The Complainants are Viceroy Hotels, L.L.C. of West Hollywood, California, United States of America (“United States”); and Viceroy Cayman Ltd of George Town, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Neal, Gerber & Eisenberg LLP, United States.
The Respondent is Alejandro Hernandez Velasquez of Cabos San Lucas, Baja Sur, Mexico.
The disputed domain names <viceroyconcierge.com>, <viceroyrentals.com> and <viceroyvillarentals.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2017. On November 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On November 15, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2017.
The Center appointed Nick J. Gardner as the sole panelist in this matter on December 20, 2017. 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 Complainants Viceroy Hotels L.L.C. and Viceroy Cayman Ltd. are affiliated companies that operate a number of hotels in various locations around the world which trade under the name VICEROY. There are VICEROY hotels located in Santa Monica (Los Angeles), Beverly Hills (Los Angeles), Snowmass (Colorado), Chicago, and New York in the United States, as well as in Abu Dhabi, Riviera Maya (Mexico), and Sugar Beach (Saint Lucia). It is not clear to the Panel exactly when this business commenced but it is clear that the Complainants have carried out this business for many years prior to the date the Disputed Domain Names were registered.
The Complainants own trademark registrations for the VICEROY Mark in various jurisdictions around the world, including the United States and Mexico (Viceroy Hotels L.L.C. owns the trademarks registered in the United States whilst Viceroy Cayman Ltd owns trademarks registered elsewhere). The Complainants own for example United States registration 77266810 registered on February 17, 2009 and Mexican registration 1015564 registered on November 30 2007.
The Complainants promote their business via a web site maintained at “www.viceroyhotelsandresorts.com”. In addition, the Complainants’ also have websites linked to a separate domain name for each VICEROY hotel that follows the format: <viceroy[place].com - for example, websites at “www.viceroybeverlyhills.com” and “www.viceroyabudhabi.com” for its Beverly Hills and Abu Dhabi hotels, respectively.
The Complainants offer concierge services at all their hotels and villa rental services at some of their hotels.
The Disputed Domain names were each registered on January 21, 2017. They are each linked to a “parking page” containing automatically generated click through links.
The Complainants sent cease and desist letters to the Respondent on March 17, 2017 letter, and April 20, 2017. No reply to either was received.
The Complainant says that each of the Disputed Domain Names is confusingly similar to its VICEROY trademark being a combination of that word with a descriptive term also relevant to the Complainants’ business.
The Complainants say that the Respondent has no rights or legitimate interests in the term “viceroy”. They say that the Respondent operates a website at “www.cabostays.com”, which lists services for booking vacation packages in Los Cabos, Baja Sur, Mexico. These vacation deals involve hotels, resorts, dining, and other activities similar to the services offered by the Complainants. The Complainants believe that Respondent would not have chosen the Disputed Domain Names unless he was seeking to intentionally trade on the VICEROY Mark. Furthermore, the Complainants have recently been actively pursuing an opportunity in Cabo San Lucas in Mexico and believe that the Respondent became aware of this fact, which him to register the Disputed Domain Names.
The Complainants say that the Respondent’s registration and use of the Disputed Domain Names is in bad faith. They say that the passive holding of the Disputed Domain Names and the linking of those domain names to pages with click through links is itself evidence of bad faith. They also say that in any event it is likely the Respondent intends to use them to attract business in competition with the Complainants.
No Response has been filed.
The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainants must satisfy the Panel in that:
(i) The Disputed Domain Names are identical with or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names;
(iii) The Disputed Domain Names have been registered and are being used in bad faith.
The Panel considers each of the Disputed Domain Names to be confusingly similar to the Complainants’ trademark VICEROY. It is established that the addition of a descriptive term (such as here “concierge”, “rentals”, and “villarentals”) to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that each of the Disputed Domain Names is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
The Panel finds “viceroy” as a single word is, on the evidence before the Panel, a word in relation to which the Complainants have developed a substantial reputation in relation to their well-known hotel business.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainants have not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the VICEROY trademark. The Complainants have prior rights in the VICEROY trademark which precede the Respondent’s registration of the Disputed Domain Names. The Complainants have therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Names. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.
In the present circumstances, the distinctive nature of the VICEROY trademark, and the evidence as to the extent of the reputation the Complainants enjoy in the VICEROY trademark, and the fact that the Disputed Domain Names combine the VICEROY trademark with descriptive words commonly used in the hotel and holiday business, the fact that the Respondent is also involved in the hotel and travel industry and the lack of any explanation from the Respondent as to why he registered the Disputed Domain Names lead the Panel to conclude the registration and use were in bad faith.
The websites currently linked to the Disputed Domain Names comprises a series of pay-per-click (“PPC”) links to other third-party websites. The Panel infers that some consumers, once at these websites will follow the provided links and “click through” to other sites which offer products some of which may compete with those of the Complainants. The Respondent presumably earns “click through” linking revenue as a result. The Panel infers the websites are automatically generated. This does not however matter. It is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the name’s association with the complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396.
In the light of this finding it is not necessary for the Panel to consider what further intentions the Respondent may have with regard to his use of the Disputed Domain Names.
Further the Panel notes that the Respondent has not filed a Response and hence has not availed himself of the opportunity to present any case of good faith that he might have. The Panel infers that none exists.
As a result the Panel finds that the Disputed Domain Names have each been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <viceroyconcierge.com>, <viceroyrentals.com> and <viceroyvillarentals.com> be transferred to the Complainant Viceroy Hotels LLC.
Nick J. Gardner
Sole Panelist
Date: January 4, 2018