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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NYX Development, S.A. de C.V. v. Media Insight

Case No. D2019-0897

1. The Parties

The Complainant is NYX Development, S.A. de C.V., Mexico, represented by IURISTEC, S.L., Spain.

The Respondent is Media Insight, United States of America (“United States”), represented by Gaebe, Mullen, Antonelli, & Dimatteo, United States of America.

2. The Domain Name and Registrar

The disputed domain name <nyxcancun.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 April 19, 2019. On April 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 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 sent an email communication to the parties on April 29, 2019 regarding the language of the proceeding, as the Complaint has been submitted in Spanish and the language of the registration agreement for the disputed domain name is English. The Complainant submitted a request for Spanish to be the language of the proceeding on May 4, 2019. The Respondent submitted a request for English to be the language of the proceeding on May 4, 2019. The Complainant resubmitted the Complaint translated into English on May 16, 2019.

The Center verified that the Complaint together with the translated 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 in English and Spanish, and the proceedings commenced on May 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2019, and was extended by the Center until June 13, 2019. The Response was filed with the Center on June 13, 2019.

The Center appointed Assen Alexiev as the sole panelist in this matter on June 26, 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 operates the Nyx Hotel Cancun, a resort in Cancun, Mexico, which opened on May 30, 2012.

The Complainant is the owner of the trademark NYX DEVELOPMENT with registration No.1334040, filed in Mexico on August 9, 2012 and registered on November 29, 2012, for services in International Class 43 (the “NYX DEVELOPMENT trademark”).

The Complainant is also the owner of the domain name <nyxhotels.com>, registered on July 24, 2012.

The Respondent is the media division of a wholesale tour operator, Vacation Store, which provides tour operations and travel packages for travel to destinations outside of the United States. The packages are sold to retail travel agencies and retail customers. The travel packages consist of air flights, hotel accommodations and ground transfers to hotels.

Mr. George Alvarez, the principal of the Respondent, owns the United States trademark NYXCANCUN.COM with registration number 4,488,610, registered on February 25, 2014 for services in International Class 43 (the “NYXCANCUN.COM trademark”).

The disputed domain name was registered on March 25, 2013 and currently resolves to a website containing numerous photos of the Complainant’s hotel, references to “our hotel” and “our staff”, and statements like “Hotel NYX Cancun - NYXCancun.com®”.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the NYX DEVELOPMENT trademark in which the Complainant has rights, and is identical to the name of the Nyx Hotel Cancun operated by the Complainant. All these names share the dominant element “nyx”, which identifies the Complainant in the touristic industry. Apart from this element, the disputed domain name contains only the geographical term “Cancun”, which is the name of the city where the hotel of the Complainant is located. The combination of the two elements suggests that the disputed domain name corresponds to the Complainant’s official website for its hotel.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain Name. The Respondent uses the disputed domain name to host a website that appears to be the official website of the Complainant’s Nyx Hotel Cancun. The website does not offer clear and concrete information about its real owner which is a touristic agency and not the hotel itself, and users have to pay extraordinary attention to realize that bookings are not made directly to the hotel owned by the Complainant, but instead to a touristic mediation agency.

The Complainant submits that the Respondent runs a touristic mediation activity through the companies MEDIA INSIGHT and VACATION STORE MIAMI, and there is no agreement between the Complainant and the Respondent about the commercialization of the Nyx Hotel Cancun services and no reservations have ever been received from these companies. According to the Complainant, the Respondent has never been identified or known in the touristic industry by the name of NYX or by the disputed domain name, which is being used by the Respondent to publish an unofficial website of the Complainant’s Nyx Hotel Cancun, opened one year before the registration of the disputed domain name. The Complainant maintains that the fact that it has not registered a domain name corresponding to the name of its hotel does not entitle others to register such domain name.

The Complainant states that it tried to negotiate the purchase of the disputed domain name from the Respondent in 2016, but did not receive an answer to its proposal.

The Complainant submits that the “NYXCANCUN.COM” trademark is owned by George Alvarez and not by the Respondent, and that in spite of the relation between George Alvarez and the Respondent, the latter has no rights in this trademark and may not use its registration as a defense in this proceeding. According to the Complainant, the “NYXCANCUN.COM” trademark was registered with the sole purpose to avoid a UDRP proceeding, and its registration constitutes an abuse of rights aiming at gaining rights over a domain name for purposes that are contrary to the good faith, moral and good customs, hindering the registration and use of the disputed domain name by the Complainant, who is the person with a legitimate interest in it.

