The Complainant is Grupo Hotelero Brisas, S.A. de C.V. of Mexico City, Mexico, represented by Aviles, Olivera & Asociados, Mexico.
The Respondent is Domain Admin, Ashantiplc Limited of Hong Kong, China, represented by John Berryhill, Ph.D., Esq., United States of America.
The disputed domain name <brisas.com> is registered with Fabulous.com Pty Ltd (the "Registrar").
The Complaint was filed in Spanish with the WIPO Arbitration and Mediation Center (the "Center") on July 25, 2016. The following day the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 2, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the Respondent and contact information as identified in the Complaint. On the same day the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint.
The Respondent sent an email communication on August 8, 2016 stating, inter alia, that it did not consent to conduct the proceeding in any language other than English, the language of the registration agreement. On August 9, 2016, the Center sent an email communication to the Parties in both Spanish and English regarding the language of the proceeding. On the same day, the Respondent reiterated its request that all communications be made in English and the Complainant expanded upon a request in its Complaint that the language of the proceeding be Spanish. On August 10, 2016, the Center sent an email communication to the Parties requesting that the Complainant file an English translation of the Complaint subject to any eventual determination by the Panel of the appropriate language of the proceeding. On August 17, 2016, the Complainant filed an English version of the Complaint with the name and contact information of the Respondent amended (the "amended Complaint").
The Center verified that 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 and 4, the Center formally notified the Respondent of the amended Complaint, and the proceedings commenced on August 19, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was originally September 8, 2016 but, upon request from the Respondent, the Center automatically granted an extension until September 12, 2016 and notified the Parties, in accordance the Rules, paragraph 5(b). The Response was transmitted to the Center on September 12, 2016.
The Center appointed Matthew Kennedy, Andrew D. S. Lothian and Martin Michaus-Romero as panelists in this matter on October 12, 2016. The Panel finds that it was properly constituted. Each member of 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 Complainant is a company founded in 1956 that owns and operates hotels in Mexico. The Complainant is the owner of various trademark registrations, including Mexican trademark registration no. 325882 for LAS BRISAS, with a claim of first use in 1956 and registered in 1987; Mexican trademark registration no. 682023 for LAS BRISAS ACAPULCO and device, registered in 2000; and Mexican trademark registration no. 749236 for BRISAS Y TU, registered in 2002. These trademark registrations all specify services including hotel services in class 43 and they remain in effect.
The Respondent is the current registrant of the disputed domain name. Although the amended Complaint, like the original Complaint, names a different party as the Respondent on its title page, the body of the amended Complaint identifies only Domain Administrator, Ashantiplc in the name and contact information of the Respondent. The disputed domain name was created on October 9, 1996. The Respondent acquired the disputed domain name on an undisclosed date that was evidently no earlier than February 2014 and no later than February 2015. The disputed domain name resolves to a webpage that indicates that the owner of the domain name is willing to entertain a sale or other proposals and that the minimum offer is USD10,000. The webpage is in English, apart from a user-verification plugin that adapts to different Internet users.
The Complainant has established itself as one of the most well-known hotels throughout Mexico and as a leading brand within a group of hotels that is developing internationally. The Complainant has obtained great presence and acceptance in Mexico and has an international reputation with respect to foreign tourists that arrive in Mexico from all over the world seeking hotel lodging.
The disputed domain name is identical or confusingly similar to the Complainant's trademarks LAS BRISAS, LAS BRISAS ACAPULCO and LAS BRISAS Y TU, among others. Visual and aural confusion is evident since the LAS BRISAS trademark is fully comprised in the disputed domain name and both are pronounced identically. The dominant element of the disputed domain name is the word "brisas" which is fully comprised in the trademark. Conceptual similarity is relevant due to the recognition of the Complainant's mark, which evokes in consumers the perception that the services offered at the disputed domain name are offered by the Complainant. The disputed domain name intermittently redirects to pages with services similar to those covered by the Complainant's LAS BRISAS mark. Confusion is aggravated by the use of <brisas.com> as a metatag and/or "brisas" as a keyword which causes search engines to display the Respondent's website in search results and divert consumers to that website for commercial gain at the expense of the Complainant.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no commercial relationship between the Complainant and the Respondent. The Respondent is engaged in an illegitimate and commercial use of the disputed domain name intentionally to divert consumers and take advantage of the reputation of the Complainant's LAS BRISAS trademarks for commercial gain. The Respondent does not own any relevant trademark registration. The Respondent undertakes activities within the same line of business as the Complainant because it redirects Internet users to the webpages of various hotels. The mere registration of the disputed domain name does not create rights that prevail over the Complainant's trademarks. The Respondent uses a domain name that fully comprises LAS BRISAS to provide temporary accommodation services without authorization from the trademark owner and without any clear notice that it is a different site, which misleads the public regarding association, origin or sponsorship by the Complainant.
