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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barcelу Corporaciуn Empresarial, S.A. (BARCELУ GROUP) v. Taylor Domains

Case No. D2007-0465

 

1. The Parties

The Complainant is Barcelу Corporaciуn Empresarial, S.A. (BARCELУ GROUP), Palma de Mallorca, Baleares, Spain, represented by Herrero & Asociados, Spain.

The Respondent is Taylor Domains, New York, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <barceloclub.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2007. On March 29, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On March 30, 2007, Intercosmos Media Group d/b/a directNIC.com 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 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 by email on April 16, 2007 and by hardcopy on April 18, 2007. 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 April 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2007.

The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on May 23, 2007. 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 part of the Barcelo Group, a Spanish company that was founded in 1931 and one of the 30 largest hotel companies in the world. It operates in many countries and manages its own and other hotels and resorts. One of its resorts is the Barcelo Club Del Lago in Uruguay. It has a large number of registered trademarks in the countries where it operates and included among them are trademarks registered in the USA, the European Community, Canada, France and many countries in North, Central and South America and Africa. Those trademarks all include the name Barcelo, are for the most part Barcelo Hotels and Resorts and often include the name of the particular establishment, so that for example its Uruguayan trademark is BARCELO CLUB DEL LAGO.

The Respondent registered the domain name <barceloclub.com> on June 23, 2005.

 

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the domain name <barceloclub.com> should no longer be registered with the Respondent but that it should be transferred to the Complainant.

It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is almost identical or confusingly similar to the Complainant’s registered trademarks, both the BARCELO CLUB DEL LAGO mark and the other BARCELO marks, that the Respondent has no rights or legitimate interests in the domain name and that it has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.

In support of its case on the first of these three elements, the Complainant relies on the registered BARCELO CLUB DEL LAGO and the other BARCELO marks to which reference has already been made and says that the domain name is almost identical to the BARCELO CLUB DEL LAGO mark because it incorporates the bulk of that trademark and is confusingly similar to all of the other BARCELO marks because it consists predominantly of the word Barcelo and merely adds the expression ‘club del lago’ which is one of the Complainant’s resorts. The confusion comes, it contends, from the fact that internet users seeing the domain name will believe that it is an official Barcelo domain name referring to the Complainant in general and its resort in Uruguay in particular and that the domain name is therefore associated with the Complainant.

The Complainant then contends, to establish the second element, that the Respondent has no rights or legitimate interests in the domain name because the facts show, first, that the Respondent is using in the domain name the Complainant’s famous trademark without any authority. Secondly, it is argued, the Respondent cannot bring itself within any of the provisions of paragraph 4(c) of the Policy or otherwise establish a right or legitimate interest in the domain name.

Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because, first, the Respondent could only have registered the domain name in bad faith to attract the public by misleading them into thinking they could obtain information on the Barcelo Club Del Lago and the Barcelo Group at that website when in fact it promoted only resorts and venues other than the Complainant’s. Secondly, it is submitted that by registering the domain name, the Respondent clearly intended to disrupt the Complainant’s business.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to 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.

In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past WIPO UDRP panels have said many times that despite the absence of a submission from a Respondent, a Complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.

However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence.

The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.

For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

A. The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

B. The Respondent has no rights or legitimate interests in respect of the domain names; and

C. The domain names have been registered and are being used in bad faith.

It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.

A. Identical or Confusingly Similar

The Panel finds, first, that the domain name is confusingly similar to the Uruguayan trademark BARCELO CLUB DEL LAGO. That is so because the domain name incorporates the substance of the trademark, which has been proved by evidence exhibited to the Complaint and which is clearly designed to invoke the brand name Barcelo and the club that it operates. The ordinary observer, presented with both the domain name and the trademark would thus be highly likely to draw the conclusion that the Barcelo Club referred to in the domain name is the same as the Barcelo Club referred to in the trademark. Although the domain name does not include all of the constituent words of the relevant trademark, it remains similar to the trademark and confusingly so, a situation that has occurred in many UDRP cases such as Stanworth Development Limited v. 3748431 Canada Inc, WIPO Case No. D2005-0655, where the Panel as presently constituted concluded that the domain name <riverbellecasino.net> was confusingly similar to the trademark THE RIVER BELLE ONLINE CASINO. Although the domain name had omitted the word ‘online’, it was, the Panel said, ‘inevitable that Internet users would assume that the casino referred to in the domain name is the Complainant’s casino, which of course it is not.’ Likewise, in the present case, it is all but that Internet users would assume that the club referred to in the domain name is the Complainant’s club, which it is not.

Secondly, the Panel finds that the domain name is confusingly similar to all of the other BARCELO trademarks. That is so because the substance of those marks is BARCELO and the Respondent has merely added a generic and common expression to what is in reality the Complainant’s mark. It has been held in many UDRP proceedings that doing so does not diminish the otherwise confusing similarity between a domain name and a trademark, for Internet users will simply assume that the generic or common expression relates to the Complainant and not to anyone else. Such a situation has frequently arisen in the hospitality industry where famous brands have been misappropriated and had added to them generic words that have been taken by Panels to give rise to a confusing similarity and not to dispel it. Thus, the domain name <hiltonsports.com> has been held to be confusingly similar to the trademark HILTON: Hilton International Co. v. Elliot Centeno, WIPO Case No. D2005-0826; the domain name <marriott-hotel.com> has been held to be confusingly similar to the trademark MARRIOTT: Marriott Int’l v. Cafй au lait, NAF Case No. 93670, (Nat. Arb. Forum Mar. 13, 2000); the domain name <ritzplazahotel.com> has been held to be confusingly similar to the trademarks RITZ and RITZ-CARLTON: Marriott International, Inc. v. Stealth Commerce d/b/a Telmex Management Services, NAF Case No. 0204000109746 (Nat.Arb.Forum, May 28, 2002); and the domain name <riverbelleonlinecasino.net> has been held to be confusingly similar to the trademark RIVER BELLE: Stanworth Development Limited v. Kaneoka Senuchi, WIPO Case No. D2005-0703. Indeed, the Complainant itself has had similar experiences, of which Barcelу Corporaciуn Empresarial, S. A. v. KPYR/Svetlana Zubovich, WIPO Case No. D2005-1335 is an example, where the domain name <barcelobavaropalace.com> was held to be confusingly similar to the substance of its trademark BARCELO, as the Respondent had merely added the geographic indicator ‘BAVARO’ and the generic term ‘Palace’ to the trademark.

