The Complainant is Levantur, S.A of Palma de Mallorca, Spain, represented by Landwell, PricewaterhouseCoopers, Spain.
The Respondent is Media Insight of Miami Beach, Florida, United States of America, represented by Gaebe, Mullen, Antonelli, Esco & Dimatteo, United States.
The disputed domain name <granbahiaprincipejamaica.com> (the “Domain Name”) is registered with Melbourne IT Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2009. On May 8, 2009, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the Domain Name. On May 11, 2009, Melbourne IT Ltd 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 May 14, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2009. The Response was filed with the Center on June 3, 2009.
The Center appointed Warwick Smith as the sole panelist in this matter on June 15, 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.
On June 16 2009, the Complainant filed an unsolicited further submission. The Respondent's representative then sent an email to the Center seeking leave (in the event of the Complainant's supplementary filing being accepted) to file a Supplementary Response.
By procedural direction made on June 22 2009, the Panel exercised its discretion to admit and consider the Complainant's supplementary filing and, pursuant to paragraph 12 of the Rules, sought clarification from the Complainant on certain aspects of the Complaint and the Complainant's supplementary filing. The Panel also requested a further statement from the Respondent, explaining how and why the Respondent had selected the Domain Name. Both parties' supplementary statements were to be filed by June 25, 2009, and the time for the Panel to give its decision in the case was extended to Friday, July 3, 2009.
Both parties filed supplementary statements in response to the requests made by the Panel in its June 22, 2009 procedural directions. The Respondent's Supplementary Response contained material going beyond what was necessary to answer the Panel's request of the Respondent made on June 22, 2009, but having received and considered the Complainant's unsolicited supplementary filing dated June 16, 2009 the Panel determined that the unsolicited parts of the Respondent's Supplementary Response should also be admitted.
By procedural order No. 2 made on June 30, 2009, the Panel sought clarification of certain aspects of the Respondent's Supplementary Response, and also comment from the Respondent on the content of some January 2007 web pages from a website at the Domain Name which were archived on the Wayback Machine at “www.archive.org”. The time for the Panel to give its decision in the case was further extended to July 10, 2009.
The Respondent filed a timely Response to the Panel's June 30, 2009 request. The Panel has taken all of the parties' supplementary filings into account in this decision.
The Complainant is part of the Pinero Group, a leading player in the Spanish tourism industry. The Complainant is particularly involved with the hotel part of the group's business. It operates hotels in Spain, Portugal, Mexico and the Dominican Republican. It opened its first “Bahia Principe” hotel in the Dominican Republic in 1995, and it says that each of the 15 luxury hotels which it owns contains in its name the expression “Bahia Principe”, followed by the relevant geographical identifier for the hotel. One of the hotels is a hotel at Runaway Bay, Jamaica, called “Gran Bahia Principe Jamaica”.
The Complainant says that the term “Bahia Principe” is not the name of any geographical location, although the Panel notes from an extract which the Complainant produced from the United States Patent and Trademark Office (“USPTO”) trademark database that the English translation of the expression “Bahia Principe” is “Prince Bay”. According to the Complaint, the word “Gran” in Spanish means “big”.
The Complainant is the registered proprietor of a figurative service mark registered in international class 42 in both Spain and the United States. The service mark (“the Complainant's mark”) consists of a sun device with rays, immediately above the words BAHIA PRINCIPE CLUBS & RESORTS. The words “Bahia Principe” in the Complainant's mark are underlined, and they appear in larger font than the words “clubs & resorts”, which are immediately beneath them.
The Complainant's United States registration dates from August 20, 2001, and covers “accommodation services, namely hotels” in international class 42. The printout from the USPTO database refers to a first use in commerce in 1999. There is a disclaimer in respect of the CLUBS & RESORTS part of the Complainant's mark.
The Complainant says that it is commonly known in the Spanish and international markets under the abbreviated name “Bahia Principe”, and not by the full trade mark. In support of that statement, the Complainant says that the Spanish entity which is responsible for registration of domain names in the “.es” domain name space has until recently required that a domain name could only be registered in that space if it was a valid trademark in Spain. The Spanish authority for the “.es” space had accepted “Bahia Principe” as a valid trademark.
The Complainant has referred to extensive publicity for its hotels under the BAHIA PRINCIPE abbreviated mark, and has provided evidence of certain prizes won by some of its Bahia Principe hotels. It has made extensive investments in advertising its hotels and travel services in various media, and in particular in the design and functioning of its websites, from which it generates most of its sales and hotel reservations.
In addition to the Complainant's mark, the Complainant has provided a list of some 56 domain names which it has registered in various generic or country code domains. All of them consist of or include the expression “bahia principe”. The Complainant produced a copy of a tracking report relating to its main website at “www.bahia-principe.com”, showing that 17.4% of Internet users searching for the Complainant's website do so using the words “Bahia Principe”.
The Complainant claims that its BAHIA PRINCIPE trademark has become widely known in its sector, and should be considered as a well-known trademark.
The Domain Name was registered on June 23, 2005. The Complainant says that it did not authorise the Respondent to register the Domain Name, and that the Respondent does not have any identity or corporate name which is confusingly similar to the Domain Name.
The Complainant attached to its Complaint a copy of the website at the Domain Name (“the Respondent's website”), printed on May 5, 2009. The May 5, 2009 printout was in the English language, and was prominently headed “Gran Bahia Principe Jamaica”. The Complainant's mark was reproduced on the Respondent's website, and there were photographs of what appear to be the Complainant's resort hotels. The Respondent's website contained the following text:
“Welcome to the all-inclusive Gran Bahia Principe Jamaica!
Gran Bahia Principe Jamaica Guide. Your source for Gran Bahia Principe Jamaica hotel …. We are one of the leading groups in the Spanish … Gran Bahia Principe Tulum – Gran Bahia Principe Akumal [There follow what appear to be the names of various resorts, all commencing with the words “Gran Bahia Principe”.]
In the heart of the Jamaica Coast…you will find the Gran Bahia Principe Resort…
To check room rates and availability based on your travel dates, Click Here. For complete travel packages, including airfare and accommodations, Click Here.”