The Complainant adds that the Respondent regularly registers domain names corresponding to the names of hotels that are members of well-known hotel chains likely without their authorization, and refers in this regard to the domain names <iberostarcancunhotel.com>, <iberostarparaisomaya.com>, and <iberostartucan.com>.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent´s intention when registering the disputed domain name was to generate confusion to the users. The disputed domain name hosts a website that appears to be the website of Nyx Hotel Cancun, which it is not. The Respondent also sought to prevent the registration of the disputed domain name by the Complainant. According to the Complainant, the Respondent is using the disputed domain name in bad faith and is disturbing the Complainant’s business activities. The Respondent attempts to attract Internet users to his website for commercial gain by inducing them to believe that they are interacting with the Complainant and creating a false impression that the Complainant collaborates with the Respondent. The design and contents of the Respondent’s website confuse Internet users that they are reaching the official website of Hotel Nyx Cancun by using images of the hotel and photos taken from the official website of the Complainant without authorization. The disputed domain name hosts a non-functioning booking engine, which damages the reputation of the Complainant’s Nyx Hotel Cancun.

B. Respondent

The Respondent states that it does not own, control, operate, or otherwise have business interest in any hotels, but is only a tour operator and a media division. As a tour operator, the Respondent books rooms for various hotels.

The Respondent maintains that the disputed domain name is not identical or confusingly similar to the Complainant’s NYX DEVELOPMENT trademark, but is identical to the “NYXCANCUN.COM” trademark of Mr. Alvarez, the principal of the Respondent. The Respondent adds that “Nyx” is the name of a Greek goddess of the night, whose name is used in numerous products and is not unique to the Complainant, as there are over fifty United States trademarks that incorporate this name.

The Respondent submits that it should be considered as having rights or legitimate interests in the disputed domain name. Contrary to the Complainant’s statements, the Parties have had a long-standing business relationship, which began in 2007. Pursuant to its contracts with the Complainant, the Respondent was authorized to sell hotel rooms and to use the Complainant’s trademarks and promotional materials in its webpages. The Complainant was aware of the operation of the Respondent’s webpage; it had approved its use by the Respondent and provided financing to the Respondent to promote the hotels on it, and took bookings from the Respondent. Since the Respondent is a reseller of the Complainant’s hotels, the Respondent is permitted to use the disputed domain name. The Respondent adds that it has rights in the “NYXCANCUN.COM” trademark and is thus entitled to use it as a domain name.

According to the Respondent, the website at the disputed domain name is used solely to sell the Complainant’s hotel rooms, so it does not disrupt the Complainant’s business and does not divert users from it. Rather, its use results in substantial bookings for the Complainant’s hotel, and the Complainant has derived a substantial economic benefit from the activities of the Respondent.

The Respondent contends that the disputed domain name was not registered and used in bad faith. The Respondent reasonably believed that it had the authority to register and operate the disputed domain name, and it registered it in conjunction with the bona fide offering of booking services for the Complainant’s hotel rooms pursuant to contracts with the Complainant. The Complainant knew of the Respondent’s use of the disputed domain name, encouraged the Respondent to operate and build up the website at the disputed domain name and provided advertising budgets to the Respondent to promote it, because the Complainant received income from the sale of the hotel rooms promoted on the Respondent’s website. The Complainant never questioned the Respondent’s rights to the disputed domain name or website until the filing of this matter and failed to reveal that the Parties had participated in a long business relationship, whereby the Respondent had been contractually engaged to arrange bookings and to promote the Complainant’s resort properties, and that the Complainant actively supported this conduct and benefited from the promotion and booking generated through the disputed name for years. The Respondent states that the Complainant’s conduct in actively working with the Respondent in their commercial relationship, without complaint, is inconsistent with the Complainant’s claim of bad faith raised in the Complaint.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(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 Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the NYX DEVELOPMENT trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) portion of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD portion of the disputed domain name.

The relevant part of the disputed domain name is therefore the second-level domain portion “nyxcancun”. It consists of the elements “nyx” and “cancun”. The “nyx” element which dominates in this sequence is identical to the distinctive “nyx” element of the NYX DEVELOPMENT trademark, while the “cancun” element is the name of the city where the Complainant’s Nyx Hotel Cancun is located. The combination of the two elements in the disputed domain name may suggest to Internet users that the disputed domain name refers to an official website of the Complainant’s hotel. This conclusion is not affected by the fact that the Respondent currently has rights in the “NYXCANCUN.COM” trademark.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Since the Complainant has failed on the present record to establish that the Respondent has registered the disputed domain name in bad faith, it is not necessary for the Panel to make a finding on the issue of rights and legitimate interests. Nevertheless, the Panel finds it appropriate to include in its decision certain observations on this issue, which follow.