The disputed domain name was registered and is being used in bad faith. The disputed domain name resolves to a webpage that offers the disputed domain name for sale and intermittently redirects to hotel websites, including some owned by the Complainant, without authorization. The Respondent uses the disputed domain name intentionally to attract Internet users to the disputed domain name for financial gain, creating confusion with the LAS BRISAS trademark and regarding the sponsorship, affiliation or endorsement of the disputed domain name. The existence and registration of the Complainant's trademarks prior to the date of creation of the disputed domain name leads to the conclusion that the decision to adopt the disputed domain name comprising LAS BRISAS was made in order to mislead the public for profit by creating the unfounded idea of some sponsorship, affiliation or endorsement by the Complainant. It is difficult to imagine that the Respondent registered a domain name that randomly included LAS BRISAS by mere coincidence, since it is an established international brand and has been granted according to national and international law. The prior gazettal of the Complainant's trademark registrations according to Article 127 of the Industrial Property Law of Mexico proves the bad faith of the Respondent. The Respondent engages in acts of unfair competition by attracting Internet users to its website and offering temporary accommodation through redirection to other Internet sites without any association or relationship with the Complainant, contrary to the provisions of paragraph 4(c)(iii) of the Policy. The Respondent knows of the existence of the Complainant's trademarks because some of the websites to which the disputed domain name intermittently redirects belong to the Complainant, which proves the Respondent's bad faith. Given the promotion of the Complainant's trademark for over forty years prior to the registration of the disputed domain name, it is undeniable that the Respondent became aware of the existence of the Complainant's marks and it is unreasonable to suppose that the Respondent registered the disputed domain name for purposes other than to take unfair advantage of the prestige and recognition of the Complainant's trademarks for its own benefit, as provided for in paragraph 4(b)(iv) of the Policy. Further, the disputed domain name is not being properly and legally used because the Respondent's website notes that it is for sale, which constitutes bad faith as provided for in paragraph 4(b)(iii) of the Policy.
The word "brisas" is a generic or dictionary word meaning "breezes" in Spanish. The Complainant does not present evidence of trademark rights in "brisas" per se because its rights are narrowly limited, even within the hospitality trade in Mexico. The Complainant presents no evidence that the Respondent has ever used the disputed domain name for purposes having anything to do with the Complainant. The Respondent has been offering the disputed domain name for sale since acquiring it. The Respondent does not own or operate the <lasbrisas.com> domain name.
As regards the first element, the Respondent provides information regarding the Complainant's Mexican trademark registrations. None of these trademark registrations are for the word "brisas" per se nor are they identical to the disputed domain name. While the feminine article "las" might be insignificant in other contexts, the commercial impression is significant in view of the many BRISAS marks in Mexico and throughout the Spanish-speaking world. Dozens of entities, including many in the same field as the Complainant, use combination marks which likewise incorporate the word "brisas". The word "brisas" is widely used by many parties and is not itself distinctive of the Complainant.
As regards the second element, the Complainant is required to show that the Respondent has no rights or legitimate interests in the disputed domain name. This criterion is not limited to trademark rights but includes equitable interests such as expectation and reliance interests in the continued operation of a non-exclusive domain name since registration for purposes having nothing to do with the Complainant. The Complainant concedes that, apart from its use in connection with hotel services, the term "brisas" is otherwise a dictionary word. Having registered what the Respondent knows to be a dictionary word, the Respondent has offered the domain name generally for sale as such at the web page to which it resolves. The fact that the Complainant is one of dozens of parties having some kind of right in the word "brisas" for a particular purpose is not relevant to whether the Respondent's registration and offer for sale of a dictionary word domain name somehow implicates or violates the Complainant's limited rights. The Respondent believes that a word such as "brisas" has commercial value precisely because it is a common dictionary word. It may be of interest to persons involved in weather, heating and air conditioning and numerous other purposes. Since having been obtained from Snapnames, the disputed domain name has consistently been offered for sale as a dictionary word. Contrary to the Complainant's assertion, the Respondent does not offer temporary accommodation to the consuming public, redirecting pages to various hotels.
As regards the third element, the Respondent maintains that the Complainant submits no evidence of bad faith registration and use but claims that the Respondent uses the disputed domain name for hotels. Although the Complainant argues that an online search for the term "las brisas" is quickly diverted to the disputed domain name which offers the false appearance of being sponsored and/or authorized by the Complainant, the Respondent submits that an online search for the terms "las brisas" yields disparate results unrelated to the Complainant merely within the first page. The Respondent's sale page, as is the case with most parking pages, does not rank highly in such results. Furthermore, the Respondent's page does not redirect to any hotels whatsoever but simply offers this dictionary word for sale. The Respondent believes that the Complainant is genuinely confused about what domain name is in dispute in this proceeding. The Respondent has nothing to do with the <lasbrisas.com> domain name. The Respondent is merely attempting to sell a dictionary word domain name and does not know why the Complainant claims that the disputed domain name directs visitors to hotels which compete with the Complainant. The Complainant appears to have confused the disputed domain name with another domain name entirely, although its request regarding the language of the proceeding did correctly describe the webpage to which the disputed domain name resolves. The Complainant's allegations are not supported by a single piece of evidence, while objective third-party evidence shows that the Respondent has not been using the disputed domain name to direct to competitive hotel services.
