WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Desarrollo Marina Vallarta, S.A. DE C.V. v. Hector Rangel (Rentas)

Case No. D2015-0601

1. The Parties

The Complainant is Desarrollo Marina Vallarta, S.A. DE C.V. of Jalisco, Mexico, represented by Holland & Knight, LLP, United States of America (“USA”).

The Respondent is Hector Rangel (Rentas), of Jalisco, Mexico.

2. The Domain Name and Registrar

The disputed domain name <mayanmembers.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 April 7, 2015. On April 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 7, 2015, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2015.

The Center appointed Enrique Ochoa de González Argüelles as the sole panelist in this matter on June 2, 2015. 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

Desarrollo Marina Vallarta, S.A. DE C.V. is a duly existent Mexican Company which corporate purpose refers to the hospitality services sector.

The Complainant among others, is the holder of the Mexican trademark registrations (herein below “MAYAN trademark”):

The disputed domain name was registered on December 3, 2014.

The disputed domain name is for sale (parked) at GODADDY “http://mayanmembers.com/?reqp=1&reqr=.”

The Complainant has been part of several procedures regarding domain names, as follows:

The Respondent in this UDRP proceeding has been part in two of the referred procedures Desarrollo Marina Vallarta, S.A. DE C.V. v. Hector Rangel, WIPO Case No. D2014-1856 and Daniel Jesus Chavez Moran, Desarrollo Marina Vallarta, S.A. DE C.V. v. Registrant of grupovidantamembers.com, C/O Private Ranger Limited / Hector Rangel, WIPO Case No. D2014-1857.

5. Parties’ Contentions

A. Complainant

In summary, the Complainant contends as follows:

The Complainant has used MAYAN formative marks and names in connection with its hotel and resort services since the 1970’s, and the Complainant offers timeshare programs at its properties.

The Complainant has registered several MAYAN formative marks with the Mexican Industrial Property Institute.

A previous panel has determined that “(t)he Complainant’s trademarks are well known in Mexico” and it is the Complainant’s belief that the Panel may conclude that the Complainant has rights in its MAYAN formative service marks, and that the marks are well known in the hospitality industry.

The disputed domain name <mayanmembers.com> is identical or confusingly similar to the trademarks in which the Complainant has rights.

The disputed domain name <mayanmembers.com> has been formed by [i] co-opting the distinctive shared element of the Complainant’s MAYAN formative marks and [ii] adding wording which suggests services directed to Complainant’s time share program members. The disputed domain name immediately conveys the false and misleading impression that the disputed domain name identifies a Complainant web address, and it is confusingly similar to the Complainant’s MAYAN formative service marks as the result. The Panel may conclude that the disputed domain name is confusingly similar to a service mark in which the Complainant has rights.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons: [i] the Complainant has not authorized the Respondent to register or use the disputed domain name <mayanmembers.com> and there is no connection between the Complainant and the Respondent; [ii] the Respondent is not commonly known by the disputed domain name <mayanmembers.com>, the name “Mayan Members”, or any name reflected thereby; and [iii] the Respondent has made no legitimate commercial or noncommercial use of the disputed domain name.

The disputed domain name should be considered as having been registered and being used in bad faith for the following reasons: [i] the Complainant’s MAYAN formative marks were well-known prior to the date upon which the Respondent registered and used the confusingly similar disputed domain name incorporating the mark; [ii] the Respondent is using the disputed domain name to defraud the Complainant’s customers; and [iii] the Respondent’s passive holding.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds 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.

Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”

In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as the Panel considers appropriate (see paragraph 14(b) of the Rules); Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) The disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark;

(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.

A. Identical or Confusingly Similar

The disputed domain name in this proceeding, <mayanmembers.com>, contains the identical MAYAN¹ word in MAYAN MARKS, by which it was added the wording “members”. The presence of this wording does not mitigate the confusing similarity between the disputed domain name and the Complainant’s MAYAN trademark.

As the Complainant asserts, the addition of the word “members” simply lends more strength to the argument that the disputed domain name is confusingly similar to the MAYAN trademark, as the word “members” may lead cybernauts to believe that the disputed domain name refers to a site of members of the time sharing and other services rendered by the Complainant as its core business.

In a previous case, Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843 the Panel set forth that:

“The distinctive portion of the domain names in dispute is the word “dixons”. The domain names in dispute are confusingly similar and are likely to lead people to believe that the domain names <dixons-online.net> and <dixons-online.org> are connected with the Complainant. I agree with the reasons and conclusion of the Panelist in WIPO Case No. D2000-1406 between the same Complainant and Respondent in which the Panelist found on similar evidence that the domain name in dispute, in that case <dixons-online.com>, was confusingly similar to the DIXONS trademarks of the Complainant which are extensively used in the U.K. in respect of electronic products.”

Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s MAYAN trademark and that the Complainant has accordingly established the first of the three elements that they must prove.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the Complainant demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. UDRP panels have held that once a complainant establishes a prima facie showing that none of the three legitimizing circumstances in paragraph 4(c) of the Policy applies, the burden of production on this factor shifts to the respondent to rebut the showing (see Ets Leobert, SARL v. Jeonggon Seo, WIPO Case No. D2009-0004; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).

The Complainant asserts that the Respondent has no trademark registered that consists of or contains the term “Mayan”, nor does it have any right on an unregistered basis. The Respondent has never obtained agreement, authorization, or license from the Complainant to use the MAYAN trademark.

The Panel revised the trademark database of the Mexican Industrial Property Institute and learned that the Respondent does not own any trademark registration nor has filed any trademark application.

The Respondent has not submitted any response to the Complainant’s case, and has therefore failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the disputed domain name.

Consequently, the Panel finds on the record that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith, in violation of paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy provides four non-exclusive circumstances that suggest bad faith.

Since the Respondent did not file a response to the Complaint, there is no evidence nor allegations that the Respondent makes a fair use of the disputed domain name.

Given the reputation in Mexico and the wide use of the MAYAN trademark and the fact that the Respondent has been involved in two procedures of cybersquatting against the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant’s MAYAN trademark.

Moreover, there are indications that the disputed domain name is being used for fraud schemes to customers damaging the reputation of the Complainant, and since no response was filed by the Respondent, said evidence cannot be challenged.

Furthermore, since this Panel confirmed that the disputed domain name is parked for its resale and no response was filed, this circumstance evidences “passive hoding”, hence, registration and use in bad faith of the disputed domain name, as referred to in Liz Claiborne, Inc. v. Jung Hyun Shin, WIPO Case No. DMX2009-0006.

Based on the available record, the Panel is persuaded that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark, pursuant to the Policy, paragraph 4(b)(iv).

Therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

7. Decision

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 <mayanmembers.com> be transferred to the Complainant.

Enrique Ochoa
Sole Panelist
Date: June 16, 2015

¹ 1: a member of the peoples speaking Mayan languages; 2: an extensive language family of Central America and Mexico — Mayan adjective (visible at http://www.merriam-webster.com/dictionary/mayan)