The text then set out various particulars of the hotels' facilities and services, and details of an “all inclusive plan”. There were toll-free telephone numbers for enquirers to check on rates and availability, and a 2007 copyright claim by “Vacation Tours Inc”. The email address for enquiries appears to have been an email address operated by that company.
The Complainant says in its Complaint that the Respondent's website promotes hotel services offered by companies which are in competition with the Complainant. The Complainant says that it is not possible to book a room at the Complainant's hotel on the Respondent's website. When Internet visitors want to check on the availability of a hotel room they are redirected to a website operated by Vacation Tours Inc.
The Complainant produced a copy of a page from the Vacation Tours website, downloaded on May 5, 2009. This website (also an English language website) offered travel packages to “the best vacation spots in the world”. It appears to have been directed at the American travel market. Click-on links (which appear to have consisted mostly of geographical locations in Mexico or the Caribbean) were displayed down one side of the web page. These links do not appear to have been limited to websites marketing only the Complainant's hotels.
According to the Response, the Respondent operates the media division of a Florida-based wholesale tour group operated by Vacation Store Inc (the group is referred to hereafter as “Vacation Store”). Vacation Store provides wholesale and retail travel packages for travel to destinations outside the United States. The Respondent makes its profit by purchasing at favorable rates from airlines, hotels and transportation companies, putting together travel packages, and selling those packages at a profit, primarily to retail travel agencies.
Vacation Store formed its media division “Media Insight” in 2003, and the media division was subsequently incorporated in the State of Florida as the Respondent. The Respondent says that Vacation Store began registering various domain names shortly after the media division was opened, and the Respondent continued that activity after its incorporation.
The Respondent says that it and Vacation Store have transacted substantial business with the Complainant over the years since the early 2000s. It says that Vacation Store has, over that time, been authorized by the Complainant to sell the Complainant's hotel rooms. Furthermore, the Respondent says that the Complainant has authorized Vacation Store (and other travel agencies and advertisers of the Complainant's products) to use the Complainant's copyright materials, on their respective websites. The Complainant has done this by allowing Vacation Store and the other travel agencies special password-protected access to the Complainant's copyright materials on the Complainant's website at “www.bahia.principeusa.com.” The Respondent says that travel agents are there authorized and encouraged to use the Complainant's printed materials, including logo and trademark, on their individual websites.
The Respondent denies that it has been trying to divert customers from the Complainant's business, and says that the opposite has in fact been the case – the Complainant has benefited from the custom generated for its hotels through the various Vacation Store websites.
The Respondent says that the Complainant has known of the Respondent's use of the Domain Name, but has elected not to make any complaint about it (although the Complainant did file a complaint against the Respondent for using other “Bahia Principe” domain names – as to which, see further below).
The Respondent points out that, of the numerous domain names that the Complainant has registered which include the words “Bahia Principe”, none contains the word “Gran” coupled with a geographic description. And although the Complainant owns a number of hotels which incorporate in their names the word “Gran”, none has a domain name associated with it. And of the Complainant's hotels that do have the word “Gran” as part of their names, only the hotel which is at issue in this proceeding also contains the name of a country (Jamaica) – all others contain the names of the more specific geographic areas within the countries where the hotels are respectively located.
The Respondent asserts that the Complainant did not name and open the hotel at Runaway Bay, Jamaica, until 2008, being some three years after the Respondent had registered the Domain Name. The Respondent says that the reason the Respondent called the hotel “Gran Bahia Principe Jamaica” (rather than “Gran Bahia Principe Runaway Bay”, which would have been consistent with the style in which its other resort hotels have been named) was to capitalize on the hard work the Respondent had put in developing the Respondent's website prior to the opening of the Complainant's hotel.
The Respondent says that the only goods or services offered through the Respondent's website are the Complainant's hotel rooms. The first notice the Respondent received of the Complainant's objection to this use of the Domain Name, was the filing of the present proceeding.
The Respondent says that the Complainant and Vacation Store are currently engaged in litigation in the Courts in Florida. The Court action is unrelated to the Domain Name, or to any issue related to domain names, but the Respondent says that the Complainant has asserted that it will continually file domain name disputes against Vacation Store until Vacation Store settles the State Court action. The Respondent then referred to a domain name proceeding filed by the Complainant in 2008, in which the Complainant complained about various other domain names registered by the Respondent but did not refer to the Domain Name. (This appears to be a reference to an administrative proceeding filed by the Complainant with the Center in respect of the domain names <bahiaprincipebavaro.com>, <bahiaprincipecoba.com>, and <bahiaprincipejamaica.com> (Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774), which was referred to in the Complaint. The Panel notes that the respondent in that case was the Respondent, and that no response was filed. The three disputed domain names, which had been registered between August 2003 and November 2004, were ordered to be transferred to the Complainant.)
Further in support of its contention that the Complainant has pursued this administrative proceeding for the collateral purpose of applying improper pressure on the Respondent (and ultimately securing a resolution of the Florida Court action which will be favorable to the Complainant), the Respondent says that the Complainant has elected not to file domain name dispute claims against numerous other travel agents or domain name holders who are using the Complainant's name in their domain names (e.g. the travel agency “Bookit” is said to have the domain name bahiaprinciperesorts.bookit registered, but no action has ever been taken by the Complainant against that company).
The Respondent did not attach with its Response any documents corroborating the various allegations made.
On June 16, 2009, the Complainant's representative sent an email to the Center stating the following:
1. “The Respondent did not attach any document or contract to prove any business relation with the Complainant, “because it kind of relation existed only three years ago with Vacation Store, but after a fraud action ($USD300,000) about the charters company MIA, the mentioned relation was cancelled and not renewed”.
2. “Taking account of this fact, must be clear the willpower of [the Complainant] on not having, any more, business relations with the respondent because of the mentioned precedents”.
3. “The aim of this response is to insist on the fact that my client has enough resources to manage its own company without needing an external agency”.
4. “After the mentioned fraud action, my client broke any relation with the Respondent, what means that it has no rights to use my client's trademark, logo or even the name to get benefits with them”.
