The Complainant is BD Real Hoteles, SA de C.V. of Cancun, Mexico, represented by Traverse Legal, PLC, United States of America.
The Respondent is Media Insights aka Media Insight of Florida, United States of America represented by Gaebe, Mullen, Antonelli, Esco & Dimatteo, United States of America.
The disputed domain names <cariberealcancun.com>, <costarealcabo.com>, <grancaribecancun.com>, <grancariberealresorts.com>, <granportoreal-hotel.com>, <granportorealresorts.com>, <granportorealresortspa.com>, <portorealplayadelcarmen.com>, <realplayacarmen.com>, <realplayadelcarmenresort.com>, <royalcancun.com>, <royalcancunhotel.com>, <royalcancunresort.com>, <royalcancunresorts.com>, <royalcaribereal.com>, <royalplayacar.com>, <royalplayadelcarmen.com>, <royalplayadelcarmenresort.com>, <royalportoreal-hotel.com>, <royalrealcancun.com>, <theroyalcancunhotel.com>, <theroyalcancunresort.com> and <theroyalplayadelcarmenresort.com> are all registered with Melbourne IT Ltd.
The disputed domain name <realhotelandresorts.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2009. On July 16, 2009, the Center transmitted by email to Melbourne IT Ltd and Network Solutions, LLC a request for registrar verification in connection with the disputed domain names. On July 16, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name <realhotelandresorts.com> and providing the contact details.
On July 22 and July 24, 2009, Melbourne IT Ltd transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on July 27, 2009. 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” 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 July 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2009. On August 17, 2009, the Respondent sought an extension to file a Response. The Center having considered the Respondent's request extended the period of time for filing the Response to August 24, 2009 pursuant to Rules paragraph 5(d). The Response was filed with the Center on August 24, 2009.
The Center appointed James A. Barker as the sole panelist in this matter on September 1, 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.
The disputed domain names are all registered in the name of “Media Insights”, with the exception of <grancaribecancun.com> and <realhotelandresorts.com> which are registered in the name of “Media Insight”. Since the address and contact details for those latter two domain names are identical to the other disputed domain names, the Panel has treated the difference in the registrant name as insignificant. The Respondent identifies itself as “Media Insights aka Media Insight”, which indicates that the registrant for each of the disputed domain names is the same entity.
The Complainant operates a chain of hotels, since 2001 under the brand “Real Resorts”.
The Complaint was filed following the institution of legal proceedings by the Complainant on January 13, 2008 in the United States, under the Anticybersquatting Consumer Protection Act. The filing of the Complaint was done in accordance with a court order, that the matter be referred to arbitration under the Policy despite the pendency of that action.
The disputed domain names were first registered on the following dates respectively (as indicated by the ‘creation date' confirmed by the registrars):
<cariberealcancun.com>, March 24, 2004;
<costarealcabo.com>, March 24, 2004;
<grancaribecancun.com>, November 7, 2001;
<grancariberealresorts.com>, September 13, 2007;
<granportoreal-hotel.com>, October 5, 2006;
<granportorealresorts.com>, June 12, 2007;
<granportorealresortspa.com>, May 25, 2007;
<portorealplayadelcarmen.com>, June 5, 2007;
<realhotelandresorts.com>, June 13, 2006;
<realplayacarmen.com>, March 24, 2004;
<realplayadelcarmenresort.com>, January 2, 2007;
<royalcancun.com>, July 18, 2006;
<royalcancunhotel.com>, November 10, 2006;
<royalcancunresort.com>, November 10, 2006;
<royalcancunresorts.com>, May 29, 2008;
<royalcaribereal.com>, January 24, 2006;
<royalplayacar.com>, March 13, 2009;
<royalplayadelcarmen.com>, November 27, 2006;
<royalplayadelcarmenresort.com>, January 2, 2007;
<royalportoreal-hotel.com>, October 5, 2006;
<royalrealcancun.com>, May 29, 2008;
<theroyalcancunhotel.com>, September 13, 2007;
<theroyalcancunresort.com>, November 30, 2006;
<theroyalplayadelcarmenresort.com>, February 13, 2007.
With one exception (referred to further below), the disputed domain names were registered after the registration of the marks in which the Complainant has established rights for the purpose of these proceedings.
As evidenced in the case file, as at July 30, 2009, the disputed domain names variously reverted to websites relating to the booking of accommodation in the Complainant's resorts.
The following is summarized from the Complaint.
The Complainant refers to both itself and its “sister company”, BD Promotora Turistica, S.A. de C.V, as “Real Resorts”. It says that Real Resorts owns and operates resorts in Cancun and Playa del Carmen, Mexico. Those resorts include the Gran Porto Real, the Gran Caribe Real, the Royal Playa del Carmen, the Real Playa del Carmen, and The Royal Cancun, among others. The Complainant provides various evidence of the marketing relating to its resorts.
Real Resorts operates a website at “www.realresorts.com.mx” which it uses in connection with its business. That domain name was registered in April 2001 in the name of the Complainant, and the related website began functioning in January 2002. The Complainant is currently the registrant of around 120 domain names incorporating its hotels, brands and marks.
The Complainant claims that the Respondent is a serial cybersquatter that has been a prior unsuccessful Respondent in eight proceedings under the Policy, which variously involved the Respondent's registration of marks relating to resorts and hotels. The Respondent is an agent of a tour marketing company and competes directly with the business of the Complainant. The Respondent uses several of the disputed domain names in connection with websites that unlawfully incorporate the Complainant's marks, and which offer competing services. Actual confusion has resulted from the Respondent's registration of the disputed domain names – the Complainant has received inquiries from consumers who have been to the Respondent's websites believing that they were websites operated by the Complainant.
