knowledge and consent.
The Panel notes in passing that it does not accept the Respondent’s argument that there is anything in the Complainant’s apparent delay in enforcing its rights in this matter. Delay in bringing a complaint does not of itself bar a complainant from filing a case under the Policy (see, section 4.17 of the WIPO Overview 3.0 and Billards Toulet v. Damon Nelson - Manager, Quantec LLC/Novo Point, LLC, WIPO Case No. D2016-2502). In certain cases, as noted in Green Bay Packers, Inc. v. Moniker Privacy Services / Montgomery McMahon, WIPO Case No. D2016-1455,delay may serve to undermine the complainant’s arguments relating to the Respondent’s alleged lack of rights or legitimate interests, or alleged registration and use in bad faith. This is not such a case, given that there is insufficient evidence of the Respondent having made detrimental reliance on any representations, acts or omissions of the Complainant.
In all of the above circumstances, the Panel finds on the balance of probabilities that the Respondent has failed to rebut the Complainant’s prima facie case regarding its lack of rights or legitimate interests in the disputed domain name and accordingly that the second element under the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The essence of the Complainant’s case on registration and use in bad faith is that the Respondent has registered the disputed domain name to target the Complainant’s mark and in order to mislead the Complainant’s clients and consumers that the associated website content is authorized and original when it is not, effectively a case in terms of paragraph 4(b)(iv) of the Policy. The Respondent’s case on registration and use in bad faith is predominantly based on the fact that it claims to have been operating at all times with the knowledge and consent, or acquiescence, of the Complainant, a matter which the Panel has already rejected on the basis of the lack of evidence to that effect on the present record.
The Panel notes in particular that the Respondent argues that it was not aware of the Complainant’s mark when it registered the disputed domain name. This seems rather unlikely given that the Complainant registered its (stylized) mark before the registration of the disputed domain name and the Respondent has referenced the Complainant’s (stylized) mark on the website associated with the disputed domain name. Such use of the Complainant’s marks also renders the Respondent’s various arguments attacking their distinctiveness particularly disingenuous given that, even on its own submissions, it intentionally adopted these in order to identify the Complainant’s resorts.
What is clear on the record is that the Complainant’s Mexican trademark was in existence some two years before the disputed domain name was created. The Respondent does not and could not deny that it was fully aware of the nature and extent of the Complainant’s hotel operations, given that its alleged purpose in registering the disputed domain name was in order to sell accommodation in those hotels. Bearing in mind the nature of the Respondent’s business, it seems more probable to the Panel than not that the Respondent would have known of the existence of the Complainant’s mark or that this may reasonably be inferred from the circumstances. In the absence of substantive evidence of a permissive relationship between the Parties, it appears to the Panel that the Respondent probably turned a blind eye to the Complainant’s rights in order to improve its position with regard either to the Complainant’s interests in receiving direct business via its own website or to other agents who might be selling packages relating to the Complainant’s hotels. There is a possibility that the Respondent intended that its actions might have been legitimized by subsequent acquiescence of the Complainant (as, for example, is described in Levantur, S.A. v. Media Insight, supra) but any such alleged acquiescence has not been established to the Panel’s satisfaction on the present record. In these circumstances, the Respondent’s conduct is suggestive of registration in bad faith.
When the content of the Respondent’s website is factored into the equation, the Panel is of the opinion that the disputed domain name has likewise been used in bad faith. Nowhere on the website is it made clear that the Respondent is merely an affiliate, of an affiliate, of the Complainant. On the contrary, and as noted above, the website appears to suggest that it has been published by the hotel operator itself. The Panel finds it inherently improbable that any commercial arrangement of longstanding between the Parties, if indeed there has ever been one, would have anticipated or countenanced such a confusing use of the Complainant’s mark or that the Complainant would knowingly have acquiesced in this. In weighing the evidence on the balance of probabilities, the Panel would expect to find substantive evidence to displace such an apparent improbability. However, in the present case, the Panel is simply presented with the Respondent’s affidavits, unsupported by any contemporary documentation, to evidence the alleged commercial background. Where an extrinsic document has been produced, namely the GOGO Vacations agreement, this appears to contradict or at least raise a question regarding a statement made in one of the affidavits.
In the wording of the Policy, the use of the disputed domain name creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Such evident use in bad faith is not cured, in the Panel’s view, by the existence of a single email by a person of unknown status in the Complainant’s staff, dating from shortly before the Complaint was filed, providing up to date photographs and requesting changes to a different website from that associated with the disputed domain name. This simply demonstrates that somebody within the Complainant was keen that the appearance of the website concerned feature up to date imagery. There is no evidence before the Panel that such person was not similarly confused as to the nature of the Respondent’s entitlement to publish the website referred to in the email, if indeed it refers to another of the Complainant’s properties.
Unlike several of the other previous cases under the Policy featuring similar arguments by the Respondent, which the Panel has taken care to note, there is no evidence on the present record of imagery being repeatedly supplied over a lengthy period by senior individuals in the Complainant, upon which the Respondent might reasonably have relied in its alleged belief that the Complainant knew of and consented to, or acquiesced with regard to, its registration and use of the disputed domain name. Furthermore, the Respondent is not assisted by the bookings it has submitted in evidence. All of these date from 2018 and they do not demonstrate a relationship of longstanding, nor do they provide any support for the notion that the Complainant gave the Respondent permission to register and use the disputed domain name in connection with the associated website.
In all of the above circumstances, the Panel finds on the balance of probabilities that the disputed domain name was registered and has been used in bad faith and thus that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 <aquacancunresort.com> be transferred to the Complainant.
Andrew D. S. Lothian
Date: April 1, 2019