The Complainants are The Coryn Group II, LLC and AMResorts, L.P., United States of America (“United States”), represented by Norvell IP LLC, United States.
The Respondent is Jose Diaz, Mexico.
The disputed domain names <amresortsclubvacations.com>, <amrewardsmx.com>, <recompensasamresorts.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2019. On October 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2019, 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. On October 31, 2019, the Center sent a communication to the Complainants requesting for clarification regarding mutual jurisdiction. On November 1, 2019, the Complainants provided the Center with such confirmation.
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 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2019.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on December 6, 2019. 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 are part of the Apple Leisure Group (“ALG”), a United States corporation doing business worldwide in the travel and accommodation sector.
The Coryn Group II, LLC is the intellectual property owner for the group and owns a wide range of trademarks in mutiple jurisdictions used in connection with travel related servies. AM Resorts, L.P. provides brand management and marketing services under the AMRESORTS mark for hotels and resorts in a number of countries.
The Complainants are the owner and beneficiaries, between many others, of the following registrations:
|
Mark |
Jurisdiction |
Registration Date |
Brief Goods/Services |
|
AMRESORTS |
United States |
October 21, 2003 |
Class 35: Hotel management services for others. |
|
AM RESORTS |
Mexico |
March 31, 2003 |
Class 35: Hotel administration services for third parties. |
|
AMREWARDS |
United States |
July 7, 2015 |
Class 35: Arranging and conducting incentive reward programs to promote the sale of hotel services by travel agents. |
|
AMREWARDS |
Canada |
November 14, 2016 |
Arranging and conducting incentive reward programs to promote the sale of hotel services by travel agents. |
The disputed domain names <amresortsclubvacations.com>, <recompensasamresorts.com> and <amrewardsmx.com> were registered on May 31, March 21 and March 21, 2019, respectively.
The disputed domain names resolve to parking pages displaying per-per-click (“PPC”) competitive links to the Complainants.
The disputed domain names <amresortsclubvacations.com> and <recompensasamresorts.com> fully incorporate the Complainant’s AMRESORTS Mark. The addition of a dictionary term does not avoid a finding of confunsigly similarity.
Likewise, the disputed domain name <amrewardsmx.com> fully incorporates, the Complainants’ AMREWARDS Marks. Again, with the addition of a commonly-used abbreviation for a geographic location, a finding of confusing similarity is to be met.
With regard to the second element, the Complainants argues on the following grounds: First, the Respondent is not affiliated with or connected to the Complainants in any way. Nor have the Complainants licensed or otherwise endorsed, sponsored, or authorized the Respondent to use any of the Complainants’ AMRESORTS or AMREWARDS marks or, to register the disputed domain names. Second, there is no evidence that the Respondent has been commonly known by the disputed domain names or that it has any rights that might predate the Complainants’ trademarks. Third, the Respondent is using the Complainants’ AMRESORTS and AMREWARDS marks in connection with a fraudulent scam and by creating the false impression that the Respondent is associated with the Complainants and/or has been authorized somehow. Four, there is no evidence that the Respondent has or is making any legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain.
Finally, and with respect to the third element, the Complainants alleges that the Respondent registered and is using the disputed domain names in bad faith: The Respondent had constructive notice and actual knowledge of the Complainants’ rights in the AMRESORTS and AMREWARDS marks prior to registering the disputed domain names; The Respondent registered and uses the disputed domain names for commercial gain by intentionally creating a likelihood of confusion with the Complainants’ marks, and there is no conceivable legitimate use by the Respondent; The Respondent is using the disputed domain names in connection with a fraudulent scam whereby Respondent claims to be employed or authorized by the Complainants; and the Respondent’s continued ownership of the disputed domain names represents an abusive threat hanging over the Complainants.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate.
The Complainants, as parts of the Apple Leisure Group, have provided evidence of their trademarks registration upon the AMRESORTS and AMREWARDS trademarks. Further the Complainants have provided evidence of their use in business.