The Complainant says that the Respondent has used the disputed domain names in four different ways. The Respondent has used the domain names in connection with websites that imitate the Complainant's websites. The Respondent has used some of the domain names to offer competing services under the company name “TravelQuotes”. The Respondent has used others to offer its own travel agency services. The Respondent has also used some of the domain names in connection with websites which suggest an affiliation with the Complainant.
The Complainant states, by affidavit of its President dated July 10, 2009, that it is the sister company of BD Promotora Turistica, S.A. de C.V, which has granted the Complainant an exclusive license to use, without limitation, all of its trademarks and service marks, trade names, and other source identifiers. That license extends to the following marks, variously registered in Mexico with the Instituto Mexicana de la Propiedad Industrial (IMPI) or on the principal register of the United States Patent and Trademark Office (USPTO), with the date of filing indicated (where evidence was provided of registration):
- CARIBE REAL (IMPI 526362), June 5, 1996;
- PLAYA REAL (IMPI 526381), June 5, 1996;
- PORTO REAL (IMPI 525981), June 10, 1996;
- RESORT & SPA GRAN CARIBE REAL (IMPI 296266), May 27, 1997;
- REAL CLUB and design (IMPI 885647), March 30, 2005;
- ROYAL CARIBE REAL (IMPI 901649), August 18, 2005;
- THE ROYAL PLAYA (IMPI 992373), May 18, 2006;
- SPA REAL and design (IMPI 955990), July 6, 2006;
- ROYAL ON LINE (IMPI 1093510);
- REAL PLAYA DEL CARMEN and design (IMPI 1095514);
- THE ROYAL (USPTO 3420664), August 7, 2006;
- THE ROYAL CANCUN (USPTO 3552142), August 7, 2006.
BD Promotora Turistica, S.A. de C.V has also filed, on August 7, 2006, a pending application for a mark with the USPTO for THE ROYAL PLAYA DEL CARMEN (USPTO 78946209). The Complainant's affidavits state that BD Promotora Turistica, S.A. de C.V has granted it an exclusive license in relation to that pending mark also.
The affidavit further states that the Complainant's rights are inclusive of rights to hotels that have been operated in the past, are currently operating, or which may operate in the future, including without limitation Gran Porto Real, Gran Caribe Real, The Royal Playa del Carmen, Real Playa Del Carmen, The Royal Cancun, Gran Bahia Real, Costa Real Cabo, Costa Real Ixtapa, and Gran Sole Real.
The Complainant provides a copy of an affidavit, also of July 10, 2009, containing much the same statements concerning its exclusive rights, filed by its “Group System Director.” Both affidavits were earlier made in relation to court proceedings taken by the Complainant against the Respondent (and related entities) in the United States District Court for the Southern District of Florida, Miami Division Case No. 08-20112-CV.
The Complainant provides (untranslated) evidence of trademark registrations for the marks listed above, each registered in the name of BD Promotora Turistica, S.A. de C.V, except with the following differences:
- REAL BAZAR, registered to “Tiffanys de Mexico, S.A de C.V.”, March 31, 1998,
- GRAN COSTA REAL and design, registered to BD Promotora Turistica, S.A. de C.V, November 25, 2004,
- BD BAHIA REAL, registered to the Complainant, November 29, 2004,
- REAL CLUB and design (IMPI 885647), registered to the Complainant, March 30, 2005
- ROYAL ON LINE (IMPI 1093510) for which no direct evidence of registration is provided,
- REAL PLAYA DEL CARMEN and design (IMPI 1095514) for which no direct evidence of registration is provided.
The Complainant relies on its license to the registered marks. It also claims that it has common law rights in its marks and trade names, based on continuous and extensive use. The Complainant claims that the disputed domain names are virtually identical or confusingly similar to its marks.
The Complainant states that the Respondent is not commonly known by the disputed domain names, and is not authorized by the Complainant to use its marks. The Complainant claims that the Respondent is using the disputed domain names to misleadingly divert Internet traffic, and that such a use cannot be legitimate for the purposes of the Policy.
The Complainant claims that the Respondent's use of the disputed domain names is done in bad faith, because the Respondent has used them to re-direct Internet users to a website that provides competing services with those of the Complainant, and which incorrectly suggests an association with the Complainant. The Respondent has acted in bad faith for the purpose of paragraph 4(b)(iv) of the Policy. The Complainant says that the Respondent knew or should have known of the Complainant's trademark rights when it decided to register and then use the disputed domain names.
The following is summarized from the Response.
The Respondent confirms that it is a “media division” of a wholesale tour operator “Vacation Store” which provides tour operations and travel packages for travel destinations outside of the United States. As a tour operator, the Respondent books rooms for various hotels. The Respondent states that Vacation Store, commencing around 2000 or shortly thereafter, began registering various domain names including the disputed domain names in this case. The Respondent was incorporated in 2004 as Media Insight, Inc.
The Respondent denies that its websites divert Internet users, but are rather websites that result in substantial bookings for the Complainant's business, and that the Complainant has been aware of those websites and economically benefits from them. The Respondent says that it has had contact with the Complainant since 2004 “wherein Respondent has been authorized to sell Complainant's hotel rooms. Respondent has also, pursuant to the contract, been authorized to use Complainant's marks and logos in its web pages.”
The Respondent denies that the Complainant has registered trademarks or pending applications for a registered mark. The marks that the Complainant claims that it owns are in fact owned by separate Mexican corporations and a United States corporation. The Complainant argues that it is the assignee of the marks in question, but provides no proof in support of this position other than affidavits. The Complainant has failed to provide the assignment, the date it was made, or produce affidavits from the owners of the marks.
