WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Port Aventura, S.A. v. Fred McCaw c/o Chelsey McCaw Publishing, Inc.
Case No. D2008-0177
1. The Parties
The Complainant is Port Aventura, S.A., of Tarragona, Spain, represented by Landwell, PricewaterhouseCoopers, Spain.
The Respondent is Fred McCaw c/o Chelsey McCaw Publishing, Inc., of Las Vegas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <portaventurapark.com> is registered with Schlund + Partner AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2008. On February 5, 2008, the Center transmitted by email to Schlund + Partner AG a request for registrar verification in connection with the domain name at issue. On February 5, 2008, Schlund + Partner AG transmitted by email to the Center its verification response disclosing registrant and the contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 12, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complaint filed an amended Complaint on February 14, 2008. The Center verified that the Complaint together with the amended 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 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2008.
The Center appointed David J.A. Cairns as the sole panelist in this matter on March 18, 2008. 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, Port Aventura, S.A., is a leisure park company incorporated in Spain which began its business in 1988.
The Complainant is the owner of numerous EU, International and Spanish trademark registrations for word and mixed word and design trademarks, including the word mark PORT AVENTURA (M 1813844) registered in Spain on July 1, 1995. The Complainant uses these trademarks in connection with its business of the Port Aventura theme park in Tarragona, Spain. This is Spain’s largest theme park, and one of the largest leisure parks in Europe.
The Complainant also owns the domain name <portaventura.es>. The Port Aventura portal provides full information on the theme park, and sell substantial numbers of entrance tickets and accommodation via Internet.
The Respondent first registered the disputed domain name on May 1, 2006. The disputed domain name hosts a landing page with a series of listings, described as “sponsored listings”, which include links relating to the Complainant’s business or promoting services such as accommodation to customers wishing to visit the Complainant’s theme park. At the top of this landing page there is a link described as: “Why is this page displayed?”. When clicked an explanation page appears. This page states that the landing page appears temporarily, and was created by the Registrar and can be replaced by the registrant’s own page. It states: “You are seeing this page when you visit your domain (www.yourdomain.com) because you have not yet replaced the temporary web page which was created for you when you signed up for your 1&1 Internet domain or web hosting package”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its trademark PORT AVENTURA since: (i) the disputed domain name is composed of the distinctive terms “port aventura” and the generic word “park”, which also coincides with the Complainant’s business; and (ii) the Complainant’s trademarks were registered before the disputed domain name.
The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name since: (i) the Respondent has not registered any trademark that would legitimize the use of the disputed domain name; (ii) the Respondent’s name is not identical to the disputed domain name; (iii) the Respondent has not been authorized to use the disputed domain name by its legitimate owner; (iv) the Respondent has never been known on the market by the disputed domain name; (v) the Respondent does not offer any products or services with the disputed domain name; and (vi) the Respondent’s webpage does not have any content of its own but merely links advertising services of the Complainant’s sector.
The Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith. The disputed domain name was registered in bad faith because: (i) the Complainant was already known by the name Port Aventura when the disputed domain name was registered and therefore the selection of the disputed domain name could not have been fortuitous; (ii) Port Aventura was and is well known as a theme park, which implies that the Respondent could not have been unaware of the scale of the Complainant’s business; and (iii) given that the Respondent is a resident in the United States of America, choosing the disputed domain name in the Catalan language rather than English or Spanish is further evidence of bad faith registration. The disputed domain name is being used in bad faith because: (i) the Respondent is not using it for a bona fide offering of goods and services but to establish links in its website leading to services that are competitive with the Complainant’s; (ii) the Respondent is using the reputation of the Complainant’s trademark to attract visitors to its website; (iii) the Complainant sent a letter to the address of the Respondent that figured as the registrant at that time asking it to cease using the disputed domain name and to transfer it to the Complainant, but the Respondent failed to answer to the letter.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is required 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 appropriate.
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns several Spanish and international registrations for or including the words “port aventura”, including the Spanish word mark referred to above.
The disputed domain name is not identical with the PORT AVENTURA trademark, but does incorporate this trademark entirely. The fact that a trademark is incorporated in its entirety in a domain name is a solid indication, but does not ipso facto mean, that the domain name is confusingly similar to the trademark. The similarity of the trademark and the domain name depends on many factors, including “the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin” (See Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870).
This is another case of the addition to a registered trademark of a suffix referring to the nature of the services provided by the Complainant under the trademark which, as many UDRP decisions demonstrate, will almost invariably be insufficient to prevent the disputed domain name from being confusingly similar to the registered trademark.
In the present case, the disputed domain name is confusingly similar to the PORT AVENTURA trademark for the following reasons: (i) Port Aventura are two common words in the Catalan language, which in combination are distinctive; (ii) “park” is an ordinary descriptive word in the English language; (iii) “park” refers to the type of business of the Complainant, namely the operation of a theme park; (iv) the evidence demonstrates that the PORT AVENTURA trademark has a substantial reputation; and (v) furthermore, Internet users will associate the disputed domain name with the Complainant’s trademark, and assume that the Respondent’s website offers information or services relating to the Complainant’s theme park.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent owns or has contractual rights in any registration of a PORT AVENTURA trademark; (ii) the Respondent is not authorised or licensed by the Complainant to use the PORT AVENTURA trademark or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name; and (iv) there is no evidence of legitimate non-commercial or fair use of the disputed domain name.
Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. There is no evidence before the Panel of the existence of any of these circumstances in the present case. In relation to paragraph 4(c)(i) and (iii) the Panel finds that the Respondent’s use of the disputed domain name is for commercial gain through sponsored links, and also that the use of the disputed domain name to attract Internet traffic by deception (that is, by suggesting the website relates in some manner to the PORT AVENTURA trademark) is not a use in connection with a bona fide offering of goods or services.
Accordingly, and in the absence of any response from the Respondent providing any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Thus, the second element of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Complainant has submitted that the Respondent’s use of the disputed domain name constitutes bad faith under paragraph 4(b)(iv), namely, that the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its 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 website or location or of a product or service on the said website or location.
This Panel finds bad faith on this basis. The likelihood of confusion required by paragraph 4(b)(iv) is established by the fact that the disputed domain name is confusingly similar with the Complainant’s trademark, and the intention to attract users for commercial gain is demonstrated by the sponsored links on the website.
In the present case, as already noted, the sponsored links of the disputed domain name’s webpage were apparently created by the Registrar and not by the Respondent. The commercial gain might therefore be derived by the Registrar and not the Respondent. However, these facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons: (i) paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users “for commercial gain”, but this gain does not need to be derived by the Respondent himself. The Respondent cannot infringe the Complainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the Respondent is in contractual control of the content of the website at the disputed domain name, and had the power to instruct the Registrar to remove the parking page: see Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912. As stated in this decision, the principle is that “The Respondent is responsible for the content of any webpage hosted at the disputed domain name. It cannot evade this responsibility by means of its contractual relationship with the Registrar. The relationship between a domain name registrant and the Registrar does not affect the rights of a complainant under the Policy. (cf Ogden Publications, Inc. v. MOTHEARTHNEWS.COM c/o Whois IDentity Shield/OGDEN PUBLICATIONS INC., Administrator, Domain WIPO Case No. D2007-1373).”
Accordingly, this Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
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 <portaventurapark.com> be transferred to the Complainant.
David J.A. Cairns
Date: April 1, 2008