Paragraph 11(a) of the Rules provides that "unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding." The Registrar confirmed that the Registration Agreement for the disputed domain name is in English.
The Complainant requests that Spanish be the language of the proceeding. Its main arguments are that the Complainant is domiciled in Mexico; that the word "brisas" in the disputed domain name is a Spanish dictionary word meaning "breezes"; that "brisas" is not an English dictionary word; that the disputed domain name is not being used in any particular language as it resolves to a webpage that only offers the name for sale for USD10,000 which is a clear sign of bad faith; and that the Respondent is registered in Hong Kong, China, which is a Chinese-speaking territory.
The Respondent requests that English be the language of the proceeding. Its main arguments are that the registration agreement is in English and that the website to which the disputed domain name resolves is entirely in English except for a user-verification plugin.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding takes place with due expedition. The Panel observes that the amended Complaint and the Response were both filed in English, and that the webpage to which the disputed domain name resolves is in English.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Failure to prove any one of these elements will result in the Complaint being denied.
Based on the evidence submitted, the Panel finds that the Complainant has rights in the LAS BRISAS trademark.
The disputed domain name <brisas.com> incorporates part of the Complainant's LAS BRISAS trademark. The disputed domain name incorporates "brisas" and omits "las". The trademark is in Spanish and the word "brisas" is a feminine plural noun meaning "breezes", while the word "las" is the feminine plural definitive article meaning "the".
The Panel considers that the omission of the word "las", meaning "the", is a minor difference between the disputed domain name and the Complainant's trademark. The disputed domain name incorporates the dominant element of the trademark. Consequently, the Panel considers that the omission of "las" does not dispel confusing similarity with the Complainant's trademark.
The disputed domain name also includes the generic Top-Level Domain ("gTLD") suffix ".com". A gTLD suffix generally has no capacity to dispel confusing similarity with a trademark as it is typically disregarded under the first element test. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
Given the Panel's findings below on bad faith registration and use, it is not necessary to consider the element of rights or legitimate interests.
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive. The Complainant makes several arguments in support of its claim in relation to this element. Recalling that it is the Complainant that bears the burden of proof, the Panel will examine each of these arguments in turn.
The Complainant argues that it is difficult to imagine that the Respondent registered a domain name that randomly included the Complainant's LAS BRISAS trademark by mere coincidence. However, the Panel observes that the disputed domain name does not incorporate the trademark in its entirety. This does not necessarily demonstrate an awareness of that trademark when there exists an alternative possibility based on the dictionary meaning of that part of the trademark that was incorporated in the disputed domain name.
The Complainant argues that the prior gazettal of its trademark registrations in Mexico and the promotion of its trademark for over forty years prior to the registration of the disputed domain name show that the Respondent was aware of the existence of the Complainant's trademarks. However, in the circumstances the Panel does not accept that the Respondent would have had knowledge of the Complainant's trademark registration at the time of acquisition of the disputed domain name. Nor is there any evidence on the record of this proceeding of any promotion of the Complainant's trademarks. The Complaint asserts some reputation for its mark among foreign guests looking to stay at hotels in Mexico but there is no substantive evidence of the extent of that reputation.
The Complainant asserts that the disputed domain name resolves to a webpage that intermittently redirects to hotel websites, including the Complainant's own website. However, the Complainant has not provided evidence in support of this assertion. As provided by the Respondent all the screenshots of the webpage to which the disputed domain name resolves show a parking page without links. While there is evidence in the Response of a domain name <lasbrisas.com> resolving to a website displaying links to hotel websites, that concerns another domain name, <lasbrisas.com>, which is not at issue in this dispute nor, as far as the record shows, related to the Respondent.
The Complainant notes that the disputed domain name resolves to a webpage that offers the disputed domain name for sale for a minimum price of USD10,000 and argues that there is no other reason for such a sale other than to take advantage of the Complainant's marks. The Respondent replies that it is offering the disputed domain name for sale to third parties who lack any relationship to the Complainant or its services but for whom the disputed domain name has value due to its inherent Spanish dictionary meaning of "breezes", such as persons involved in weather, heating and air conditioning, among others. The Panel has doubts about the Respondent's explanation but does not consider that the relatively scant evidence on the record would justify a rejection of that explanation.
In view of the above, the Panel is unable to find that the Respondent was aware of the existence of the Complainant's trademarks at the time that it acquired the disputed domain name or that the Respondent attempted to take advantage of the Complainant's rights in those trademarks.
Therefore, the Panel finds that the Complainant has not proven that the disputed domain name was registered and is being used in bad faith. The Complainant has failed to satisfied the third element in paragraph 4(a) of the Policy.
For the foregoing reasons, the Complaint is denied.
Matthew Kennedy
Presiding Panelist
Andrew D. S. Lothian
Panelist
Martin Michaus-Romero
Panelist
Date: October 22, 2016