In the pending court proceedings between the parties (United States District Court for the Southern District of Florida, Miami Division, Case No.08-20112-CV), the Respondent has filed a Motion for Summary Judgment. The motion is essentially based on the claim that the Complainant does not own the trademarks being sued upon, and therefore has no cause of action. That Motion is currently pending.
The Respondent claims that the issue of whether the Complainant has any rights to the marks is a decision beyond the province of the Panel. Since that issue is the subject of the Respondent's notice of motion before the Court, the Respondent claims that the Panel cannot and must not rule on the ownership of the mark.
The Respondent claims that it has rights or legitimate interests in relation to the disputed domain names. The Respondent says that the Complainant recognized the Respondent's use of its Internet pages through which bookings could be made for the Complainant's resorts. The Complainant provided various content for the Respondent's website pursuant to a contractual agreement. The Respondent refers to an affidavit filed by the Complainant's Group Corporate Director of Sales in connection with the pending court proceedings referred to above. That affidavit refers to contracts which the Complainant entered with the Respondent, for the Respondent to serve as the Complainant's agent in Miami between 2004 and 2007. Under that arrangement, the Respondent sold reservations on behalf of the Complainant.
The Respondent provides evidence of earlier court proceedings (unrelated to those mentioned above) in which the Respondent (through its related entity Vacation Store of Miami) alleged that the Complainant breached the contract between them. The Respondent's complaint in that case was filed on March 2, 2007. The nub of the Respondent's suit was that:
- As a tour operator, the Respondent books rooms for various hotels;
- The Respondent and Complainant entered into contracts related to the booking of rooms in six hotels: The Royal Cancun; Grand Caribe Real; Grand Costa Real; Grant Puerto Real; The Royal Porto Real; and The Real Playa Del Carmen;
- The Complainant provided the Respondent with content for the Respondent's website, relating to the Complainant's hotels, and the Respondent proceeded to take bookings for those hotels;
- The Complainant then refused to accept reservations made by the Respondent for its hotels, until the Respondent transferred various (unspecified) domain names to the Complainant;
- The Respondent sought on order that the Complainant, among other things, honor the bookings taken by the Respondent for the Complainant's hotels.
The result of those proceedings was a settlement agreement, under which it was agreed that the Respondent would remove “all Real Resort's marks” from its websites. In return, the Complainant would continue to accept bookings made by the Respondent for its hotels. The Respondent says that the Complainant failed to implement that agreement, despite the changes to its web pages having been made. The Respondent then filed a motion before the court for the enforcement of the settlement agreement, which is currently pending.
The Respondent makes a number of arguments as to why a finding should not be made against it under paragraph 4(a)(ii) of the Policy.
The Respondent, firstly, says that there was clearly an agreement between the parties for the Respondent to promote the Complainant's resorts. The Respondent claims that it registered the domain names legitimately in this connection.
Secondly, the Respondent says that it believes that the Complainant approved of the Respondent's use of the disputed domain names. “Pursuant to the contracts entered into between the parties, the use constitutes fair use.”
Thirdly, the Respondent argues that the terms “Real” and “Royal” are descriptive terms, which numerous hotels use and have registered in connection with their businesses. The Respondent claims that courts and panels have long held that there are no protectable interests in descriptive or geographic terms.
Fourthly, the Respondent argues that the Panel should not be involved in issues that are currently pending before the court. The Respondent argues that the issues involved in this case involve complex issues of fact which are better dealt with by the courts.
For somewhat similar reasons to those set out above, the Respondent denies that it registered and used the disputed domain names in bad faith.
In relation to previous decisions against it under the Policy, the Respondent claims that it acquiesced to or settled the claims against it in a number of those cases, to preserve the existing business relationships between it and the then complainants.
In relation to the Complainant's claims that the Respondent is improperly using domain names of other hotel chains, the Respondent claims to have contracts with those hotels under which it is authorized to use the domain names. The Respondent attaches affidavits to that effect, by its officers.
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark or marks in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
Each of these elements are addressed below, immediately following a consideration of procedural issues raised by the Respondent relating to the pending court proceedings between the parties.
Before addressing those separate grounds, the Panel notes that it does not agree with the Complainant's contention that the Respondent's registration of the disputed domain names “is a classic case of cybersquatting”. There is a broader dispute between the parties concerning, inter alia, the content of the Respondent's websites and claims of copyright and trademark infringement. Those broader claims are not the subject of this decision. This decision only concerns those parts of the Complainant's claims of cybersquatting that are relevant to its case under paragraph 4(a) of the Policy. The Respondent's activity also appears to have arisen out of a previous business relationship between the parties, about which the Complainant has been less than forthright. The nature of that relationship was disclosed in the Response. The Complaint makes no mention of it.
The Respondent claims that the Panel should not proceed to a decision in this case, essentially on the basis that the Complainant's claimed rights in its marks have been put in issue in those court proceedings. They have been put in issue because of the Respondent's Motion for Summary Judgment, which is pending. The Respondent also claims (under a heading dealing with its legitimate interests in the disputed domain names) that this case involves complex questions of fact, including about the ownership of the Complainant's claimed marks, which are better left to the court to determine.
