WIPO Domain Name Decision: D2008-0176

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Port Aventura, S.A. v. Demand Domains, Inc.

Case No. D2008-0176

1. The Parties

The Complainant is Port Aventura, S.A., of Tarragona, Spain, represented by Landwell, PricewaterhouseCoopers, Spain.

The Respondent is Demand Domains, Inc., of Bellevue, Washington, United States of America; represented by Christina G. Radocha, United States of America.

2. The Domain Names and Registrar

The disputed domain names are <portaventurathemepark.com> and <wwwportaventura.com>, registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2008, naming Whois Privacy Protection Service Inc. as respondent. On February 5, 2008, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain names at issue. On February 5, 2008, eNom, Inc. transmitted by email to the Center its verification response disclosing registrant and stating that the contact information was available “by doing a whois lookup at http://whois.enom.com” for the disputed domain names 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, correctly identifying the Respondent. 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 Response was filed with the Center on March 6, 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.

When a search for the registrant was conducted prior to these proceedings, the name of the registrant of the disputed domain names was Whois Privacy Protection Service, Inc. For that reason, Whois Privacy Protection Service, Inc. appeared as the Respondent in the initial Complaint. However, when the Registrar was contacted by the Center for verification purposes, it provided the contact details of the actual Respondent, i.e., Demand Domains, Inc., and the Complainant amended the Complaint accordingly. Therefore, the Respondent in this proceeding is Demand Domains, Inc.

The Respondent registered the disputed domain name <wwwportaventura.com> on May 2, 2007 and the disputed domain name <portaventurathemepark.com> on May 6, 2007. Both domain names host landing pages containing various categories and including links related to the Complainant’s business.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <wwwportaventura.com> is identical to its trademark PORT AVENTURA and that the disputed domain name <portaventurathemepark.com> is confusingly similar to its trademark PORT AVENTURA.

The disputed domain name <wwwportaventura.com> is identical to the Complainant’s trademark PORT AVENTURA since: (i) the Complainant’s trademarks were registered before the disputed domain name; (ii) the gTLDs extension “.com” has no bearing on assessing whether a disputed domain name is identical to a trademark or corporate name; and (iii) the lack of spaces between the words “port” and “aventura” is of no significance to this issue.

The disputed domain name <portaventurathemepark.com> is confusingly similar to the Complainant’s trademark PORT AVENTURA since: (i) the disputed domain name is composed of the distinctive terms “port aventura” and the generic words “theme” and “park”; and (ii) the words “theme” and “park” are descriptive of the Complainant’s business.

The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain names because: (i) the Respondent has not registered any trademark that would legitimate the use of the disputed domain names; (ii) the Respondent’s name is not identical to the disputed domain names; (iii) the Respondent has not been authorized to use the disputed domain names by its legitimate owner; (iv) the Respondent has never been known on the market by the disputed domain names; (v) the Respondent does not offer any products or services with the disputed domain names; and (vi) the content of the Respondent’s webpage is limited to links advertising services in the Complainant’s sector.

The Complainant further contends that the Respondent registered and is using the disputed domain names in bad faith. The disputed domain names were registered in bad faith because: (i) the Complainant was already known by the name Port Aventura when the disputed domain names were registered and therefore the selection of the disputed domain names could not have been fortuitous; (ii) the Complainant had already been a party to several WIPO complaints in relation to very similar domain names; (iii) 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 (iv) given that the Respondent is a resident in the United States of America, choosing the disputed domain names in the Catalan language rather than English or Spanish is further evidence of bad faith registration.

The disputed domain names are being used in bad faith: (i) by establishing links in the websites to other sites offering competing products; (ii) the Respondent could not have been unaware of the Complainant’s trademarks as some of the links lead to products offered by the Complainant; (iii) the Respondent is using the reputation of the Complainant’s trademark to attract visitors to its websites; and (iv) bad faith is further evidenced by the use of the privacy protection service offered by the registrar to conceal the real identity of the Respondent.

B. Respondent

The Respondent states that it was unaware of the Complainant’s rights in the disputed domain names until it received a notification of the present proceedings.

The Respondent states that the Complainant did not contact the Respondent prior to the issue of the Complaint. However, upon receipt of the Complaint, the Respondent advised the Complainant by email dated February 21, 2008 that it had not knowingly and intentionally registered the disputed domain names in conflict with third party rights, and offered to transfer the disputed domain names to the Complainant. The Complainant rejected the Respondent’s offer to settle. The Respondent by email dated February 25, 2008, again offered to transfer the disputed domain names. This message stated in part “May I ask why your client is not willing to accept Demand Domains offer to quickly transfer these domains? Demand Domains was not aware of your client’s purported trademarks rights when it assumed registration of these domains and had not been notified of your client’s concerns prior to the filing of the complaint in this current UDRP action. Demand Domains did not register these domains with any intent of bad faith. In fact, as a gesture of good faith, Demand Domains would like to transfer these domains to your client as soon as possible. I can assure you that if your client were to agree to Demand Domains offer, the domains would be immediately and safely transferred to your client.”

The Complainant did not respond to this email.

The Respondent denies that it is using the privacy protection service offered by the Registrar to conceal its real identity and states that the Respondent’s use of this service is for legitimate purposes.

The Respondent states that it has acted with utmost good faith throughout the proceedings and requests the Panel to dismiss the complaint or to endorse the Respondent’s offer to transfer without making a formal finding of bad faith against the Respondent.

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 names are 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 names; and (iii) that the Respondent’s domain names have been registered and are 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 names 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 names.

The Respondent does not oppose a transfer of the disputed domain names to the Complainant. On two occasions the Respondent proposed an amicable settlement of the dispute to the Complainant, offering to transfer the disputed domain names, and in its Response has requested that the Panel “endorse Respondent’s offer to transfer”. However, the Respondent denies any bad faith, and requests that the Panel makes no finding of bad faith against it.

The Complainant has not accepted the Respondent’s offer, and so there is no settlement. Instead there is a unilateral consent to transfer by the Respondent. Therefore, the question is the proper course of action for the Panel when faced by a unilateral consent to transfer, and in particular whether a unilateral consent to transfer justifies an order to transfer the disputed domain names without any finding that three paragraph 4(a) elements exist, or whether, notwithstanding the consent, the Panel must be satisfied that the paragraph 4(a) elements are proven.

The proper treatment of a unilateral consent to transfer was considered in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 where it was stated:

“A number of Panel decisions have considered the proper course where a respondent has unilaterally consented to transfer a disputed domain name to a complainant. There have been at least three courses proposed: (i) to grant the relief requested by the Complainant on the basis of the Respondent’s consent without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195); (ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398); and (iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent’s offer to transfer is not an admission of the Complainant’s right (Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the Respondent’s consent (Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745).

There is a difference between a unilateral consent to transfer and an admission of the elements of paragraph 4(a) of the Policy. A respondent might consent to transfer in circumstances where bad faith would be strongly denied (for example, where a domain name was registered in error). Accordingly, this Panel does not accept that a unilateral consent to transfer ‘deems’ proved the three elements of paragraph 4(a) of the Policy.

However, this Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207).”

The present case is an example of a unilateral consent to transfer with denial of bad faith. This Panel follows the reasoning in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 and finds that in these circumstances the Panel can order an immediate transfer pursuant to paragraph 10 of the Rules, and so orders in this case.

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 <portaventurathemepark.com> and <wwwportaventura.com> be transferred to the Complainant.

David J.A. Cairns
Sole Panelist

Dated: April 1, 2008