5. “Registering the [ Domain Name], and using it to get profit after knowing [the Complainant] neither want not allows any kind of business relationship with the Respondent shows bad faith on the Media Insight/Vacation Store actions”.
As noted in the Procedural History section of this decision, the Panel admitted the Complainant's unsolicited June 16, 2009 email, and sought clarification of certain aspects of it. Specifically, the Panel enquired about the nature of the business relationship between the Complainant and Vacation Store or the Respondent, and requested copies of any relevant written contractual terms. The Panel also enquired as to when any business relationship between the parties commenced and was terminated, and when the Complainant first became aware that the Respondent had registered the Domain Name. In the supplementary statement it filed in response to that Panel request, the Complainant acknowledged that there has been a business relationship between itself and Vacation Store. One aspect of the relationship related to the sub-chartering of flights between Florida and the Dominican Republic. The Complainant said that that relationship commenced on November 9, 2005 and finished on April 27, 2006. On the latter date, the Complainant says that it terminated the relationship because of the Respondent's alleged unilateral action in purporting to amend the terms of the agreement between the parties.
The Complainant also provided copies of two “proposals” signed by the Complainant and Vacation Stores relating to the Gran Bahia Principe Bavaro and Bahia Principe San Juan resorts, each dated July 8, 2005. These two contracts related to accommodation services, but do not appear to have specifically mentioned the use of the Complainant's trademark, the registration of a domain name, or the use of “Bahia Principe” signs or logos. According to the Complainant, these accommodation service contracts were initiated on December 21, 2005, and ran for one year from that date, with no renewal.
On the question of when the Complainant first became aware of the registration of the Domain Name, the Complainant said “Respondent was aware of the registration of [the Domain Name] recently, more specifically [the Complainant] was warned of the captioned registration on 17th March 2009. An email was sent by a Sales Manager who works for Bahia Principe in Paraguay asking about de legality on using the Company trademark on [the Domain Name]. The Complainant did not provide a copy of that email.
In its procedural order dated June 22, 2009, the Panel also enquired of the Respondent how and why it had chosen the Domain Name. The Respondent replied with a detailed statement covering numerous other matters, but relevantly stating in response to the Panel's question:
“Respondent, in anticipation of trends and development of certain geographic areas, registered numerous generic names that were associated with particular areas. In 2005, when Respondent had a contract with Complainant and Complainant was encouraging the advertising of its properties on Respondent's web pages, Respondent simply registered the generic name GranBahiaPrincipeJamaica in anticipation that there might be reason to promote resorts in that geographic area.”
In addition, the Respondent repeated much of what it had said in its Response. According to the Respondent's supplementary statement, the early relationship between the Complainant and Vacation Store proved beneficial to both parties, and in 2004 it was extended to the arranging of air charters from Miami to the Complainant's various hotels. There were subsequent charter agreements entered into by the parties, until April 2006, when the Complainant elected to rent its own fleet of planes directly from Miami Air. The air charter agreements between the parties ended at that point.
The Respondent asserted that the Complainant was aware in 2005 of the use of the Domain Name by the Respondent, because the Respondent's website was used to book rooms at the Complainant's hotels during the 2005 and 2006 season.
The Respondent produced a copy of a written contract between the Complainant and Vacation Store, dated July 12, 2004. The contract provided for special rates for Vacation Store at the Complainant's Punta Cana resort, for a “Labour day charter”.
By its further procedural order made on June 30, 2009, the Panel requested that the Respondent provide some sample documents corroborating its statements that the Complainant was aware in 2005 of the Respondent's use of the Domain Name, and that the Domain Name was used in 2005 and 2006 to book rooms at the Complainant's hotels. In a second Supplementary Response dated July 2, 2009, the Respondent provided certain documents relating to bookings at the Complainant's Punta Cana hotel in February 2006. However, those documents do not appear to prove that the Domain Name or the Respondent's website were used to make the bookings. In addition, the Respondent provided two emails dated April 8, 2005 and September 20, 2005, both in the Spanish language. No translations were provided.
The Respondent also attached to its second supplementary statement an affidavit sworn by a Mr. Alvarez, Vice President of Operations for Vacation Store. This affidavit alleged the existence in 2005 of a marketing agreement between the Complainant and Vacation Store, which was said to cover print media and web advertising, including advertising using the Respondent's website. The affidavit named an executive within the Complainant organisation who was said to have participated in the negotiations for this marketing agreement, and stated that that representative was shown the web pages, including pages from the Respondent's website, that were being used in the promotions. Mr. Alvarez deposed that the Complainant's representative approved of the use of the web pages for the promotions, and encouraged the Respondent to continue with the promotions.
In its second supplementary statement, the Respondent said that it was not aware of the name of the Complainant's proposed hotel at Runaway Bay in Jamaica when it registered the Domain Name. It said that it believed that the Complainant's hotel was going to be named “Bahia Principe Jamaica Resort”. (In support of that contention, the Respondent produced an email dated April 18, 2005 from Yolanda Hernandez of the Complainant, which noted “the upcoming opening of Bahia Principe Jamaica in Summer 2006”).
In its June 30, 2009 procedural order, the Panel had asked the Respondent to comment on certain archived pages from the Respondent's website as at January 2007 (available on the Wayback Machine at “www.archive.org”), in which there were sponsored links to third party hotel sites, at least some of which appeared to have no connection with the Complainant. In its second supplementary statement, the Respondent answered:
“…the site was originally developed as a generic web page. The site was used to promote various hotels. When the hotel did open, and Complainant provided actual photos and descriptions of the resort, the page was then modified to its current content, and used exclusively to promote only the Complainant's properties.”
The Respondent explained that its use of the name “Gran Bahia Principe Jamaica” on the web pages in 2007 was not meant to represent the name of the hotel. It said that that name was used to encourage potential customers to come back to the Respondent's website to obtain additional information.
The Respondent acknowledged in its second supplementary statement that the Complainant and the Respondent no longer have a contractual relationship. However, the Respondent said that it continues to use the Respondent's website to book rooms at the Complainant's hotel, and the Complainant continues to receive economic benefits from those bookings and the advertising on the Respondent's website.