The Panel does not consider that the Respondent's Motion for Summary Judgment, filed in the concurrent court proceedings, provides a sufficient reason for the Panel to suspend or terminate the proceedings in this case. The Panel's view is that the Policy generally obliges a Panel to make a decision on a complaint. Accordingly, paragraph 15(a) of the Rules contains the mandatory language that the Panel “shall decide the Complaint” in accordance with the Policy. The Rules contain some narrowly described exceptions to this instruction. There is provision for a proceeding to be terminated in circumstances where the parties reach a settlement before the Panel's decision (Rules, paragraph 17(a)) or where it becomes “unnecessary or impossible” to continue (Rules, paragraph 17(b)). Neither of those circumstances apply in this case.
Paragraph 18(a) of the Rules also provides that, in the event of any legal proceedings initiated prior to or during an administrative proceeding, the Panel has a discretion to suspend or terminate the proceeding, or to proceed to a decision. The Panel declines to exercise that discretion in the circumstances of this case and has proceeded to a decision. The Complaint was filed in compliance with a court order that there be a summary arbitration under the Policy (noted above, under ‘Factual Background'). There is no evidence before the Panel that the court has made any contrary order in response to the Respondent's Notice of Motion.
In relation to whether the complexity of the facts in this case are better resolved in court, the Panel declines to take that approach. In this Panel's experience, it is not uncommon for cases under the Policy to involve varying levels of factual complexity. The Panel does not consider that complexity (however defined) in itself compels a Panel not to proceed to a decision. Rather, a number of Panels have stated that a panel is not well-equipped, in a summary proceeding of this kind, to resolve complex factual disputes. (For a recent statement to this effect, see e.g. Levantur, S.A. v. Media Insight, WIPO Case No. D2009-0608. See also e.g. Clinomics Biosciences, Inc. v. Simplicity Software, Inc., WIPO Case No. D2001-0823; Jason Crouch and Virginia McNeill v. Clement Stein, WIPO Case No. D2005-1201.) That is, it is not the presence of complexity itself which necessarily makes a difference. It is whether the Panel considers that there is a sufficient dispute about complex facts, directly relating to issues of cybersquatting, which would be difficult for the Panel to resolve without further submissions, interrogation or inquiry. Such further inquiry is generally inconsistent with the purpose of the Policy, which is to provide an expeditious and summary proceeding to claims of cybersquatting. In this respect, this Panel agrees with the following statement of the panel in Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc., WIPO Case No. D2003-0185, which is apposite in this case:
“Just as cybersquatting can occur between strangers, so can it occur between business partners. Top Driver, Inc., supra; cf. The Thread.com, LLC v. Poploff, WIPO Case No. D2000-1470 (January 5, 2001). Similarly, just because the record is complex does not mean that the Panel should decline to review it. Rather, the Panel's obligation when faced with such disputed facts is to make the best findings it can, by a preponderance of the evidence, based on the record submitted. Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 (January 29, 2001); Electronic Commerce Media, Inc. v. Taos Mountain, NAF Claim No. FA95344 (October 11, 2000).”
In the circumstances of this case, the Panel considers that there is sufficient evidence for it to proceed to a decision about the merits of the Complainant's claim. Both parties have made voluminous submissions in connection with their case. While there are areas of ambiguity in those submissions, the case file does not contain gaps which are such that the Panel considers a decision in response to the Complainant's claim could not be made, without the type of further investigation and testing that is appropriately conducted in court proceedings.
Paragraph 4(a)(i) of the Policy has two limbs. One, is that the Complainant must establish that it “has rights” in a trademark or service mark. Despite some suggestions to the contrary in the Response, those rights need not be rights of ownership, or exclusive rights, or registered rights (see e.g. DigiPoll Ltd. v. Raj Kumar, WIPO Case No. D2004-0939.) The second is that the Complainant must establish that the disputed domain names are relevantly identical or confusingly similar to the mark in which it has rights. As noted in a previous case involving the Respondent, Levantur, S.A. v. Media Insight, WIPO Case No. D2009-0608 (referring to a previous majority panel decision in Ruggedcom Inc v. James Krachenfels, WIPO Case No. D2009-0130) UDRP panels have often accepted a fairly low threshold of proof for a complainant under paragraph 4(a)(i) of the Policy.
The Complainant's trademark rights
The least satisfactory aspect of the Complaint in this case is that it does not clearly demonstrate the rights that it claims. This is a case that involves various trade marks and various domain names, and various related entities. In relation to the majority of the trademarks in this case, the Complainant bases its rights on a claimed license from the registered owner of the marks. However, as the Respondent points out, the Complainant provides no direct evidence of that license. Rather, the Complainant provides two affidavits of its officers, filed in connection with the concurrent court proceeding and under penalty of perjury, which state that the Complainant has such rights. Those rights are vigorously contested by the Respondent, which also refers to prior court proceedings and contractual agreements between the parties.
All this adds up to a degree of confusion and ambiguity in the evidence. However, the Panel considers that the preponderance of all of the evidence tends to show the following.
Firstly, the evidence tends to suggest that the Complainant is a related entity of BD Promotora Turistica, S.A. de C.V, which is the owner of a number of trademarks relevant to this dispute, and that the Complainant does business under the name of “Real Resorts”. The Complaint provides no detail about the role otherwise played by BD Promotora Turistica, S.A. de C.V in the business of Real Resorts. Despite this, the Complainant provides two affidavits of its officers which state that the Complainant has been granted an exclusive license to those marks. Those affidavits were provided originally in the related court proceedings between the parties. Being given in that forum, under penalty of perjury, the Panel considers that some weight should be given to them.
