Iberostar International A.G.
v. Leisure Travel Inc. c/o Kellie Davis
Claim Number: FA0707001045076
PARTIES
Complainant is Iberostar International A.G. (“Complainant”), represented by Thomas
P. Arden, of Holland & Knight LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goiberostar.com>,
registered with Register.com, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On August 7, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 27, 2007 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@goiberostar.com by e-mail.
On
A timely Response was received and determined to be complete on
Complainant filed a timely Additional Submission on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <goiberostar.com> domain name is confusingly similar to Complainant’s IBEROSTAR mark.
2. Respondent does not have any rights or legitimate interests in the <goiberostar.com> domain name.
3. Respondent registered and used the <goiberostar.com> domain name in bad faith.
B. Respondent makes the
following assertions:
1. Respondent admits that its <goiberostar.com> domain name is similar to and incorporates Complainant’s IBEROSTAR domain name.
2. Respondent has rights and legitimate interests in the <goiberostar.com> domain name arising out of a personal relationship with an officer of Complainant.
3. Respondent did not register or use the domain name in bad faith, as it thought Complainant was allowing Respondent to use the <goiberostar.com> domain name.
4. Respondent asserts the defenses of acquiescence and laches, in support of its claim to have legitimate interests in the <goiberostar.com> domain name, and to deny that Respondent acted in bad faith.
C. Complainant, in its
Additional Submission, argues the following:
1.
The
defenses of acquiescence and laches are not available in UDRP proceedings.
2.
Respondent
gave no evidence of Complainant’s consent to use its IBEROSTAR trademark.
3.
Even if
there was an implied license for Respondent to use Complainant’s IBEROSTAR
mark, it is revocable at will.
FINDINGS
Complainant has been using its IBEROSTAR
trademark since 1982 for resort hotels and bookings of resort vacations. The mark is registered with both the United
States Patent and Trademark Office and the European Community.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
There is no dispute that Complainant owns the
IBEROSTAR mark and that Respondent’s <goiberostar.com>
domain name is similar to and incorporates the mark. Therefore, the Panel finds that Policy ¶
4(a)(i) has been satisfied, and moves on to the other required elements of
Complainant’s case.
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion”).
Complainant
asserts that Respondent is not commonly known by the <goiberostar.com> domain name as Respondent’s WHOIS information
identifies Respondent as “Leisure Travel Inc. c/o Kellie Davis”. Therefore, the Panel finds that Respondent is
not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum
While the Panel understands
Respondent’s argument that it appeared to have permission to use Complainant’s
IBEROSTAR mark to market IBEROSTAR vacations, there is nothing in the record to
show that Complainant intended to give up the right to control its own
trademark. Indeed, Complainant exerted
control over Respondent’s use of the mark by reviewing such use, requiring
changes to the way the mark was being used by Respondent and, ultimately,
demanding that Respondent stop using the mark.
The Panel finds that, despite Respondent’s investment in its website to
promote Complainant’s vacations, it has not acquired the right to identify
itself with Complainant’s mark without permission. See
D2000-0113 (WIPO
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent believed that an officer
of Complainant endorsed its website promoting Complainant’s IBEROSTAR resorts
and vacation packages. Respondent stated
that one of its principals was a registered professional with Complainant and was
provided with a password, allowing access to a professional area, where travel
agents could download and use logos, colors, backgrounds, and images of
Complainant’s resorts, and Respondent attached supporting evidence. Respondent also details its interaction with
a Mr. Long, Vice President of Sales and Marketing for Iberostar, who happens to
be a friend and neighbor of the
Under the Policy, the following are noted as evidence of bad faith:
4. b. (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or laocation or of a product or service on your web site or location.
This Panel cannot find any of the above circumstances in the present case. Respondent registered the domain name and operated a website under that name to the mutual benefit of both itself and Complainant, working with Complainant’s Vice President of Sales and Marketing. The Panel finds that Respondent did not intend to sell the domain name to Complainant, but rather intended to and did build up traffic for its travel agent services at <goiberostar.com>. Respondent did not intend to divert or disrupt Complainant’s business, or try to pose as Complainant. Indeed, Complainant generally encourages travel agents to make bookings for Iberostar and therefore Respondent cannot be impugned for allegedly stealing bookings from Complainant.
The Panel finds that Complainant has not satisfied Policy ¶ 4(a)(iii).
The Panel does not find it necessary to
consider the defenses of acquiescence or laches to make the foregoing findings.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Sandra J. Franklin, Panelist
Dated:
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