The Complainant contends:
1. The Domain Name is confusingly similar to the Complainant's mark. The essential part of the Complainant's mark, the words BAHIA PRINCIPE, are reproduced in the Domain Name, and the only additions are the geographical identifier “Jamaica” and a commonplace Spanish adjective meaning “big”. The CLUBS & RESORTS part of the Complainant's mark merely describes the business the Complainant carries out under the mark; those words do not contribute to the distinctiveness of the Complainant's mark. The dominant parts of both the Domain Name and the Complainant's mark are thus identical. The addition of a geographic indicator or a non-distinctive word, or the misspelling of a trademark, is not enough to avoid Internet users' confusion between a complainant's widely-known services and a disputed domain name (citing Starwood Hotels & Resorts Worldwide Inc, The Sheraton, LLC, Sheraton International, Inc, Westin Hotel Management LP v. Services LLC, WIPO Case No. D2007-08729).
2. The Complainant has used the name “Bahia Principe” extensively, and is known in Spain and internationally under that name. The “Bahia Principe” name should be considered to be a well-known trademark, and worthy of protection as such.
3. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following:
(i) The Respondent is not commonly known by the Domain Name.
(ii) The Respondent does not use the Domain Name at all.
(iii) The Complainant has not consented to the Respondent's use of a domain name which is confusingly similar to the Complainant's mark.
(iv) The Respondent does not hold any relevant trademark or service mark.
(v) The Respondent has been trying to identify itself in the market by using the Complainant's mark. This is evidenced by the fact that the Respondent's website offers hotel services related with companies in competition with the Complainant, using the Complainant's trademark BAHIA PRINCIPE. The Respondent has registered the Domain Name with a clear speculative intention, taking advantage of the fact that the Complainant is well-known to the public.
(vi) The use on the Respondent's website of the Complainant's mark and signs, is intended to make Internet users booking through the Respondent's website believe that they are really using the Complainant's booking services. In fact, the Respondent's website is merely being used to redirect Internet users to the website operated by Vacation Store.
(vii) The Respondent has not proved that it has had any business relationship with the Complainant. A business relationship which did exist was cancelled 3 years ago, and has not been renewed. The breaking of that relationship means that the Respondent has no rights to use the Complainant's mark or logo, or to derive benefits from them.
(viii) The contracts between the parties, and the correspondence, show that the Respondent and Vacation Store have no rights to offer accommodation services using the Complainant's resources, without the Complainant's consent, and against its will.
4. The Respondent registered and has used the Domain Name in bad faith. The Complainant relies on the following grounds:
(i) It is impossible to believe that the Respondent was unaware of the Complainant's business, as the Respondent has been using the Complainant's mark to confuse users on the booking services.
(ii) The absence of any content on the Respondent's website apart from links to hotel services of other companies is further evidence of the Respondent's bad faith.
(iii) The Respondent has been found guilty of bad faith registration and use of domain names in the past, including the domain name <bahiaprincipejamaica.com>. The present proceeding should be resolved in the same way that the proceeding relating to that Domain Name was resolved, namely by order for transfer of the Domain Name to the Complainant.
(iv) The Respondent knew when it registered the Domain Name that it would be unable to use the Domain Name without violating the Complainant's rights.
(v) Many potential customers of the Complainant have been deceived after trying to book non-existent services through the Respondent's website, and that can only be damaging to the Complainant.
(vi) The Respondent has acted in bad faith by establishing links from the Respondent's website to other websites offering leisure and accommodation services which are competitive with the Complainant's business. The only purpose which explains the Respondent's acts, is to make a profit from the Complainant's business by confusing Internet users.
(vii) The Respondent's unauthorized use of the Complainant's mark and/or logo on the Respondent's website is a further indicator of the Respondent's bad faith.
(viii) The Respondent's bad faith is sufficiently demonstrated by the Respondent's keeping and managing the Domain Name, and offering accommodation services through the Respondent's website, after the Respondent knew that its relationship with the Complainant had been terminated.
(ix) The Respondent has been guilty of one or more of the forms of bad faith registration and use which are listed at paragraph 4(b) of the Policy.
The Respondent's contentions can be summarized as follows:
1. Generic names, geographic names, and common words are not protected marks. The Domain Name is a generic name, consisting of nothing more than generic and geographic terms. Such terms have no protection under United States Federal trademark law. There is nothing in the Domain Name that would indicate that it relates to “Bahia Principe”. There is nothing in any of the terms which make up the Domain Name which would give any individual looking at the Internet an indication that the Domain Name is associated with the Complainant.
2. The Respondent registered the generic name “GranBahiaPrincipeJamaica” in anticipation that there might be reason to promote resorts in that geographic area. (The Respondent has registered other domain names consisting of the name of a hotel chain coupled with a geographical place name, notwithstanding that the particular hotel chain did not operate any hotel in that particular location. The purpose of such registrations is to attract customers to other hotels operated by the hotel chains.) At that time, the Respondent believed that the Complainant's planned hotel in Jamaica would be named the “Bahia Principe Jamaica Resort”.
3. The Respondent and/or Vacation Store have had contracts with the Complainant since 2000, under which they have been authorized to sell the Complainant's hotel rooms.
4. There is no evidence that the Respondent has offered to sell or otherwise transfer the Domain Name to the Complainant, or of the Respondent having attempted to disrupt the Complainant's business, whether by trying to divert customers from the Complainant's business or otherwise.
5. The Complainant has licensed or otherwise authorized the Respondent to use the trade names, service marks, and the websites of the Complainant. (The Complainant has actively encouraged the Respondent and other travel agents to use the Complainant's mark and other copyright materials, by providing access to those materials for use by the Respondent and other travel agents, on the Complainant's website at “www.bahiaprincipeusa.com”). Thus, the Respondent should be considered as having rights or legitimate interests in respect of the Domain Name.