The evidence submitted by the Complainant shows that the Complainant is the owner of all of the trademarks in question and consequently it has sufficient rights in those trademarks to establish the first of the three elements that it must establish, which it has done.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.

But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.

Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the Complaint will fail.

The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not file a Response or any other form of submission. The Respondent in the present case was given notice that it had until May 9, 2007 to send in its Response, that it would be in default if it did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.

It is well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.

The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name. That prima facie case comes from the facts that the Complainant has not authorized the Respondent to use its name or trademark and an internet search does not reveal a single entity with any right to use the name Barcelo Club other than the Complainant. Moreover, the fact that the Respondent chose as its domain name the name of Complainant, which is prominent in the hospitality and accommodation industry and then added to it the name of one of the Complainant’s own resorts calls for an explanation, which the Respondent could have given, but has not. In the absence of such an explanation by the Respondent, the Panel will assume that ‘any evidence of the Respondent would not have been in [its] favour’: Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273.

The Respondent has not made any attempt to rebut this prima facie case, and the Panel therefore concludes that the Respondent has no such rights or legitimate interests in the domain name.

The result is that the Complainant has made out the second of the three elements that it must establish.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:

(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.

In the present case, the facts are that, although the domain name <barceloclub.com> no longer resolves to an active website, the evidence contained in Exhibit 6 to the Complaint amply demonstrates that until recently it resolved to a website which contained links to a series of nightclubs and resorts, none of which is a venue owned or operated by the Complainant. Those establishments are illustrated by a map of the Caribbean and Central America where, the evidence also shows, the Complainant runs some of its venues. The website also promoted many other blandishments of a salacious nature for which the Complainant is not responsible and which cannot but denigrate its good name. The Complainant has not approved of its name being linked with any of these activities. It is clear therefore that the Respondent is by this means trading on the Complainant’s good name for its own commercial purposes.

Those facts bring the case squarely within paragraph 4(b)(iii) of the Policy, for it is clear to the Panel that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, namely the Complainant, by trying to attract business away from the Complainant’s clubs and resorts and to divert it to rival establishments and other businesses.

Such conduct also comes within the provisions of paragraph 4(b)(iv) of the Policy. That is so because it shows that the Respondent used the Complainant’s trademarks to attract Internet users to the websites to which the domain name is linked, by creating confusion with the Complainant’s marks as to whether those websites were sponsored or affiliated with the Complainant and raising the inference that they were so connected.

Indeed, not only has the Respondent created this confusion by using the BARCELO and BARCELO CLUB DEL LAGO trademarks in its domain name, but it has chosen the Complainant’s name specifically because it is so well-known in the hospitality and leisure industries and has traded on it in the hope that internet users will use the domain name to find their way to an official Barcelo website and use resorts and other facilities allegedly endorsed by the Complainant, when the Respondent knows full well that they have no connection with the Complainant at all..

Moreover, it is difficult to conceive that the Respondent registered the domain name and used it in this manner for any reason other than a commercial one.

Similar conclusions have been reached on analogous facts in many UDRP proceedings, including in the hospitality and leisure industries, where prominent industry names have been used in domain names connected to websites promoting rival operators offering similar services, a practice that has regularly been held to be bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy. Typical of such decisions are Hilton International Co. v. Elliot Centeno (cited supra), where the panel noted:

“The circumstances in the case before the Panel indicate that the disputed domain name <hiltonsports.com> has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the trademark HILTON as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.”

Likewise, on similar facts, the Panel in Barcelo Corporacion Empresarial, S. A. v. KPYR/Svetlana Zubovich, (cited supra), said:

“The Complainant produced two webpage printouts which demonstrate that on December 19, 2005, the disputed domain name resolved to a website where information concerning other hotels as well as general information about the Dominican Republic were offered. The website to which the domain name <barcelobavaropalace.com> resolved, included many links to tour operators, such as ‘Trip Advisors’, ‘Orbitz’ and ‘Hotel Super Portal’ offering information about other hotels than the Barcelу Bavarу Palace.

In the Panel’s opinion the Respondent, by such use, intentionally attempted to attract Internet users, expecting to reach the website corresponding to the Complainant’s resort and to obtain information about the Barcelу Bavarу Palace, to other online locations by creating a likelihood of confusion with the Complainant’s trademarks and business.”

That is in essence what the Respondent has done in the present case and the Panel must therefore conclude that the Respondent both registered and used the domain name in bad faith. The result is that the Complainant has made out the third of the three elements that it must establish.

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 <barceloclub.com> be transferred to the Complainant.

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The Honourable Neil Anthony Brown QC
Sole Panelist

Dated: June 6, 2007