National Arbitration Forum




Iberostar International A.G. v. Leisure Travel Inc. c/o Kellie Davis

Claim Number: FA0707001045076



Complainant is Iberostar International A.G. (“Complainant”), represented by Thomas P. Arden, of Holland & Knight LLP, 131 South Dearborn Street, 30th Floor, Chicago, IL 60603.  Respondent is Leisure Travel Inc. c/o Kellie Davis (“Respondent”), represented by Ryan L. Isenberg, of Isenberg & Hewitt, P.C., 7000 Peachtree Dunwoody Road, Building 115, Suite 100, Atlanta, GA 30328.



The domain name at issue is <>, registered with, Inc.



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.



Complainant submitted a Complaint to the National Arbitration Forum electronically on July 23, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 25, 2007.


On July 30, 2007,, Inc. confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with, Inc. and that the Respondent is the current registrant of the name., Inc. has verified that Respondent is bound by the, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).


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 by e-mail.


On August 24, 2007, Respondent requested additional time to file a timely Response.  Complainant consented to this request, and the National Arbitration Forum subsequently approved this request, extending the date by which Respondent could file a timely Response to September 5, 2007.


A timely Response was received and determined to be complete on September 4, 2007.


Complainant filed a timely Additional Submission on September 10, 2007, in compliance with Supplemental Rule 7.


On September 12, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.



Complainant requests that the domain name be transferred from Respondent to Complainant.



            A.  Complainant makes the following assertions:


1.      Respondent’s <> domain name is confusingly similar to Complainant’s IBEROSTAR mark.


2.      Respondent does not have any rights or legitimate interests in the <> domain name.


3.      Respondent registered and used the <> domain name in bad faith.


B.  Respondent makes the following assertions:


1.      Respondent admits that its <> domain name is similar to and incorporates Complainant’s IBEROSTAR domain name.


2.      Respondent has rights and legitimate interests in the <> 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 <> domain name.


4.      Respondent asserts the defenses of acquiescence and laches, in support of its claim to have legitimate interests in the <> 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.



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. 



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.


Identical and/or Confusingly Similar


There is no dispute that Complainant owns the IBEROSTAR mark and that Respondent’s <> 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.


Rights or Legitimate Interests


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 <> 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 May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").  Complainant further states that Respondent is not authorized to use its mark in any way.  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).


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 Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co.,

D2000-0113 (WIPO April 14, 2000) (finding retail seller of Complainant’s goods does not have an interest in Complainant’s trademark); see also NET2PHONE, Inc. v. Dynasty System SDN BHD, D2000-0679 (WIPO Sept. 21, 2000) (finding that membership in Complainant’s web affiliate program does not create legitimate interest in infringing domain name).


The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.


Registration and Use in Bad Faith


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 Davis’, who own Respondent Leisure Travel, Inc. 


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 <>.  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.



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: September 24, 2007







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