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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Costamar Travel Cruises & Tours, Inc. v. Maya World, S.C.

Case No. D2006-0003

 

1. The Parties

The Complainant is Costamar Travel Cruises & Tours, Inc., Ft. Lauderdale, United States of America, represented by Patel & Alumit, PC, United States of America.

The Respondent is Maya World S.C., Cancun, Mexico, represented by Jairo Alfonso Lуpez, Mexico.

 

2. The Domain Name and Registrar

The disputed domain name <costamartravel.com> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2006. On January 5, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On January 5, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 17, 2006.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2006. The Response was filed with the Center on March 14, 2006.

The Center appointed Miguel Bernardo O’Farrell as the sole panelist in this matter on March 30, 2006. 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 trademark COSTAMAR registered in the United States of America under Nє 1.980.398 on August 18, 1996 and applied for on March 9, 1994 for “making reservations and bookings for airline transportation on a commission basis; courier services” in international class 39 and “insurance underwriting in the field of auto, health, life, home, business, and industry; insurance claim processing and administration and consulting services in connection therewith, currency exchange and advice” in class 36 and COSTAMAR TRAVEL registered in the United States under Nє 2797123 on December 23, 2003 and applied for on November 25, 2002 for “travel agency services, namely making reservations and bookings for transportation; car rental services” in class 39 and “travel agency services, namely, making hotel reservations and bookings for temporary lodging” in class 43.

The domain name <costamartravel.com> was registered on June 24, 2002.

 

5. Parties’ Contentions

A. Complainant

Complainant alleges that:

The Complainant is the owner of the trademark COSTAMAR registered in the United States of America under Nє 1.980.398 on August 18, 1996, and applied for on March 9, 1994, for “making reservations and bookings for airline transportation on a commission basis; courier services” in international class 39 and “insurance underwriting in the field of auto, health, life, home, business, and industry; insurance claim processing and administration and consulting services in connection therewith, currency exchange and advice” in class 36 and COSTAMAR TRAVEL registered in the United States under Nє 2797123 on December 23, 2003, and applied for on November 25, 2002, for “travel agency services, namely making reservations and bookings for transportation; car rental services” in class 39 and “travel agency services, namely, making hotel reservations and bookings for temporary lodging” in class 43.

It also owns the trade names COSTAMAR TRAVEL DE MEXICO SA de CV in Mexico and COSTAMAR TRAVEL S.A. in Peru.

Complainant has over 30 offices in the United States, others in Peru, Ecuador, Colombia and Brazil. It has used its trademark COSTAMAR TRAVEL for over 25 years. Thus, it is a well-known trademark in the Spanish-speaking community in the area of travel-related services.

The domain name is identical to COSTAMAR and confusingly similar to COSTAMAR TRAVEL.

Respondent has no rights or legitimate interests in the domain name because Respondent does not use the domain name as a trademark, or in any other manner than as a domain name. Further, the domain name does not describe any feature of Respondent’s services. Instead, Respondent is known as “Mexico Hoy”.

Respondent registered the domain name for commercial gain by misleadingly diverting Complainant’s consumers to Respondent’s website.

Finally, Complainant’s alleges that the domain name be transferred to the Complainant.

B. Respondent

Respondent asserts that:

Maya World. S. C. registered the domain name on June 24, 2002, to inform, educate and promote the travel industry and tourism through the Internet. The domain name utilizes two languages (Spanish and English), and three words of public domain, COSTA = COAST, MAR=SEA and VIAJE = TRAVEL. Through its websites Respondent offers information and tourist services to tourists and visitors while traveling and learning about Mexico, the Maya World (“Mundo Maya”) and the world. The websites offer extensive information of tourist destinations and service providers in the travel and tourist industry, such as, airlines, car rentals, cruises, entertainment, tours, tourist insurance, hotels, limousine services, trains, vacation packages, etc.

The Complainant filed the application for COSTAMAR TRAVEL on November 25, 2002, five months later from the Respondent’s domain registration date. The Complainant declares that it has been in the travel business since 1980. The Respondent, Administrator of Maya World, S.C., is a professional travel consultant and educator and has been involved in the areas related to promotion and services for the travel industry and tourism since 1977.

Respondent has 70 .com domain names and 15 websites dedicated to the travel industry and tourism of Mexico, Maya World (“Mundo Maya”) and the world.

The Respondent, as owner of <costamartravel.com>, has the option and the rights to redirect the domain name <costamartravel.com > to one of its websites.

The words COSTA =COAST, MAR=SEA and VIAJE=TRAVEL, are the most popular in the travel business. Their use is very common and should be shared, contrary to the Complainants’ request for exclusive use and commercial exploitation. At the present time, “www.costamartravel.com” links to “www.mexicohoy.com” with the same objectives it had in prior website. The website “www.mexicohoy.com” serves as a link to all Respondent’s travel and tourism websites.

The Respondent is well-known with the domain name <costamartravel.com> and has used that name before the Complainant registered COSTAMAR TRAVEL as a trademark.

The Respondent uses the domain legally without commercial intent and without the intent to divert Internet users. Contrary to the argument and documentation presented, the Complainant is acting in bad faith and has presented information and documents that are false.

The Complainant used the name COSTAMAR TRAVEL upon registering the trademark having the knowledge that the domain name <costamartravel.com> was already registered and was being used solely with the purpose to inform, educate, and promote tourist and travel industries.

The Respondent registered other domain names using English and Spanish language, which proves Respondent’s good faith.