6. The Complainant knew of the Respondent's use of the Domain Name, but elected not to pursue the matter (although it filed a complaint against the Respondent relating to the Respondent's registration of other “Bahia Principe” domain names). The Complainant elected to name its hotel at Runaway Bay, Jamaica, as the “Gran Bahia Principe Jamaica”, in order to take advantage of the work the Respondent had put in, in developing the Respondent's website.
7. The Complainant has not registered any domain name with the word “Gran” in it. The Complainant's mark is not recognized when it is preceded by the word “Gran” (otherwise the Complainant would have been registering domain names incorporating the word “Gran”).
8. There is no evidence of any pattern of domain name hijacking by the Respondent.
9. The Respondent has used the Domain Name in connection with a bona fide offering of goods and services, namely the sale of the Complainant's hotel rooms.
10. It is impossible for the Panel to determine that the Respondent knew of the name of the hotel at the time it registered the Domain Name, since the hotel was not then in existence. In fact, it is the Complainant who is the one who is guilty of infringement, by intentionally naming a hotel after a domain name that had been in existence for years.
11. The Respondent believed, and had reasonable grounds to believe, that its use of the Domain Name was fair and lawful.
12. The Respondent has spent substantial resources promoting the Domain Name and building up the Respondent's website. The Complainant has done nothing in a timely manner to protect its claimed exclusive interest in the Domain Name, and since the hotel opened in 2008 the Complainant has received income from the sale of the hotel rooms promoted on the Respondent's website. In those circumstances, it would be inequitable to permit the Complainant to prevail in this proceeding.
13. There are factual disputes in this case which render it inappropriate for the Panel to rule on the Complainant's claims. Questions of legitimate use, fair use, or consent, are not issues for the Panel to decide – such issues should be left to the courts.
14. The Complainant is using this proceeding for the improper purpose of applying pressure on Vacation Store to settle the litigation in the Florida Courts. The Complainant thus has unclean hands, and should not be entitled to any relief.
15. The Respondent's website was originally developed as a generic web page, which was used to promote various hotels. When the Complainant's Jamaica hotel did open, and the Complainant provided actual photographs and descriptions of it, the Respondent's website was then modified to its current content, and used exclusively to promote only the Complainant's properties.
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
The Complainant has proved that it is the registered proprietor of the Complainant's mark in Spain and in the United States.
That being so, the question is whether the Domain Name is confusingly similar to the Complainant's mark. The Panel is satisfied that it is.
First, the Panel accepts the Complainant's submission that the part of the Complainant's mark which consists of the words “CLUBS & RESORTS” is purely descriptive of the services provided under the Complainant's mark, and as such does not contribute to the distinctiveness of the Complainant's mark. It is the expression “bahia principe” which forms the dominant part of the Complainant's mark.
The words “bahia principe” are included in their entirety in the Domain Name, and the incorporation of a complainant's trademark in full in a disputed domain name will often be sufficient to establish confusing similarity (see for example Nokia Group v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782, and the decisions referred to at pages 4 – 5 of the decision in that case. See also the decision of the three-member panel in the Ritz Hotel v. Damir Kruzicevic, WIPO Case No. D2005-1137, and the decision of this Panel in Quintessentially UK Limited v. Mark Schnorrenberg/Quintessentially Concierge, WIPO Case No. D2006-1643). The Complainant's mark has not been incorporated in its entirety in the Domain Name in this case, but the heart, or essence, of the Complainant's mark has been incorporated.
The words “gran” and “Jamaica” in the Domain Name are not sufficient to avoid the confusing similarity caused by the inclusion of “Bahia Principe” in the Domain Name. “Gran” is a common Spanish word meaning “big”, or “large”, and would be recognized as such by a significant number of Internet users. Jamaica is simply a geographical identifier designating one of the countries in which the Complainant provides its resort hotel services under the Complainant's mark. The dominant, distinctive part of the Domain Name is the expression “bahiaprincipe”, and that expression is also the dominant, distinctive, part of the Complainant's mark. Moreover, the Panel is satisfied that a significant number of Internet users who were aware of the Complainant's hotel resort services provided under the Complainant's mark, would associate the Domain Name with the Complainant.
The Complainant's mark does include a sun device, but the Panel notes that in Sweeps Vacuum & Repair Center, Inc. v. Nett Corp, WIPO Case No. D2001-0031, the three-member panel held that because graphic elements of a complainant's trademark could not be reproduced in a disputed domain name, those graphic elements need not be considered when assessing identity or confusing similarity. The Sweeps decision was referred to by the majority in the recent three-member panel decision in Ruggedcom Inc v. James Krachenfels, WIPO Case No. D2009-0130 (in which the majority noted that UDRP panels have often accepted a fairly low threshold of proof for a complainant under paragraph 4(a)(i) of the Policy). The majority in Ruggedcom Inc expressed the view that the question at the heart of paragraph 4(a)(i) is whether the mark and the disputed domain name look, sound, and “feel” sufficiently similar that Internet users looking for websites associated with the complainant would be likely to arrive at a website at the disputed domain name. Internet users are well aware that domain names cannot incorporate figurative, or device, elements of a complainant's trademark, so in answering that question the principal focus must be on the word elements of the complainant's mark. In this case, the Panel is satisfied that the inclusion of the expression “Bahia Principe” in the Domain Name creates a sufficiently similar sound and impression for a finding of confusing similarity between the Domain Name and the Complainant's mark.
The “.com” suffix in the Domain Name is not taken into account in the comparison – see L'Oreal v. Avraham Mattan, Vichycare, WIPO Case No. D2007-0122, and Sidestep Inc v. Anna Valdieri/Marco Ferro, WIPO Case No. D2007-0212, followed by this Panel in Sanderling Pty Limited, trading as Thimblelady v. Roxanne International, WIPO Case No. D2007-0385.
For the foregoing reasons, the Panel concludes that the Domain Name is confusingly similar to the Complainant's mark. In those circumstances, it is not necessary for the Panel to determine if the Complainant enjoys unregistered trademark rights in a BAHIA PRINCIPE word mark.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out a 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”.