In addition, the Complainant refers to both itself (BD Real Hoteles, SA de C.V.) and BD Promotora Turistica, S.A. de C.V, as “Real Resorts”. It provides evidence of its website at “www.realresorts.com.mx”. That website refers to various resorts apparently operated by the Complainant under the name of “Real Resorts”, and in respect of which the Complainant claims to have rights in a mark, including e.g. “The Royal in Cancun”, “The Royal in Playa del Carmen”, the “New Gran Caribe Real Cancun”, the “Gran Porto Real Playa del Carmen”.
The Respondent provides evidence of various correspondence, contracts, and an earlier court proceeding between it and “Real Resorts, Inc.” It is not clear, from either the Response or the Complaint, whether “Real Resorts, Inc.” is, in fact, a separate legal entity. The Complainant contains no reference to “Real Resorts, Inc.” as such. The Respondent refers to previous contracts, correspondence and legal proceedings between it and “the Complainant” in this case. However, none of that material names the Complainant (BD Real Hoteles, SA de C.V). Instead, the legal proceedings for injunctive relief previously taken by the Respondent, named “Real Resorts, Inc.” as the defendant. The Respondent provided evidence of correspondence to it (e.g. relating to the contracts between it and the Complainant) in 2006 under the letterhead of “Real Resorts”, with no indication that “Real Resorts” was itself a separate legal entity. The Respondent provided evidence of contracts between it and “Real Resorts”, which contain the signature of the officers who have provided the affidavits for the Complainant referred to above. Further, the address and email contact details for “Real Resorts” evidenced by the Respondent appear relevantly the same as the contact details for the Complainant (BD Real Hoteles, SA de C.V). That correspondence contains references to the Complainant's website at “www.realresorts.com.mx”, which is registered in the name of the Complainant (BD Real Hoteles, SA de C.V).
The significance of all this is that it appears to confirm, as the Complainant contends, that the Complainant is the entity behind the business named as “Real Resorts”. It indicates that the Respondent has previously accepted that the Complainant has rights in relation to various of the resorts which the Complainant says it operates. Further, and importantly, the Respondent's evidence of its 2008 Motion to Enforce Settlement Agreement (attached to the Response) refers in part to an agreement “to remove from its webpages any and all REAL RESORTS' trademarks” (emphasis added). That is, that Motion suggests that the Respondent then accepted (among other things) that the Complainant, doing business as Real Resorts, had rights in trademarks which related to the hotels the subject of the previous contracts between them.
The Respondent now contends, in its Response filed in this proceeding, and apparently contrary to its Motion to Enforce Settlement referred to above, that the Complainant has no such rights. Essentially, the Respondent now takes this position because the Complainant is not listed as the registrant of the relevant marks, and has not provided a copy of a license agreement from the registered owner (BD Promotora Turistica, S.A. de C.V). But that contention appears inconsistent with the basis on which the earlier agreements between the parties were made, at least in part.
The Complainant's failure to provide direct evidence of the license it claims to have and the nature of its relationship with BD Promotora Turistica, S.A. de C.V is a serious flaw. However, for all the reasons set out above, and subject to the qualifications and details below, the Panel has accepted that the evidence sufficiently suggests that the Complainant “has rights” in a number of marks that it uses in connection with its hotels and resorts, for the purpose of paragraph 4(a)(i) of the Policy. The issue then is: what are the particular marks in which the Complainant has demonstrated rights? The Complainant's claims in relation to various marks, and the Panel's findings in relation to them, are as follows:
REAL and ROYAL – The Complainant first suggests that it is the owner of “service mark and trademark rights in REAL, and its English equivalent ROYAL” dating back to 1996. The basis for this claim is not set out. The Complainant provides no direct evidence that it has registered rights for those terms standing alone in any particular jurisdiction, despite the appearance of the ® symbol alongside a stylized version of e.g. the term “Real” in marketing material attached to the Complaint. The marks REAL and ROYAL alone are not listed in the schedule of marks which the Complainant attaches to the Complaint. The evident generic nature of those terms would also require substantial evidence to show common law rights. The Panel does not consider there is sufficient evidence in this respect in the case file. In the absence of any substantive argument or evidence from the Complainant that it has relevant registered or common law rights, the Panel does not find that the Complainant has established that it has such rights.
CARIBE REAL, PLAYA REAL, PORTO REAL, RESORT & SPA GRAN CARIBE REAL, ROYAL CARIBE REAL, THE ROYAL PLAYA, SPA REAL, THE ROYAL, THE ROYAL CANCUN – The Complainant provides evidence that these 9 marks are registered to BD Promotora Turistica, S.A. de C.V. For the reasons set out above, relating to the relationship between the registrant and the Complainant (BD Real Hoteles, SA de C.V) and the Respondent's apparent acceptance of the Complainant having trademark rights in relation to its hotels, the Panel finds that the Complainant relevantly has rights in these marks.
ROYAL ON LINE, REAL PLAYA DEL CARMEN – The Complainant refers to these marks in its affidavits, as marks in which it has been assigned rights. However, unlike for the marks outlined immediately above, the Complainant provided no evidence of the registration of them. As such, the Panel finds that the Complainant has not established that it has rights relating to these marks.
REAL BAZAR. The relevance of this mark to this dispute is unclear. It is not explained in the Complaint. The Complaint attached evidence indicating it is registered to “Tiffanys de Mexico, S.A de C.V.”, on March 31, 1998. But the Complaint otherwise makes no mention of this mark, and does not explain its relationship (if any) with the registrant. That mark is not self-evidently relevant to any of the disputed domain names. The Panel has not considered it further.
GRAN COSTA REAL, BAHIA REAL – Evidence of the registration of these marks, registered in the name of the Complainant itself, was attached to the Complaint. Accordingly, the Panel finds that the Complainant has rights in these marks.