The Complainant posted for many years the website “www.costamar.com” as his primary website, but as on or about March 12, 2006, in an act of bad faith, the Complainant added Costamar Travel under the website name, with the intent to harass.

Finally Respondent requests that the Complaint be denied.

 

6. Discussion and Findings

To qualify for cancellation or transfer, the Complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

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

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant is the owner of the trademark registrations COSTAMAR and COSTAMARTRAVEL.

The domain name in dispute is <costamartravel.com>.

It is evident that the Complainant’s trademark COSTAMARTRAVEL is identical to the domain name <costamartravel.com>.

The Panel notes that the domain name was registered five months before the Complainant applied for the trademark COSTAMARTRAVEL. In this regard, the Panel understands that the registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity.

Nevertheless, the Panel finds that Complainant’s trademark registration COSTAMAR, which was registered before the registration of the domain name, is confusingly similar to <costamartravel.com> since the addition of the word “travel” does not suffice to distinguish the domain name from the trademark.

Therefore, the Panel finds that the Complainant has proved the first element required in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel understands that proving “a negative proposition can be particularly difficult” and agrees “that the burden on a Complainant regarding the second element is necessarily light, because the nature of the registrant’s rights or interests, if any, in the domain names lies most directly within the registrant’s knowledge” and that “once the Complainant makes a prima facie showing that the registrant does not have rights or legitimate interest in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name” (The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064).

The Complainant alleges that Respondent has no rights or legitimate interests in the domain name since Respondent does not use the domain name as a trademark (or in any other manner than as a domain name), the domain name does not describe any feature of Respondent’s services and Respondent is not known as “Costamar Travel” but as “Mexico Hoy”.

Respondent replies that the domain name was registered and is used with the intention to inform, educate and promote the travel industry and tourism through the Internet, and that, as the owner of <costamartravel.com>, it has the option and the right to redirect the domain name <costamartravel.com > to one of its websites. Respondent asserts that the words “costa” (“coast”), “mar” (“sea”) and “viaje” (“travel”) are the most popular in the travel business and their use is very common and should be shared.

The Panel finds that Respondent’s explanation does not demonstrate rights or legitimate interests in the domain name.

Firstly, the Panel agrees that the words “costa” (“coast”), “mar” (“sea”) and “travel” (“viaje”) are common terms in the travel business. However, this neither means that the trademarks COSTAMAR and COSTAMAR TRAVEL lack distinctiveness nor that the Complainant has not acquired trademark rights in them. In other words, the trademarks “COSTAMAR” and “COSTAMAR TRAVEL” are not generic, even though they are formed with generic terms.

In this regard, Respondent has rights to use the words “costa” (“coast”), “mar” (“sea”) and “travel” (“viaje”). However, it does not have rights or legitimate interests to use them in a way that is confusingly similar to the Complainant’s trademark registrations. In this case, Respondent is using exactly the same words, in the same order and with the same language for each: Spanish for “costa” and “mar” and English for “travel”.

Secondly, the mere intention to promote tourism does not grant rights or legitimate interests to Respondent since it is evident that Respondent’s use of the domain name certainly does not constitute a fair use without commercial purposes. From the evidence filed, it is clear that Respondent is an important company running websites with commercial intentions. Just as an example, a newspaper article filed by Respondent announced that 40.558 travel agencies would offer their services thorough Respondent’s website “www.mayaworld.com”. This clearly shows that Respondent uses the domain name with commercial intentions.

Consequently, the Panel finds that the Complainant has proved the second element required in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Complainant applied for its trademark COSTAMAR and COSTAMAR TRAVEL in 1994 and 2002 respectively. As asserted by Complainant when applying for these trademarks, COSTAMAR and COSTAMAR TRAVEL were first used in commerce in 1980 and 2001 respectively.

Complainant alleges that it has over 30 offices in the United States, others in Peru, Ecuador, Colombia and Brazil and that COSTAMAR TRAVEL is a well-known trademark in the Spanish-speaking community in the area of travel-related services.

The Respondent alleges to be a professional travel consultant and educator, involved in the areas related to promotion and services for the travel industry and tourism since 1977 and that through its websites, Respondent offers information and tourist services to tourists and visitors while traveling and learning about Mexico, the Maya World (“Mundo Maya”) and the world. These websites offer extensive information of tourist destinations and service providers in the travel and tourist industry, such as, airlines, car rentals, cruises, entertainment, tours, tourist insurance, hotels, limousine services, trains, vacation packages, etc.

From the allegations and evidence filed by both parties, it is evident that Complainant’s services and Respondent’s website are directed to the same public.

In view of the above, the Panel finds that it is almost impossible to think that Respondent did not know the Complainant in the year 2002 when registering the domain name. On the contrary, by choosing exactly the same name and trademark of Complainant, it is reasonable to presume that Respondent knew the Complainant and its services when registering the domain name and certainly did so with the intention to copy Complainant’s name and trademarks.

This is reinforced by the fact that Respondent (i) only uses COSTAMAR TRAVEL for the domain name <costamartravel.com>, (ii) redirects Internet users to Respondent’s website “www.mexicohoy.com” and (iii) does not have rights or legitimate interests in the trademark COSTAMAR or COSTAMAR TRAVEL.

In view of the foregoing reasons, the Panel finds that that Respondent registered and uses the domain name in bad faith to divert Internet users looking for Complainant to Respondent’s website, for commercial gain.

Consequently, the Panel finds that the Complainant has proved the third element required in paragraph 4(a) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <costamartravel.com> be transferred to the Complainant.

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Miguel B. O’Farrell
Sole Panelist

Date: April 10, 2006