National Arbitration Forum




Occidental Hoteles Management, S.L. v. Media Insights a/k/a Media Insight

Claim Number: FA0812001239395



Complainant is Occidental Hoteles Management, S.L. (“Complainant”), represented by Joshua D. Yeager, of Cremer, Shaughnessy, Spina, Jansen, & Seigert LLC, Illinois, USA.  Respondent is Media Insights a/k/a Media Insight (“Respondent”), represented by James S. Robertson, of Gaebe, Mullen, Antonelli, Esco & Dimatteo, Florida, USA.



The domain names at issue are <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, and <>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.



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.


David E. Sorkin as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on December 18, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 22, 2008.


On December 22, 2008, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, and <> domain names are registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names.  Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide 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 December 30, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 19, 2009 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,,,,,,,,,,,,,,,,,,, and by e-mail.


A Response was received on February 6, 2009, but the Response was deemed deficient pursuant to Paragraph 5 of the Rules for Uniform Domain Name Dispute Resolution (the “Rules”) because a hard copy was not received prior to the Response deadline.  The Panel has nonetheless decided in the interest of justice to consider the deficient Response.


On February 11, 2009, Complainant submitted an Additional Submission, and on February 17, 2009, Respondent submitted an Additional Submission.  The National Arbitration Forum determined these submissions to be timely and in compliance with Paragraph 7 of the Forum’s Supplemental Rules.


On February 18, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.



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



A. Complainant

Complainant is the owner of OCCIDENTAL HOTELS AND RESORTS, which it describes as “a copyrighted and otherwise protected business name, service mark, trademark, and trade name” that is associated with 46 hotels located in Europe, Africa, the Caribbean, and the Americas.  Complainant and other authorized companies have used the OCCIDENTAL mark since at least 1985.  Complainant states that it has never authorized Respondent’s use of this mark in the disputed domain names or on the associated websites, nor authorized Respondent to sell rooms at Occidental-branded hotels.  Respondent registered the disputed domain names between November 2001 and April 2008.  Complainant asserts that Respondent’s purpose in registering the domain names was to disrupt Complainant’s legitimate business by using the domain names to intentionally attract Internet users to Respondent’s websites by creating a likelihood of confusion as to their source, sponsorship, affiliation, or endorsement.


B. Respondent

Respondent states that it is a division of a wholesale tour operator, Vacation Store, that provides tour operations and travel packages, including hotel accommodations, for travel to destinations outside the United States.  Respondent further states (with supporting documentary evidence) that Vacation Store has had a longstanding business relationship since 2000 and that Complainant has been aware of the websites associated with the disputed domain names for many years, has encouraged Respondent to operate them, has provided material for inclusion on them, and has benefited economically from them.  Respondent also notes that it has included a disclaimer on the websites to inform users that the sites are not operated by Complainant.


C. Additional Submissions

Both parties have provided Additional Submissions, although neither party has explicitly identified any exceptional circumstances that would warrant the Panel’s consideration of supplemental material.  The Panel has considered these submissions only to the extent that they appear to reflect newly discovered evidence not reasonably available to the submitting party at the time of its original submission, or rebut arguments by the opposing party that the submitting party could not reasonably have anticipated.  See America Online, Inc. v. Thricovil, FA 638077 (Nat. Arb. Forum Mar. 22, 2006); Bar, Inc. v. - Ref-R# 44488698, FA 829161 (Nat. Arb. Forum Jan. 9, 2007).


In its Additional Submission, Complainant notes that Vacation Store is not a respondent in this proceeding, and that none of the domain name registration records for the disputed domain names list Vacation Store in any capacity.  Complainant states further that Vacation Store has represented to Complainant that it is a separate entity from Respondent.  Complainant asks the Panel to disregard the evidence furnished by Respondent that relates to Vacation Store rather than to Respondent.


In its Additional Submission, Respondent reiterates that it is merely a division of Vacation Store, and asserts that Complainant has known for some time that the domain names were registered and operated by Vacation Store.



The Panel finds with respect to seven of the disputed domain names, <>, <>, <>, <>, <>, <>, and <>, that Complainant has failed to prove that these domain names are identical or confusingly similar to a mark in which Complainant has rights.


The Panel further finds, with respect to the remaining thirteen disputed domain names subject to this proceeding, <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, <>, and <>, that Complainant has failed to prove that Respondent lacks rights or legitimate interests in respect of the domain names.



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 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


The only mark in which Complainant has claimed rights in this proceeding is OCCIDENTAL HOTELS AND RESORTS.  Several of the disputed domain names (specifically, <>, <>, <>, <>, <>, <>, and <>) do not appear to be similar in any manner to this mark, disregarding (in four instances) the generic term “resorts” to which Complainant presumably makes no particular claim.  Complainant offers no explanation of any similarity between these domain names and its OCCIDENTAL mark; Complainant’s argument appears to focus upon the content of the websites to which these domain names resolve rather than the domain names themselves.  The Panel therefore finds that Complainant has failed to prove that these domain names are identical or confusingly similar to a mark in which Complainant has rights.


With regard to the remaining domain names, the Panel declines to enter a finding as to identicality or confusing similarity.


Rights or Legitimate Interests


In the view of the Panel, the evidence in the record tends to show that Respondent and Vacation Store are related entities, and that Respondent’s use of the disputed domain names is and has been in connection with a contractual relationship between Complainant and Vacation Store.  To this end the domain names are being used to promote Complainant’s hotel properties, with some commissions or other payments being made by Complainant to Vacation Store as a result of such promotion efforts.


It may well be, as Complainant contends, that it never authorized Respondent in particular to use its mark or market its hotel properties, and that until recently Complainant may have been unaware of (and perhaps misled as to) the claimed connection between Respondent and Vacation Store.  But it also appears that Complainant has long been aware of the existence of the domain names and corresponding websites, and that Complainant has likely condoned their use for the mutual benefit of Complainant and Vacation Store.  Whether that use represents a “bona fide offering of goods or services” under Paragraph 4(c)(i) of the Policy is a difficult question, turning in part upon disputed factual issues and in part upon legal questions (including breach of contract and possible nominative fair use).


The Panel is mindful of the limited scope of proceedings conducted under the Policy and the limited competence of a Panel to determine complex questions arising therein.  This is not a typical case of cybersquatting falling squarely within the “relatively narrow class of cases” susceptible to adjudication under the Policy.  See Public Company Accounting Oversight Board v. Nagel, FA 290974 (Nat. Arb. Forum Aug. 17, 2004) (citing ICANN, Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (Oct. 24, 1999), <>, paragraph 4.1(c)).  Furthermore, the burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names rests upon Complainant.  Under the circumstances, the Panel finds that Complainant has failed to meet this burden with respect to the remaining thirteen domain names.


Registration and Use in Bad Faith


Because the Panel’s findings on the preceding two issues are determinative, the Panel declines to enter any findings as to registration and use in bad faith.



Having considered the elements required under the Policy, the Panel concludes that relief shall be DENIED as to all of the disputed domain names.






David E. Sorkin, Panelist
Dated:  March 2, 2009







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