The Complainant submits that there is no agreement between the Complainant and the Respondent about the commercialization of the Nyx Hotel Cancun and that reservations have never been received from the Respondent. The Complainant contends that the Respondent uses the disputed domain name to host a website that uses images of the Complainant’s hotel and photos taken from the official website of the Complainant without authorization, and thus appears to be the official website of the Complainant’s hotel, without providing information about the real owner of the website, which is disturbing the Complainant’s business activities. The Complainant adds that the Respondent’s website features a non-functioning booking engine, which damages the reputation of the Complainant’s Nyx Hotel Cancun. According to the Complainant, the “NYXCANCUN.COM” trademark was registered only to avoid a UDRP proceeding.

The Respondent submits that the Parties have had a long-standing business relationship, and that the Respondent was authorized to sell hotel rooms at the Complainant’s Nyx Hotel Cancun and to use the Complainant’s trademarks and promotional materials in its webpages. According to the Respondent, the Complainant was aware of and had approved the use of the Respondent’s website and took bookings from the Respondent. The Respondent states that the website at the disputed domain name is used solely to sell the Complainant’s hotel rooms and its use results in substantial bookings for the Complainant’s hotel. The Respondent adds that it has rights in the “NYXCANCUN.COM” trademark and is thus entitled to use it as a domain name.

Contrary to what the Complainant has stated in its Complaint, the Parties have had a commercial relationship at least for the period 2012 – 2014, as is shown by the contracts and booking documents submitted by the Respondent. The evidence submitted by the Respondent however does not show that the Complainant was aware in this period of the existence and operation of the disputed domain name and the associated website or that it has given its consent for this. The contracts between the Parties submitted by the Respondent require that bookings be made in writing and sent to the Complainant’s email address, and do not refer to an online booking engine operated by the Respondent. The email messages sent in 2016 by the Complainant to the Respondent are the earliest and only evidence presented to the Panel that the Complainant was aware of the disputed domain name and of the associated website and they show that at that time the Parties were not cooperating anymore (such conclusion is also supported by the fact that the Respondent has not, according to the evidence put forward, submitted any booking documents for the Complainant’s hotel dated after 2014). Importantly, the Complainant’s email messages from 2016 contain no allegation by the Complainant that the disputed domain name and the associated website were illegitimately registered and used by the Respondent and that they were disturbing the Complainant’s business; they show that the Complainant made an amicable attempt to purchase the disputed domain name, to which it received no response. These messages were however sent two years after the termination of the Parties’ cooperation, so they do not represent contemporary evidence sufficient to establish that the Complainant had consented to the Respondent’s registration and use of the disputed domain name and of the associated website.

C. Registered and Used in Bad Faith

Pursuant to the Policy, paragraph 4(a), the Complainant must cumulatively prove that the Respondent has both registered and is using the disputed domain name in bad faith.

The Parties by all appearances had a business relationship in the period 2012 – 2014, during which time the Respondent provided booking services for the Complainant’s Nyx Hotel Cancun. As discussed in section 6.B above, there is no evidence that the Complainant has consented to the registration and use of the disputed domain name by the Respondent, but assuming it was aware of such registration there is no evidence that it has objected to the same either – the emails from the Complainant to the Respondent from 2016 do not contain such an objection or indeed any statement that the Respondent had engaged in any conduct that was not acceptable to the Complainant. In view of this correspondence and in the lack of evidence that the Complainant has objected to the registration and use of the disputed domain name by the Respondent, the Panel finds that the Complainant has failed to establish that the Respondent has registered the disputed domain name in bad faith.

The above finding makes it unnecessary to examine whether the Respondent has used the disputed domain name in bad faith. Nevertheless, the Panel notes that the Respondent’s website contains numerous photos of the Complainant’s hotel and has the appearance of an official website of the Complainant. It contains references to “our hotel” and “our staff”, and statements like “Hotel NYX Cancun - NYXCancun.com®”, which do not distinguish between the Complainant’s hotel and the Respondent’s “NYXCANCUN.COM” trademark, which the Panel finds suspect on its own terms. As discussed above, the Respondent has not provided evidence that the Complainant has approved the Respondent’s website or provided photos and promotional materials for inclusion on it. The Respondent has also not provided a credible explanation of the reasons for the registration of the “NYXCANCUN.COM” trademark which coincides with the name of the Complainant’s hotel, given that the Respondent does not own or operate hotels and does not claim to have had exclusive rights to market the Complainant’s hotel online. These considerations may well support a finding that the Respondent has attempted to impersonate the Complainant and thus attract users to its website. Moreover, since the Respondent has not provided evidence that it has continued to make valid bookings for the Complainant’s hotel after 2014 and the Complainant denies that this has happened, it is unclear why the Respondent’s website is still operating and offering users to make bookings if the Parties do not cooperate anymore. In sum: this case presents a rather complex series of competing claims that goes beyond the normal confines of the UDRP, and which may be better suited for court or even mediation.

7. Decision

For the foregoing reasons, the Complaint is denied.

Assen Alexiev
Sole Panelist
Date: July 15, 2019

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