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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ARENES DE MURO 2.004, S.L. v. Roger Schoefert

Case No. D2008-1603

1. The Parties

The Complainant is ARENES DE MURO 2.004, S.L., of Spain, represented by IURISTEC, S.L., Spain.

The Respondent is Roger Schoefert of Germany.

2. The Domain Names and Registrar

The disputed domain names <playa-de-muro.com> and <playa-de-muro-village.com> (the “Domain Names”) are registered with PSI-USA, Inc. dba Domain Robot.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2008. On October 22, 2008, the Center transmitted by email to PSI-USA, Inc. dba Domain Robot a request for registrar verification in connection with the disputed domain names. On October 23, 2008, PSI-USA, Inc. dba Domain Robot 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 11, 2008.

In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2008. On November 11, 2008, the Respondent contacted the Complainant and Center by e-mail. On November 13, 2008, the Center received a request from the Complainant to suspend the proceedings in order to enable the parties to discuss settlement options. The Center received a request from the Complainant to re-institute the proceedings on November 28, 2008. The proceedings were re-instituted on December 1, 2008, and the new deadline for Response was set at December 19, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 23, 2008.

The Center appointed Luca Barbero as the sole panelist in this matter on January 13, 2009. 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 ARENES DE MURO 2.004, S.L. is the owner of the Spanish trademark HOTEL PLAYA DE MURO, No. 1153540 registered on May 4, 1987 in class 42.

The Complainant is furthermore the registrant of a number of domain names consisting in or including the term “playa de muro”; <playademurovillage.com>, registered on August 21, 2007; <iberostarplayademuro.com>, registered on July 1, 2008; <iberostar-playa-de-muro.com>, registered on August 21, 2007; <iberostarplayademurovillage.com>, registered on August 21, 2007; and <iberostar-playa-de-muro-village.com>, registered on August 21, 2007.

The Respondent registered the Domain Names <playa-de-muro.com> and <playa-de-muro-village.com> on February 16, 2007.

5. Parties’ Contentions

A. Complainant

The Complainant states that ARENES DE MURO 2.004, S.L. is part of the hotel chain IBEROSTAR HOTELES Y APARTAMENTOS, which is a holiday hotel chain that was founded in Palma de Mallorca (Balearic Islands, Spain) in 1986. The hotel chain is part of the IBEROSTAR group owning more than one hundred hotels in 15 countries all over the world.

In particular, the Complainant points out that ARENES DE MURO 2.004, S.L. is the owner of the hotel named IBEROSTAR HOTEL PLAYA DE MURO located at Albufera, Playa de Muro, in Mallorca, Spain, and that the Complainant is also the owner of the hotel IBEROSTAR PLAYA DE MURO VILLAGE, located in the same place.

The Complainant contends that the Domain Names <playa-de-muro.com> and <playa-de-muro-village.com> are confusingly similar to the Complainant’s registered trademark HOTEL PLAYA DE MURO and the Complainant’s Domain Names, highlighting that the only differences between the disputed Domain Names and the Complainant’s trademark are to be found in the words “hotel” and “village” which are not distinctive.

The Complainant indicates that Iberostar’s Hotel Playa de Muro Village is extremely well-known and popular, as far as hotels located in this area are concerned.

The Complainant further underlines that the Respondent is using the Domain Names to advertise the IBEROSTAR´s hotels PLAYA DE MURO and PLAYA DE MURO VILLAGE and to offer Internet users the alleged possibility to make online bookings at these hotels. This use of the Domain Names is potentially misleading possible customers to think that they will connect to the Complainant’s hotel’s websites, or that a close collaboration between the Respondent and the Complainant exists, or that an authorization to use IBEROSTAR´s trademark, logos and image had been granted to the Respondent.

The Complainant emphasizes that the fact that the domain names of the IBEROSTAR hotel chain usually correspond to the names of its hotels, and the fact that the Respondent is actually using Domain Names that are very similar to them and strictly linked to the activity of hotels of IBEROSTAR, gives rise to even more confusion for Internet users.

With reference to rights or legitimate interests in respect of the Domain Names, the Complainant states that the sole registration of the Domain Names does not grant any rights to the Respondent, and that the Complainant has not authorized the Respondent to the use Complainant’s trademark, logos or image.

With reference to the circumstances evidencing bad faith the Complainant indicates that the Respondent’s choice for the Domain Names <playa-de-muro.com> and <playa-de-muro-village.com> was neither fortuitous nor unintentional and that – on the contrary – this choice was made with the clear intention to take advantage of the renown the Complainant’s hotels.

The Complainant emphasizes that the Respondent has registered more than 40 other domain names, all corresponding to several IBEROSTAR hotel’s names and all of them hosting active websites which use the image, name and logo of the IBEROSTAR group.

The Complainant states that under such circumstances, it is undeniable that the registration of the disputed Domain Names by the Respondent is part of a well-established strategy aimed at benefiting from IBEROSTAR’s fame, and that the Respondent is clearly engaged in a pattern of conduct preventing the IBEROSTAR hotel chain and the Complainant from reflecting their mark in all the mentioned domain names.

The Complainant further informs the Panel that the Respondent has also registered several other domain names containing the marks of other well-known hotel chains, such as “www.buchungsservice-online.de”, which has been registered by Sport Visions AG and for which the Respondent is the administrative contact.