The Complainants’ marks are fully reproduced and recognizable in the disputed domain names. The addition of the terms such as “club”, “vacation” “recompensas” or the geographical abbreviation “mx” does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
Accordingly, the first requirement is met under paragraph 4(a)(i) of the Policy.
To the Panel satisfaction the Complainants have provided with consistent grounds and evidence that the Respondent lacks rights or legitimate interests in the disputed domain names.
It is apparent that the Respondent has no authorization or license to use the Complainants’ trademarks. There is no evidence that Respondent has been commonly known by the disputed domain names. The PPC links to which the disputed domain names redirect display competing sites to the Complainants and therefore are not to be considered legitimate purpose or noncommercial.
Further, the Panel also notes that both the reproduction of the Complainants’ trademarks within the disputed domain names and the absence of a disclaimer or legal notice in the corresponding websites to which the disputed domain names redirect suggest impersonation. This attempt of impersonation is even more blatant with regard to the disputed domain name <recompensasamresorts.com> as the evidence provided show. The Panel refers to the WIPO Overview 3.0, section 2.5, which states that “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner”. Not to mention when a scam may arise.
Being that as it is, it is now incumbent upon the Respondent to come forward with “evidence refuting the Complainants’ assertions and establishing the Respondent’s rights to or interests in the disputed domain name.” See HPR Commodities, LLC v. Rob Halper, WIPO Case No. D2007-0153. However, the Respondent has decided to keep silent and therefore no rebuttal has come to the Complainants’ file. Accordingly, while the Respondent has failed to respond the complaint, the prima facie case has not been rebutted.
In any event, the Panel has examined the records and finds that nothing therein would match with any of the “safe harbors” of paragraph 4(c) of the Policy.
Under these circumstances the Complainants have therefore demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain names to the satisfaction of the Policy.
For the purposes of the Policy, a complainant must establish that the disputed domain names were registered and used in bad faith by the respondent.
The Panel is of the opinion that the Respondent knew or should have known about the Complainants and the Apple Leisure Group activities when registering the disputed domain names. The later use of the disputed domain names support such a finding. Moreover, the addition of terms such as “club”, “vacation” “recompensas” or “mx” draws a connection with the services offered by the Complainants and associated with their trademarks. In the Panel’s view such a practice strengthens the inference of the Respondent’s knowledge of the AMRESORTS and AMREWARDS trademarks. Accordingly, the Panel concludes that the Respondent was familiar with the AMRESORTS and AMREWARDS trademark at the moment of the registration of the disputed domain names.
With regard the use of the disputed domain names the Panel notes paragraph 4(b)(iv) of the Policy: “(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
In the Panel’s view the disputed domains names compositions effectively impersonate or falsely suggest sponsorship or endorsement by the Complainants with the intent to lure Internet users into the Respondent’s PPC websites. The click-through-fees purportedly received by the Respondent is to be deemed an use in bad faith for the purposes of the UDRP. Under these circumstances the Panel looks at Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753, where the learned Panel stated: “By creating a PPC parking website that featured PPC links to the Complainants’ competitors, the Respondent similarly used the domain name in bad faith. The purpose of this PPC parking website clearly was to attract Internet users to the site, for profit, based on their confusing the Respondent’s domain name and/or website with the Complainants and/or their website”.
Futhermore, the Complainants have submitted evidence that the Respondent is using the disputed domain name <recompensasamresort.com> which the email at “[…]@recompensasamresorts.com” in a fraudulent scam whereby the Respondent impersonates the Complainants. The Panel notes the silent position of the Respondent and the clear intent of such communications to cheat consumers somehow by acting as the Complainants’ comercial representantive but in fact for its own comercial gain. This is a clear cut case of bad faith use.
Upon the above mentioned, the Complainants have established the third element of the Policy.
For 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 <amresortsclubvacations.com>, <amrewardsmx.com>, <recompensasamresorts.com> be transferred to the Complainants.
Manuel Moreno-Torres
Sole Panelist
Date: December 17, 2019