In this case, the Complainant says that it did not authorize the Respondent to register the Domain Name. That assertion does not appear to be challenged by the Respondent: the Respondent's case appears to be that the Complainant was aware in 2005 that the Respondent had registered the Domain Name, but it does not appear to be suggesting that the Complainant knew and approved of the Respondent's proposed registration in advance.
There is no suggestion that the Respondent is commonly known by the Domain Name, so paragraph 4(c)(ii) of the Policy cannot provide a defense to the claim. Nor does it appear that the Respondent could claim any rights or legitimate interests under paragraph 4(c)(iii) of the Policy. The Respondent's use of the Domain Name appears to have been a commercial use (of the kind to which paragraph 4(c)(i) of the Policy is generally directed), rather than a legitimate noncommercial or fair use of the kind which paragraph 4(c)(iii) is intended to cover.
The foregoing factors are sufficient to establish a prima facie case, and the evidentiary onus therefore shifts to the Respondent. The question, then, is whether the Respondent has provided plausible evidence in its Response, and in its supplementary statements, that it does have some rights or legitimate interests in respect of the Domain Name. If a respondent satisfies that “plausible case” test, the complaint will normally fail. UDRP panels are not equipped to resolve complex factual disputes – such disputes are better dealt with by the courts.
It is convenient to begin by looking at the position on June 23, 2005, when the Respondent registered the Domain Name. The Panel is satisfied on the evidence which has been produced that the Respondent had no rights or legitimate interests in the Domain Name at that time. Indeed, the probability on the evidence is that the Respondent registered the Domain Name in bad faith, with a view to trading off the Complainant's reputation in its hotel resorts operated under the Complainant's mark. The Panel has come to that view for the following reasons:
1. The explanation for its choice of the Domain Name which the Respondent gave in its Response is simply not plausible. The Domain Name is not a generic name as the Respondent contended. It consists of a particular combination of words, three of them being in the Spanish language, and one being the name of a country. A combination of words, each of which might individually be generic or descriptive, is perfectly capable of being distinctive as a combination. Secondly, the Respondent's contention that “there is nothing in [the Domain Name] that would indicate that it relates to ‘Bahia Principe'” is palpably wrong – the names of all of the Complainant's 15 resort hotels contain the words “Bahia Principe”, and at least10 of them commence with the expression “Gran Bahia Principe” (followed in each case by the name of the location of the particular resort). In those circumstances, it was disingenuous of the Respondent to state in the Response that “there is nothing in any of those terms [i.e., the terms which make up the Domain Name] which would give any individual looking at the Internet an indication that the Domain Name is associated with the Complainant”.
2. The Response appeared to imply that the Respondent simply pulled the Domain Name out of the air when it selected it in June of 2005, with no inkling that the Complainant would open a hotel in Jamaica in 2008 bearing precisely the same name as the Domain Name. (See for example the statement in the Response: “As noted above, Respondent had registered the domain name three (3) years before Complainant had even opened its hotel. Thus, it is impossible for this Panel to determine that Respondent knew of the name of the Hotel at the time it registered the Domain Name, since the hotel was not in existence.”) It was only when the Panel put further questions to the Respondent, and referred the Respondent to the archived web pages from January 2007, that the real story began to emerge. The Respondent belatedly produced a copy of an email from the Complainant to Vacation Store dated April 11, 2005 (over two months before the Domain Name was registered), in which the Complainant referred to “the upcoming opening of Bahia Principe Jamaica in summer 2006”. Even when that email was produced, the Respondent still asserted (in its second supplementary statement dated July 2, 2009) that it believed that the hotel was going to be named “Bahia Principe Jamaica Resort”. In fact, the word “Resort” was not part of the name mentioned in the Complainant's April 11, 2005 email.
3. In 2008, an administrative decision was issued under the Policy, in which three disputed domain names were ordered to be transferred by the Respondent to the Complainant. One of those disputed domain names was <bahiaprincipejamaica.com>. The administrative decision, a copy of which the Complainant produced, shows that that particular domain name had been registered at some time between August 2003 and November 8, 2004. The Respondent did not defend that proceeding, and it has offered no reason in this proceeding for its failure to do so. In the absence of any explanation for the lack of a response in that claim, the Panel can only sensibly infer that the Respondent had no defense to the claim; that it registered <bahiaprincipejamaica.com> and the other two “bahia principe” domain names which were the subject of that proceeding, in bad faith. The domain name <bahiaprincipejamaica.com> corresponded precisely to the proposed name of the Complainant's planned Jamaica resort as noted by the Complainant in its April 11, 2005 email. Looking at the registrations of that domain name and the Domain Name together, the high probability must be that the Respondent became aware by some time in late 2003 or 2004 that the Complainant intended to open a resort hotel in Jamaica, and opportunistically registered both the <bahiaprincipejamaica.com> domain name, and the Domain Name, with a view to securing commercial advantage when the Complainant opened its Jamaica hotel. (As for the addition of the word “gran” in the Domain Name, the Respondent would have been well aware that most of the Complainant's “Bahia Principe” Resort hotels were named the “Gran Bahia Principe …” hotel. Registering a “gran” alternative would have been a fairly obvious step to take to cover the possibility that the Complainant might ultimately adopt the “Gran Bahia Principe…..” format when it finally settled on a name for its new Jamaica hotel.)
4. In its first Supplementary Response, the Respondent answered the Panel's enquiry as to how the Respondent selected the Domain Name in 2005, as follows:
“Respondent, in anticipation of trends and development of certain geographic areas, registered numerous generic names that were associated with particular areas. In 2005, when Respondent had a contract with Complainant and Complainant was encouraging the advertising of its properties on Respondent's web pages, Respondent simply registered the generic name GranBahiaPrincipeJamaica in anticipation that there might be reason to promote resorts in that geographic area.”
When the Respondent submitted its second Supplementary Statement, it became clear that that explanation provided only part of the story. The Respondent failed to state, either in the Response or in its first supplementary statement, that it already knew when it registered the Domain Name in June 2005 that the Complainant planned to open a “Bahia Principe Jamaica” resort in the summer of 2006.
