Desarrollo Marina Vallarta, S.A. de C.V. v. carolina valencia / emprendedor
Claim Number: FA2005001896231
Complainant is Desarrollo Marina Vallarta, S.A. de C.V. (“Complainant”), represented by Alvaro Marquez Soria, Mexico. Respondent is carolina valencia / emprendedor (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vidavidanta.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 13, 2020; the Forum received payment on May 13, 2020.
On May 14, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <vidavidanta.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@vidavidanta.com. Also on May 18, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 12, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Desarrolo Marina Vallarta, is the leading resort developer in Latin America and operates resorts, vacation destinations, luxury hotels, and entertainment experiences. Complainant has rights in the VIDANTA mark based upon its registration of the mark with the Mexican Institute of Industrial Property (“MIIP”) (e.g., Reg. No. 1082319, registered Jan. 7, 2009). See Amend. Compl. Ex. D. Respondent’s <vidavidanta.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s VIDANTA mark, adding only the generic term “vida” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <vidavidanta.com> domain name. Respondent is not licensed or authorized to use Complainant’s VIDANTA mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name and email to create the impression of authorization and administration by Complainant and to pass off as an employee of Complainant.
Respondent registered and uses the <vidavidanta.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site. Additionally, Respondent uses the domain name to impersonate Complainant in order to acquire personal, business, or financial information from consumers. Respondent registered the disputed domain name with actual and constructive knowledge of Complainant’s rights in the VIDANTA mark. Lastly, Respondent provided false and/or misleading WHOIS information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Mexican company that is the leading resort developer in Latin America and operates resorts, vacation destinations, luxury hotels, and entertainment experiences.
2. Complainant has rights in the VIDANTA mark based upon its registration of the mark with the Mexican Institute of Industrial Property (“MIIP”) (e.g., Reg. No. 1082319, registered Jan. 7, 2009).
3. Respondent registered the disputed domain name on Nov. 1, 2019.
4. Respondent uses the disputed domain name and email to create the impression of authorization and administration by Complainant and to pass itself off as an employee of Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the VIDANTA mark based upon its registration of the mark with the MIIP (e.g., Reg. No. 1082319, registered Jan. 7, 2009). See Amend. Compl. Ex. D. Registration of a mark with the MIIP is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Solar Turbines Incorporated v. Thomas Boys / zaza plc / nally micheal / zaza plc, FA 1769295 (Forum Mar. 5, 2018) (“Complainant provides evidence of its trademark registration for SOLAR TURBINES with MIIP and the Panel finds that it has trademark rights in that expression”). Complainant provides evidence of its registrations of the VIDANTA mark with the MIIP. Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s VIDANTA mark Complainant argues that Respondent’s <vidavidanta.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s VIDANTA mark, adding only the generic term “vida” and the “.com” gTLD. The addition of a generic term and a gTLD may not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Thus, the Panel finds that the disputed domain name is confusingly similar to the VIDANTA mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s VIDANTA trademark and to use it in its domain name, adding the generic word “vida” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on Nov. 1, 2019;
(c) Respondent uses the disputed domain name and corresponding email to create the impression of authorization and administration by Complainant and to pass itself off as an employee of Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <vidavidanta.com> domain name because Respondent is not licensed or authorized to use Complainant’s VIDANTA mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H - D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names”). Additionally, lack of authorization to use a mark can constitute a further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record notes “Carolina Valencia/emprendedor” as the registrant and no information in the record suggests that Complainant has authorized Respondent to use the VIDANTA mark in any way. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Respondent fails to use the <vidavidanta.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent uses the disputed domain name and email to create the impression of authorization and administration by Complainant and to pass off as an employee of Complainant. Use of a disputed domain name to pass off as a complainant via email may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use”). Complainant provides screenshots of emails purportedly sent by respondent using the disputed domain name impersonating employees of Complainant. See Amend. Compl. Ex. E. Therefore, the Panel finds Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has registered and uses the <vidavidanta.com> domain name in bad faith. Specifically, Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to indicate falsely an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Here, Complainant claims Respondent created a likelihood of confusion with Complainant and its trademarks by registering a domain that entirely incorporates Complainant’s VIDANTA mark, and giving the impression that interested individuals will receive information regarding Complainant, but the fact is individuals are sent to a webpage that has no affiliation with Complainant. The Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent has registered and uses the <vidavidanta.com> domain name in bad faith because Respondent attempts to disrupt Complainant’s business. Specifically, Complainant argues Respondent is attempting to impersonate Complainant as part of an email phishing scheme, presumably for commercial gain. Use of a domain name to impersonate a complainant in furtherance of a fraudulent scheme may constitute bad faith pursuant to Policy ¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). Here, Complainant claims Respondent used an email address associated with the disputed domain name to impersonate Complainant and send phishing emails to Complainant’s customers, presumably designed to solicit information under false pretenses. Complainant provides emails sent by Respondent regarding the fraudulent email scheme. See Amend. Compl. Ex. E. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Thirdly, Complainant argues that Respondent has actual and/or constructive knowledge of Complainant’s rights in the VIDANTA mark when registering the disputed domain name. Actual knowledge of a complainant’s rights in a mark at the time of registration of a domain name can be shown by use of a confusingly similar domain name in direct competition with a complainant. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that Respondent must have had actual knowledge of Complainant’s rights due to the notoriety of the VIDANTA mark, Respondent’s use of the mark in its entirety, and Respondent’s use of Complainant’s business information, such as the fraudulent emails. As the Panel agrees, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Fourthly, Complainant submits that Respondent provided false and/or misleading information WHOIS information. Use of false or misleading information WHOIS information may be evidence of bad faith registration per Policy ¶ 4(a)(iii). See Farouk Systems, Inc. v. Jack King / SLB, FA1505001618704 (Forum June 19, 2015) (finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent had provided false contact information when registering the disputed domain name). Here, Complainant has provided a copy of the Respondent’s WHOIS information, which Complainant claims is false and/or misleading. Thus, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the VIDANTA mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vidavidanta.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 14, 2020
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