According to the Complainant, the Respondent is acting as a professional and, therefore, perfectly knows that, in order to use third parties’ trademarks, an authorization needs to be granted.

The Complainant points out that the Respondent pretends that bookings on the Complainants hotels can be made which is untrue, as neither IBEROSTAR hotel chain nor the Complainant, has received any booking made through <playa-de-muro.com> or <playa-de-muro-village.com>.

The Complainant concludes that the Respondent intentionally attempts to attract for commercial gain Internet users to his websites by creating likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites and of services on such websites.

B. Respondent

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

6. Discussion and Findings

6.1 Procedural issue

As mentioned in the procedural history, on November 11, 2008, the Respondent addressed a communication to the Complainant and the Center stating – among others – that it was not interested in any dispute concerning these Domain Names as it was not interested in them anymore and concluding that “[the Center is] free to transfer these domains to be used by IBEROSTAR”.

Notwithstanding the suspension that was then requested by the Complainant, the Respondent did not proceed with the transfer and the Center then received a request from the Complainant to re-institute the proceedings on November 28, 2008. The proceedings were re-instituted on December 1, 2008 and the Respondent did not submit any formal response.

On January 13, 2008 though the Respondent sent again an email to the Center stating that it was “NOT INTERESTED in theses domains anymore - These are free for IBEROTEL to use them. We will not prolong the ownership and we will do not use them for month!” but - in light of the prior, substantially equivalent, communication that led to a mere suspension in the procedure but not to the transfer - the Panel decides to proceed to a decision.

6.2 Decision

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or a service mark in which the complainant has rights; and

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

(iii) that the domain name has been registered and is being used in bad faith

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of the trademark HOTEL PLAYA DE MURO.

With regard to the Domain Name <playa-de-muro.com>, the Panel finds that the mere deletion of a descriptive part of the trademark registration “hotel” is not sufficient to exclude the confusing similarity between the Domain Name and the Complainant’s trademark.

In connection with the Domain Name <playa-de-muro-village.com>, likewise the Panel finds that the addition of the word “village” is not a distinguishing feature, and furthermore corresponds to the name of the other hotel of the Complainant based in the same location.

In light of the above, the Panel finds that the Domain Names <playa-de-muro.com> and <playa-de-muro-village.com> are confusingly similar to the trademark owned by the Complainant in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) that it has made preparations to use the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services prior to the dispute; or

(ii) that it is commonly known by the Domain Names, even if it has not acquired any trademark rights; or

(iii) that it intends to make a legitimate, non-commercial or fair use of the Domain Names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving the lack of the Respondent’s rights or legitimate interests in respect of the Domain Names according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names in order to shift the burden of proof to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Met America Mortgage Bankers v. Whois ID Theft Protection c/o Domain Admin, NAF Claim No. 852581).

In the case at hand, by not submitting a formal Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Names.

The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.

There is no indication before the Panel that the Respondent is commonly known by the Domain Names, has made preparations to use the Domain Names in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, non-commercial or fair use of the Domain Names.

Moreover, in the email addressed to the Center on November 11, 2008, the Respondent has also established – besides the fact that he is not interested in any dispute concerning these domains – that the Domain Names in question were used to “sell more business for these hotels as the hotel managements were not interested for years to use them” which clearly cannot be considered as a legitimate, non-commercial or fair use of the Domain Names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

In addition, the Panel observes the content of the websites registered by the Respondent, at the time the Complaint was submitted to the Center, contained a number of elements that could mislead Internet users to think a connection might exist between such websites and the undertakings of the Complainant. There is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant.

Thus on balance, and in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Names in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trademark or service marks or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the Domain Names; or

(ii) the holder has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Names, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 holder’s website or location or of a product or service on the holder’s website or location.

As to bad faith at the time of the registration the Panel notes that in light of the activities pursued by the Respondent, and the business also referred to in the exchange of correspondence, that the Respondent was likely aware of the Complainant’s trademark.

As in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257, this Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868, “[i]t is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith.”

The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that knowledge of the Complainant’s trademark at the time of the registration of the Domain Names is to be considered in drawing an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

Furthermore, the Panel observes that the Domain Names were pointing to websites where the Complainant’s trademark was referenced, which further indicates that the Respondent was well-aware of the Complainant’s trademark at the time of registration.

With reference to the actual use of the Domain Names, the Panel further finds that the Domain Names were used in bad faith – also in light of the content of the Respondent’s email of November 11, 2008 explicitly stating that the Domain Names were used to “sell more business for these hotels as the hotel management were not interested for years to use them”. Furthermore, the document submitted with the Complaint, evidencing that the Respondent has indeed reproduced the Complainant’s logo and the lettering of the registered trademark and published it at the online location corresponding to the Domain Names, is a clear indication that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the its website or location or of a product or service on its website or location pursuant to paragraph 4(b)(iv).

The Panel finds paragraph 4(b)(ii) also applicable in this case since it appears the Respondent has registered the Domain Names in order to prevent the Complainant from using the mark in a corresponding Domain Name and has engaged in a pattern of such conduct since it has also registered other Domain Names incorporating registered trademarks of other companies in the field of hotel business, as per list provided to the Panel in the documents attached to the Complaint.

In view of the above, the Panel finds that the disputed Domain Names were registered and are being used in bad faith.

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 Names, <playa-de-muro.com> and <playa-de-muro-village.com> be transferred to the Complainant.

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Luca Barbero
Sole Panelist

Dated: February 3, 2009