5. The January 2007 archived web pages from the Respondent's website contained sponsored links to sites operated by the Complainant's competitors. It appeared that those January 2007 web pages had been in the same form for quite some time prior to that date, because the text on the archived web pages noted that “Bahia Principe Clubs & Resorts will open a hotel complex in Jamaica in Winter 2006”. When the Panel drew the archived web pages to the Respondent's attention, and enquired about the sponsored links, the Respondent answered:
“As indicated in the Respondent's Supplemental Response, the site was originally developed as a generic web page. The site was used to promote various hotels. When the hotel did open, and Complainant provided actual photos and descriptions of the resort, the page was then modified to its current content, and used exclusively to promote only the Complainant's properties.”
6. The existence of sponsored links to the websites of some of the Complainant's competitors is consistent with the Respondent having chosen the Domain Name without the Complainant's prior knowledge and approval. The likelihood is that the Respondent, knowing of the Complainant's plans to build a “Bahia Principe Jamaica” resort hotel in Jamaica, decided to “steal a march” on the Complainant by registering the two most likely domain names which the Complainant might want to use to promote the new hotel. Those two domain names were of course <bahiaprincipejamaica.com>, and the Domain Name. The Respondent knew that registering a domain name incorporating either of the expressions <bahiaprincipejamaica.com> or <granbahiaprincipejamaica.com> would attract Internet users who were familiar with the Complainant and its hotel resorts, and that a proportion of that Internet traffic would click on the sponsored links to the third party websites (and thus produce click-through revenue for the Respondent). That is the kind of bad faith behavior to which paragraph 4(b)(iv) of the Policy is directed.
The existence of the sponsored links to third party websites in the early stages also effectively precludes any argument that the Respondent was then legitimately using the Domain Name as a genuine reseller of the Complainant's hotel services. For a domain name registrant to have a legitimate interest as a genuine reseller of trademarked goods or services, the registrant must use its website to sell only the trademarked goods or services. Otherwise, the registrant could be using the trademark to bait Internet users and then switch them to other goods – see Oki Data Americas Inc v. ASD Inc, WIPO Case No. D2001-0903, Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447, and Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.
Although the Panel is satisfied that the Respondent had no rights or legitimate interests in the Domain Name at the point when it was registered, it remains to be considered whether the Respondent may have acquired a right or legitimate interest in the Domain Name at some time after the registration date. The possibility that a respondent might register a disputed domain name in bad faith but subsequently acquire such a right or interest was noted by this Panel in Lonely Planet Publications Pty Limited v. Mike Tyler, WIPO Case No. D2004-0670. For a respondent to prevail in such a case, the critical matter is that the respondent's right or legitimate interest must still exist at the date of the filing of the complaint.
The Complainant's evidence relating to the events after June 2005 was far from satisfactory. First, the Complainant did not fully disclose in its Complaint the extent and nature of its prior dealings with Vacation Store. The Complaint stated only that the Respondent had not been authorized or licensed to use the Complainant's mark. It went on to assert that the Complainant had “found” that the Respondent had incorporated pictures and the Complainant's signs on the Respondent's website, to make users believe that they were really using [the Complainant's] booking services. The Complainant also stated in the Complaint: “Is impossible to believe in the Respondent ignorance about the Complainant's business since is using he's trademark to confuse users on the booking services”.
Later in the Complaint, the Complainant noted: “There is another company behind the registration of the disputed Domain Name, Vacation Tours Inc.” The Complainant produced a copy of a web page from the website operated by that company, and the telephone numbers appearing on that website were the same as those which appeared on a letter which Vacation Store had sent to the Complainant in September 2005. The Panel therefore concludes that the Complainant must have known that Vacation Tours Inc. was part of Vacation Store, and that Vacation Store was ultimately the party behind the registration of the Domain Name. Documents produced by the Respondent show clearly that a business relationship between the Complainant and Vacation Store had existed going back to at least 2004. (Indeed, a letter on the Complainant's letterhead which the Respondent produced, dated July 12, 2004, referred to meetings held in Miami between a representative of the Complainant and Ms. Mendes of Vacation Store.) Notwithstanding this business background between the Complainant and Vacation Store, the Complainant gave the impression in the Complaint that the Respondent and Vacation Tours Inc were strangers to the Complainant. No hint of the business background which had existed between the Complainant and Vacation Store was disclosed in the Complaint.
Secondly, the Complainant relied strongly in its Complaint on the Respondent's unauthorised use of the Complainant's mark on the Respondent's website, including the reproduction of the sun device. The Complaint did not suggest how the Respondent might have obtained access to the Complainant's mark. It was not until the Response was filed that it appeared that the Complainant may have authorized the Respondent and other travel agents to use the Complainant's logos and marks on their websites, and for that purpose to copy those logos and marks directly from the Complainant's website at “www.bahiaprincipeusa.com”. One would have expected that claims to that effect would have been met with a vigorous denial from the Complainant if they were false. But although the Complainant promptly sent an (unsolicited) submission to the Center on June 16, 2009, that submission did not contain any denial of the allegation in the Response that the Complainant had allowed the Respondent and/or Vacation Store to use the Complainant's mark and the other copyright materials owned by the Complainant. Rather, the position taken in the Complainant's June 16, 2009 submission was to acknowledge that there had been a business relationship between the parties of the general kind alleged by the Respondent, but to assert that that arrangement was cancelled in 2006 because of alleged fraud on the part of Vacation Store, and has not since been renewed. Specifically, the June 16, 2009 submission claimed that after the 2006 litigation was commenced, the Complainant “broke any relation with the Respondent, [which] means that it has no rights to use my client's trademark, logo or even the name to get benefits with them.” That statement appears to acknowledge that before the claimed “breaking of the relations”, the Respondent did enjoy such rights.
Thirdly, the Complainant, in response to a question from the Panel as to when the Complainant had first become aware of the registration of the Domain Name, answered: “…more specifically Levantur was warned of the captioned registration on 17th March 2009. An email was sent by a sales manager who works for Bahia Principe in Paraguay”.