REAL CLUB – The affidavits of the Complainant's officers, as well as the Complainant's ‘Schedule of Trademarks' attached to the Complaint, incorrectly identify this mark as one licensed to the Complainant from its related company, BD Promotora Turistica, S.A. de C.V. However, the evidence of the registration of this mark, attached to the Complaint, makes it clear that the mark is registered to the Complainant itself. Accordingly, the Panel finds that the Complainant has rights in this mark.
ROYAL PLAYA DEL CARMEN – The Complainant provides evidence that it has a pending application for this mark with the USPTO. It is well-established however that mere trademark applications do not sufficiently constitute “rights” for the purpose of paragraph 4(a)(i) of the Policy. Accordingly, the Panel has not considered this claimed mark.
Common law marks – The Complaint contains an ambit claim to having common law marks in “the Real Resorts Marks, including the hotel names and its tradename”. As evidence, the Complainant points to various advertising material, both general and for a number of its resorts. For such an argument to be established, the Complainant would need to show that by virtue of extensive use of the names, a significant proportion of consumers of hotel services have come to associate the names exclusively with the services provided by the Complainant.(Hotels Unis de France v. Christopher Dent / Exclusivehotel.com, WIPO Case No. D2005-1194.) However, the largely descriptive nature of the Complainant's marks, the Respondent's evidence of third party use of somewhat similar marks in a similar field of business (referred to further below), and the registration of most of the marks in this dispute to a different legal entity, mitigates against a finding that the Complainant has acquired separate unregistered rights. Having regard to this, the Panel finds that the Complainant has not established any common law rights in the registered marks to which it refers.
In relation to its claim of having unregistered rights in the various names of its resorts, the Complainant does not clearly identify what all of those names are, and provide evidence corresponding to each. The Complainant refers to various resorts and advertising materials as evidence. However, that evidence is not self-evident about the name of each resort in which common law rights might be claimed. Most of the advertising provided as evidence in the Complaint refers to “Real Resorts” but otherwise contains various slogans and names. Ultimately, the burden is on the Complainant to properly identify the marks it claims, rather than the role of the Panel to guess them. For example, the Complainant provides a copy of an advertising brochure with a type of mark referring to “The Royal” and immediately beneath that badge “Cancun & Playa del Carmen”. What is the name of the resort in that case, if any? Is it, “The Royal”? Is it “The Royal Cancun” and “The Royal Playa del Carmen” separately? The Complainant doesn't say.
As to its trade name, “Real Resorts”, the Panel considers that the Complainant has provided sufficient evidence of using that mark in association with its business, to establish common law rights in that conjoined term. That term is used consistently and prominently in the Complainant's advertising materials. It is also a name by which the Complainant refers to itself and which the Respondent has previously accepted as being associated with the Complainant.
The Panel does not, however, accept the Complainant's contention that it has established common law rights in the words “Royal” and “Real” standing alone. Those are obviously highly generic terms, and the Complainant would need to provide very substantial evidence that those terms had acquired secondary meaning associated with the Complainant. The Complainant's evidence is not of this kind. The Respondent provides evidence of the substantial use of those terms by other third party hotels in Cancun, Mexico alone. It is also notable that much of the advertising provided as evidence by the Complainant features those terms in combination with others (e.g. in headings such as “The Real Relaxation”). While the Complainant may have attempted to give those terms particular emphasis in its advertising, the Panel does not consider that this is sufficient to demonstrate that those generic terms, taken separately, have a distinctive association with the Complainant in a trademark sense.
From the above, it will be seen that the Panel considers that the Complainant has sufficiently established that it has rights in the following twelve registered marks: CARIBE REAL, PLAYA REAL, PORTO REAL, RESORT & SPA GRAN CARIBE REAL, ROYAL CARIBE REAL, THE ROYAL PLAYA, SPA REAL, THE ROYAL, THE ROYAL CANCUN, GRAN COSTA REAL, BAHIA REAL, REAL CLUB. The Panel also considers that the Complainant has sufficiently demonstrated common law rights in its REAL RESORTS mark.
Identical or confusingly similar
As noted by the three member panel in e.g. Giga-Byte Technology Co. Ltd. v. Alan Coughlin, doing business as Gigabyte, WIPO Case No. D2005-1229, “The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors, such as the “Sleekcraft factors” – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,346 (9th Cir. 1979) – which usually are considered in trademark infringement or unfair competition cases.”
It is also well-established under the Policy that the gTLD extension is to be disregarded for the purpose of comparison. Disregarding those extensions in this case, the Panel does not consider, with one exception, that any of the disputed domain names are identical to the marks in which the Complainant claims rights.
The Complaint does not identify or set out argument about which of the marks it claims are identical or confusingly similar to which of the disputed domain names. Much of the Complainant's argument on this point is instead addressed to the content of the Respondent's websites to which the disputed domain names refer. However, the content of a website is generally irrelevant to the issue of confusing similarity. (See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.2.) Shorn of its arguments about the Respondent's websites, the Complaint relevantly contains nothing more than a bare statement that the disputed domain names “incorporate the distinctive Real Resorts marks”.
From the outset, the Panel notes that it believes that the trademarks SPA REAL, GRAN COSTA REAL, RESORT & SPA GRAN CARIBE REAL, BAHIA REAL, and REAL CLUB are not confusingly similar to any of the disputed domain names for the purpose of the Policy. As with the marks identified below, some of the disputed domain names contain some of the elements of those marks (e.g. “real”), in different combinations or together with other generic terms. However, the Complainant has not established rights in those descriptive elements standing alone, or in a different combination of the same words. Its registration of this group of marks, as with those below, relates to the entirety of the words which appear in its marks.
