WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Coryn Group II, LLC and AMResorts, L.P. v. Javier perez perez, Am
Case No. D2021-0047
1. The Parties
The Complainants are The Coryn Group II, LLC and AMResorts, L.P., United States of America (“USA”), represented by Norvell IP llc, USA.
The Respondent is Javier perez perez, Am, Mexico.
2. The Domain Name and Registrar
The disputed domain name <amresortgroup.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 7, 2021. On January 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2021, 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 January 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2021.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on February 16, 2021. 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 Complainants are part of the Apple Leisure Group, established in the USA exploiting travel, hospitality and management businesses. AMResorts, L.P. (the “Second Complainant”) was founded in 2001 and exploits branded luxury hotels and resorts as well as related services, also advertised at the website available at <amresorts.com>.
The Coryn Group II, LLC (the “First Complainant”) is the owner, amongst others, of the following trademarks (Annex E the Complaint):
- USA Trademark Registration No. 2,776,812 for the word mark AMRESORTS, in class 35, filed on July 31, 2001 and registered on October 21, 2003, subsequently renewed;
- Canada Trademark Registration No. TMA655292 for the word mark AMRESORTS, filed on August 8, 2001 and registered on December 16, 2005;
- Mexican Trademark Registration No. 947845 for the word & device mark AMRESORTS, filed on December 21, 2005 and registered on August 18, 2006.
The disputed domain name <amresortgroup.com> was registered on October 15, 2020 and was used in connection with fraudulent email messages impersonating the Complainant (Annex H to the Complaint). Presently, the disputed domain name resolves to a parked website displaying pay-per-click links (“PPC”).
5. Parties’ Contentions
The Complainants assert to be part of a premier travel, hospitality and leisure group which initiated its activities in 1969. The Complainants further state to have initiated in 2001 the use of the AMRESORTS trademark which has become well-known in the USA, Canada, Mexico as well as other countries in connection with hotel-related and travel-related services.
The Complainants claim to have learned about the disputed domain name from consumer complaints that it has been used in connection with a fraudulent scam whereby emails impersonating the Complainants were sent promising promotions and special rates, designed to lure consumers into believing that the disputed domain name might be related to the Complainants and inviting recipients to provide payments to the Respondent.
The Complainants contend that the disputed domain name is confusingly similar to their AMRESORTS trademark, being the suppression of the letter “s” and the addition of the generic term “group” incapable of adding any distinctiveness to it.
As to the absence of rights or legitimate interests, the Complainants argue that the Respondent:
(i) is not affiliated with or connected with the Complainants in any way, not having the Complainants licensed or otherwise endorsed, sponsored or authorized the Respondent to use the Complainant’s AMRESORTS trademark or to register the disputed domain name;
(ii) has not been commonly known by the disputed domain name;
(iii) has used the disputed domain name to impersonate the Complainants in connection with a fraudulent scam; and
(iv) is not making any legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
As to bad faith registration and use of the disputed domain name, the Complainants assert that the Respondent intentionally registered the disputed domain name so as to falsely impersonate the Complainants by way of sending emails to the Complainant’s customers in connection with a fraudulent scam where the Respondent claims to be an authorized representative offering fake promotional offers and inviting recipients to provide payments to the Respondent (Annex H to the Complaint), which demonstrates that the Respondent is intentionally misleading and confusing the public into believing that it is associated or affiliated with the Complainants.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order 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 Complainants have rights; and
(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.
The Complainants must prove in this administrative proceeding that each of the aforementioned three elements is present so as to have the disputed domain name transferred, according to the Policy.
A. Identical or Confusingly Similar
The Complainants have established rights in the AMRESORTS trademark.
The disputed domain name <amresortgroup.com> incorporates the relevant part of the Complainant’s trademark with the suppression of the letter “s” and the addition of the dictionary term “group”, still maintaining the Complainants’ trademark clearly recognizable in the disputed domain name.
It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7).
The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it has not acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainants to make a prima facie case against the Respondent.
In that sense, the Complainants indeed state that the Respondent is not affiliated with or connected with the Complainants in any way, not having the Complainants licensed or otherwise endorsed, sponsored or authorized the Respondent to use the Complainant’s AMRESORTS trademark or to register the disputed domain name.
Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name or the absence of any trademarks registered by the Respondent corresponding to the disputed domain name, corroborates with the indication of the absence of a right or legitimate interest in the disputed domain name.
According to the evidence submitted (Annex H to the Complaint), the Respondent has used the disputed domain name to intentionally mislead the Complainants’ costumers by sending emails impersonating the Complainants offering promotions and inviting recipients to provide payments to the Respondent, which cannot be considered as a bona fide offering of goods or services under the Policy.
The Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, the Respondent has 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 the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the use of the disputed domain name seeking to impersonate the Complainants for fraudulent purposes, as seen above.
Other factors that corroborate the Panel’s finding of bad faith of the Respondent are: the reproduction of the Complainant’s logo in the emails sent using the disputed domain name and the absence of a formal Response by the Respondent.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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 <amresortgroup.com> be transferred to The Coryn Group II, LLC.
Wilson Pinheiro Jabur
Date: March 1, 2021