In the Panel's view, that response was simply not plausible. The evidence shows that, from at least as early as April 2005, the Complainant was planning the opening of “Bahia Principe Jamaica” hotel in the summer of 2006. At least two-thirds of the hotels operated by the Complainant have names which commence with the expression “Gran Bahia Principe”, and the Panel does not find it credible that the Complainant did not, at a fairly early stage, turn its mind to the possibility that the hotel might be named “Gran Bahia Principe Jamaica”. Indeed, the archived pages from the Respondent's website show that the Complainant had settled on the name “Gran Bahia Principe Jamaica” at some time before the winter of 2006. The establishment of a new resort hotel is no doubt a major undertaking, and the marketing of such a venture must have been given a great deal of attention. In that context the Internet (and in particular the existence or otherwise of any Gran Bahia Principe Jamaica domain name) would have been of particular interest to the Complainant. Considered from that perspective, the claim that the Complainant did not find out about the June 2005 registration of the Domain Name until March of 2009 is just not credible.
Having regard to the foregoing, the Panel prefers the evidence which was (eventually) put forward by the Respondent, to the effect that for some time in late 2005 or early 2006 there existed an agreement or understanding between the Complainant and Vacation Store under which the latter company would promote the Complainant's properties, including by the use of the Respondent's website. That agreement or understanding was sufficient to confer on the Respondent a right or legitimate interest in respect of the Domain Name.
As in the Lonely Planet Publications case, the critical question is whether that license or consent to use the Domain Name was lawfully revoked at some time before the Complainant commenced this proceeding.
The Panel specifically asked the Complainant about the nature of any business relationship it had had with the Respondent, and when any such relationship may have been terminated. In response, the Complainant referred to two December 2005 contracts relating to the provision of accommodation services at two of the Complainant's hotels, and to the separate agreement relating to the arranging of air charter services between Miami and the Complainant's Caribbean resorts. The contracts for accommodation services were said to have been for one year terms, which were not renewed. The contract for the provision of air charter services was said to have been cancelled by the Complainant's legal representatives by letter dated April 27, 2006.
Cancellation of the air charter services agreement would not necessarily have effected a cancellation of the Respondent's ongoing right to use the Domain Name, and the information provided by the Complainant relating to accommodation service contracts was clearly incomplete – for example, the July 2004 contract relating to the Complainant's Punta Cana hotel, which the Respondent produced, was not mentioned by the Complainant. Nor did the Complainant deny the Respondent's claim that it was specifically allowed to access one of the Complainant's websites and download the Complainant's mark (and other signs) for use on Vacation Store's websites. There is nothing before the Panel to show that that arrangement has ever been terminated.
An additional matter which causes the Panel to doubt that the Respondent's right to use the Domain Name has been terminated, is the Complainant's failure to include the Domain Name in the administrative proceeding which the Complainant issued against the Respondent in 2008. The Complainant's explanation is that it did not know of the registration of the Domain Name until March 2009, but the Panel has found that that explanation lacks credibility. The omission of the Domain Name from the claims in the 2008 proceeding might conceivably have been the result of oversight (for example, no-one within the Complainant organization paying much attention to the Respondent's website and what was actually on it). Such a lack of attention might also perhaps explain the puzzling fact that links to websites of the Complainant's competitors appear to have been allowed to remain on the Respondent's website until at least January 2007. But the omission to deal with the Domain Name in 2008, when the Complainant was clearly focused on the issue of confusingly similar domain names, is at very least another factor which calls into question the Complainant's assertion that any relevant rights the Respondent may have had in the Domain Name had by then been terminated.
In the end, the Panel has come to the view that the evidence, looked at overall, does not clearly establish that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has advanced a plausible case that it acquired a right or legitimate interest at some time soon after it registered the Domain Name, and the available evidence is not sufficiently clear for the Panel to safely conclude that the particular agreement or understanding which gave rise to that right or legitimate interest has been validly terminated. Proof that contracts for specific accommodation services were only in place for limited periods, and that the air charter contract was cancelled, does not prove that an entitlement to use the Domain Name in the context of a broader agreement or understanding that the Respondent would use the Domain Name and the Respondent's website to promote the Complainant's hotels (for the mutual benefit of the parties) has been validly revoked. Even if the Complainant intended in 2006 that the Respondent should no longer have any right to use the Domain Name (or the Complainant's mark or other copyright materials), its apparent inaction may still give rise to difficult issues of waiver or acquiescence. Such issues are best left to a court to address. They are well beyond the scope of a summary administrative proceeding under the Policy, which is intended to apply only to clear cases of cybersquatting or other abusive domain name registration.
Accordingly, the Panel finds that, on the record in the present proceedings, the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complaint must therefore be denied.
Having regard to the Panel's findings in section 6C of this decision, there is no need for the Panel to make any findings on this part of the Complaint.
Although the Complaint has failed, this is not a case where it would be appropriate for the Panel to declare that the Complainant has brought the proceeding in bad faith. Although the Panel has some concern that the Complainant did not put all its cards on the table as soon as it should have, that criticism can equally be directed at the Respondent. And on the merits, the Complainant has succeeded in proving that the Domain Name is confusingly similar to the Complainant's mark, and that the Domain Name was likely registered in bad faith. The Complaint has failed only because the Complainant has failed to adequately address the Respondent's claims that, post-registration of the Domain Name, the Complainant knew what the Respondent was doing with the Domain Name and agreed to it (or at least acquiesced in it). The Complainant may have an answer to those claims, but if so the answer was not given in this proceeding.
A complainant's motive for bringing a complaint under the Policy is irrelevant if the complaint succeeds – either the complainant can establish the three elements it is required to prove under Paragraph 4(a) of the Policy or it cannot. If it can, a panel does not need to be concerned with the question of why the claim was brought. The Complaint in this case has failed, but a court might yet decide that the Complainant is entitled to an order for the transfer of the Domain Name. It is just that in a summary administrative proceeding such as this the merits have not been sufficiently clear for the Panel to make that determination.
For all the foregoing reasons, the Complaint is denied.
Warwick Smith
Sole Panelist
Dated: July 10, 2009