That leaves the issue of confusing similarity with the remainder of the trademarks in which the Panel has accepted, for the purpose of this proceeding, that the Complainant has demonstrated rights: CARIBE REAL, ROYAL CARIBE REAL, PLAYA REAL, PORTO REAL, THE ROYAL, THE ROYAL PLAYA, THE ROYAL CANCUN, REAL RESORTS (the Complainant's common law mark). The Panel considers that all of these marks are at the weaker end of the spectrum. This is because those marks appear to contain generic or geographic terms in Spanish or English that, by themselves or in other combinations, may have a multitude of other associations or particular geographic associations. Relevantly, the Respondent also provided evidence of various third party registrations, applications, or use of marks containing terms such as “Royal Hotel”, “Royal Park Hotel”, “Port Royal Resort”, “Playa Real”, and “Royal Resorts”. The Panel considers that there is an accordingly lower risk of confusion where there are differences between the disputed domain names and the Complainant's marks. The Panel has had regard to this in making its findings below.
In the absence of any relevant argument from the Complainant, for the purpose of determining confusing similarity the Panel considers that the comparison is between the following marks and the following disputed domain names (some being repeated more than once where there is arguably a comparison with more than one mark):
|
ROYAL CARIBE REAL |
<royalcaribereal.com> |
|
CARIBE REAL |
<cariberealcancun.com> |
|
PLAYA REAL |
<realplayacarmen.com> <realplayadelcarmenresort.com> |
|
PORTO REAL |
<portorealplayadelcarmen.com> <royalportoreal-hotel.com> <granportoreal-hotel.com> <granportorealresortspa.com> |
|
THE ROYAL PLAYA |
<royalplayacar.com> <royalplayadelcarmen.com> <royalplayadelcarmenresort.com> <theroyalplayadelcarmenresort.com> |
|
THE ROYAL, THE ROYAL CANCUN |
<royalcancun.com> <royalcancunhotel.com> <royalcancunresort.com> <royalcancunresorts.com> <royalrealcancun.com> <theroyalcancunhotel.com> <theroyalcancunresort.com> |
|
REAL RESORTS |
<granportorealresorts.com> <grancariberealresorts.com> <granportorealresortspa.com> |
The Panel does not consider that there is a sufficient argument that the remaining disputed domain names (<costarealcabo.com>, <grancaribecancun.com> and <realhotelandresort.com>) are confusingly similar to any of the marks in which the Complainant has established rights. At most, those domain names incorporate some generic or descriptive elements of the marks in which the Complainant has established rights (e.g. “cancun”, “real”, “gran”). The Complainant has not however demonstrated trademark rights in those elements alone, and in the different manner in which they are presented in these domain names. In the absence of any contrary argument from the Complainant, the differences appear to the Panel to sufficiently distinguish the marks.
The Panel finds that the Complainant's mark ROYAL CARIBE REAL is relevantly identical to the disputed domain name <royalcaribereal.com>.
In relation to the mark CARIBE REAL, the Panel finds that the disputed domain name <cariberealcancun.com> is confusingly similar. The entirety of the Complainant's mark is included in that domain name, with only the addition of the term “cancun”. The addition of that term would seem to potentially emphasize a connection with the Complainant's mark, given that the Complainant operate resorts in that geographic area.
For somewhat similar reasons, the Panel considers that the disputed domain names <granportorealresorts.com> and <grancariberealresorts.com> are confusingly similar to the Complainant's unregistered REAL RESORTS mark. However, having regard to the relative weakness of that mark, the Panel considers that there are sufficient differences to distinguish it from the <granportorealresortspa.com> domain name. This is because the added generic elements are larger than the mark and arguably the mark itself is not exactly incorporated (“real resort”, rather than “real resorts”).
In relation to the mark PLAYA REAL, the Panel does not consider that the disputed domain names <realplayacarmen.com> and <realplayadelcarmenresort.com> are confusingly similar. The words which comprise the Complainant's mark in this case appear in a different order in the disputed domain names, and with the addition of “carmen” and “carmenresort” respectively. That difference appears to be relatively significant to the Panel, since the order in which the words appear is, in itself, a feature of the Complainant's mark. The term “carmen” and “carmen resort” are self-evidently not a feature of the Complainant's mark and refer to a geographic area. The mark and the disputed domain names are not otherwise phonetically or visually similar, on an overall comparison.
In relation to the mark PORTO REAL, the Panel finds that it is confusingly similar with the domain names <portorealplayadelcarmen.com>, <royalportoreal-hotel.com>, <granportoreal-hotel.com>, and <granportorealresortspa.com>. Again, the whole of the Complainant's mark is incorporated in the disputed domain names, together with generic terms which are also associated with the Complainant. While each of those terms, taken alone, may have other associations, there may still be a risk that a portion of the public, familiar with the Complainant, would find these domain names confusingly similar to the Complainant's mark.
In relation to the mark THE ROYAL PLAYA, the Panel finds that it is not confusingly similar to the disputed domain names <royalplayacar.com>. This is a case where the Panel considers that the definite article “the” is significant. That article is a feature of the Complainant's mark. As such, the Complainant's mark is not entirely incorporated in this disputed domain name. The Panel considers that its absence, together with the term “car” (which could just as easily be taken as a reference to e.g. a vehicle, as it might to an abbreviation for the Caribbean) sufficiently distinguish the Complainant's mark.
The Panel does however find that the mark THE ROYAL PLAYA is confusingly similar to the disputed domain names <royalplayadelcarmen.com> and <royalplayadelcarmenresort.com>. While those domain names do not include the definite article “the”, the Complainant's mark is largely included as the first element of the domain names, together with an apparent geographic descriptor associated with one of the Complainant's resorts. For similar reasons, the Panel finds there is also confusing similarity with the disputed domain name <theroyalplayadelcarmenresort.com>.
Finally, for somewhat similar reasons to those set out above, the Panel finds that the disputed domain names <royalcancun.com>, <royalcancunhotel.com>, <royalcancunresort.com>, <royalcancunresorts.com>, <royalrealcancun.com>, <theroyalcancunhotel.com>, <theroyalcancunresort.com> are confusingly similar to THE ROYAL CANCUN mark. The Complainant's mark is largely incorporated in all of those domain names, together with generic or geographic terms associated with the Complainant's business. Having made that finding, it is not necessary for the Panel to make a separate finding in relation to THE ROYAL.
The Complainant has sufficiently made out a prima facie case against the Respondent, to the effect that the Respondent has no rights or legitimate interests in the disputed domain names. Having made out such a case, it is well-established that the Respondent then has the burden of demonstrating rights or legitimate interests in the domain names.
Essentially, the Respondent claims to have rights or legitimate interests in the disputed domain names because, on the basis of their previous business relationship, “the Complainant's actions constituted acquiescence in the Respondent's use of the domain names”. That Panel does not accept that contention. There is no evidence that the domain names were explicitly the subject of any agreement between the parties. There is no evidence that the Complainant acquiesced, explicitly or implicitly, in the Respondent's registration of the domain names. Rather, a previous ‘cease and desist letter' and legal action between the parties relating to (in part) domain names, strongly suggests otherwise.
The Respondent provides evidence (an affidavit of the President of its parent entity, Vacation Stores) to the effect that it has contracts with various other hotels which authorize it to use the hotels' names in domain names (not the subject of this dispute). This suggests that the Respondent was aware of the importance of obtaining rights to register the names of third party hotels in domain names. It is notable that the Respondent was not able to produce any similar evidence, direct or otherwise, of a contract which authorized it to use the marks of the Complainant.
The Respondent has been serially unsuccessful in claims against it under the Policy, in cases dating back as far as 2003 regarding the Respondent's registration of domain names incorporating the marks of accommodation providers. (For example, The Coryn Group, Inc. and AM Resorts, LLC v. Media Insight, FA 198959, ACCOR v. Media Insights, WIPO Case No. D2004-0043, among others.) From this, it would have been evident to the Respondent that its registration of domain names incorporating the marks of others put it at risk of action under the Policy. It is notable that the Respondent made similar claims, of having been authorized to register a complainant's mark in domain names, in the Coryn case, supra. In somewhat similar circumstances to this case, such an argument was rejected by the then panel.
Accordingly, the Complainant has established its case under this second ground, in relation to the disputed domain names which the Panel has found are identical or confusingly similar to the Complainant's marks.
The evidence in this case supports a finding that the Respondent was well-aware of the Complainant and registered the disputed domain names to profit from their association with the Complainant. From the previous cases under the Policy against it, it is also evident that the Respondent has a pattern of registering domain names which incorporate the trademarks of accommodation providers.
The Respondent argues against a finding against it on this ground because the Complainant “authorized the Respondent to operate the webpages” and “authorized the Respondent's use of the domain names”. As noted further above, the Respondent's operation of the webpages is not a matter to which the Policy is addressed. Even if, as it appears, the Complainant provided material to the Respondent for use on a webpage for the booking of the Complainant's accommodation, there is no evidence that that was an agreement for the Respondent to register the disputed domain names. The Respondent could have registered any number of domain names to advertise the Complainant's services which did not contain the Complainant's marks.
While the Panel has found that the Complainant has established bad faith (in relation to the disputed domain names which are identical or confusingly similar to the Complainant's established rights), there is one additional complication. While the disputed domain name <royalcancun.com> is confusingly similar to the Complainant's mark, THE ROYAL CANCUN, that domain name was registered on July 18, 2006, shortly before the registration of that mark on August 7, 2006. Ordinarily, if a domain name is registered before a complainant established trademark rights, bad faith cannot be found. However, as set out in paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, the consensus of WIPO Panels has been that “In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found.” The Panel considers that the Respondent no doubt had the Complainant in mind when it registered that domain name. It was so shortly before the registration of the Complainant's mark that, together with the other circumstances in this case, the Panel draws the inference that the registration of the domain name was done in anticipation of the Complainant's potential rights.
Accordingly, the Complainant has established its case under this third ground, in relation to the disputed domain names which the Panel has found are confusingly similar to the Complainant's marks.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the following domain names be transferred to the Complainant:
<royalcaribereal.com>
<cariberealcancun.com>
<portorealplayadelcarmen.com>
<royalportoreal-hotel.com>
<granportoreal-hotel.com>
<royalplayadelcarmen.com>
<royalplayadelcarmenresort.com>
<theroyalplayadelcarmenresort.com>
<royalcancun.com>
<royalcancunhotel.com>
<royalcancunresort.com>
<royalcancunresorts.com>
<royalrealcancun.com>
<theroyalcancunhotel.com>
<theroyalcancunresort.com>
<granportorealresorts.com>
<grancariberealresorts.com>
<granportorealresortspa.com>
For all the foregoing reasons, the Complaint is denied in relation to the following domain names:
<costarealcabo.com>
<grancaribecancun.com>
<realhotelandresorts.com>
<realplayacarmen.com>
<realplayadelcarmenresort.com>
<royalplayacar.com>.
James A. Barker
Sole Panelist
Dated: September 15, 2009