TUI FRANCE v. Guillermo Pérez et al.
Claim Number: FA1406001567455
Complainant: TUI FRANCE of LEVALLOIS PERRET, France.
Complainant Representative: Nameshield of Angers, France.
Respondent: Guillermo Pérez Pérez of Jerez de la Frontera, Cádiz, Spain.
REGISTRIES and REGISTRARS
Registries: .CLUB DOMAINS, LLC
Registrars: 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 Examiner in this proceeding.
Fernando Triana, Esq., as Examiner.
Complainant submitted: June 30, 2014
Commencement: June 30, 2014
Response Date: July 5, 2014
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the disputed domain name be suspended for the life of the registration.
Clear and convincing evidence.
1. Complainant owns the trademark MARMARA in Austria (AT), Benelux (BX), Germany (DE), Spain (ES), Italy (IT), Monaco (MC) and Portugal (PT), since 1991.
2. Complainant owns the domain name <marmara.com> since 1998.
3. Complainant’s domain name resolves to a website offering services for tourists, which is Complainant’s main service as a tourist operator.
4. Respondent registered the disputed domain name <marmara.club> on May 8, 2014.
5. Respondent has never been commonly known by the disputed domain name or the trademark MARMARA.
6. Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services.
7. Respondent has the intention to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant's trademark due to the pay-per-click links within his website.
As per the Paragraph 9 (c) of the URS Rules, the Examiner will determine in which language to issue its Determination. Taking into account that Complainant submitted the Complaint in English and that Respondent filed an email in the same language, the Examiner will decide in English.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
Identical and/or Confusingly Similar
Concerning the first element, Paragraph 1.2.6.1., of the URS Procedure introduces that to obtain an order to suspend a domain name; the disputed domain name should be identical or confusingly similar to a word mark:
(i) for which Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Furthermore, the use of said trademark could be shown by:
a. Demonstrating evidence of use – which can be a declaration and one specimen of current use in commerce – was submitted to, and validated by, the Trademark Clearinghouse)
b. Providing a sample of use submitted directly with the URS Complaint”.
a) Existence of a trademark in which the Complainant has rights and is in current use
Complainant proved its rights on the trademark MARMARA in Austria (AT), Benelux (BX), Germany (DE), Spain (ES), Italy (IT), Monaco (MC) and Portugal (PT), since 1991.
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademarks and the exclusive right to use them in connection with the corresponding services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive[1].
Furthermore, Complainant filed evidence of use by means of a declaration and one specimen of current use in commerce validated by the Clearinghouse.
Therefore, the Examiner concludes that Complainant has demonstrated to be the owner of a valid trademark registration which is in current use for purposes of Paragraph 1.2.6.1.(i), of the URS Procedure.
b) Identity or confusing similarity between the disputed domain name and the Complainant’s trademark
The Examiner considers that the reproduction of the trademark MARMARA, by the disputed domain name <marmara.club>, is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[2]. Specially since the disputed domain name reproduces entirely Complainant’s trademark without any other distinctive elements. Consequently, consumers will assume that the owner of the disputed domain name is the tourism operator.
Thus, by registering the disputed domain name, Respondent creates a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name.
In consequence, as per this reasoning, the Examiner finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark and thus, the requirement set forth in Paragraph 1.2.6.1., of the URS Procedure is duly complied with.
Paragraph 1.2.6.3., of the URS Procedure, includes a non-exclusive list of circumstances that demonstrate bad faith registration and use by Respondent, as follows:
a. Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the disputed domain name; or
b. Respondent has registered the disputed domain name in order to prevent the trademark holder or service mark from reflecting the trademark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
c. Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the disputed domain name Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on that web site or location.
Complainant asserts that the disputed domain name was registered in bad faith since Respondent registered the domain name for the purpose of selling it and to disrupt the business of a competitor.
The screen shot of Respondent’s website filed by Complainant, shows that the disputed domain name was for sale at the time the Complaint was filed and that such website, to which the disputed domain name resolves, displayed pay-per-click links related to other Respondent’s websites.
According to Paragraph 5.9.1, of the URS Procedure, holding a large portfolio of domain names, for itself does not indicate bad faith under the URS. However, Complainant owns a trademark registration for MARMARA in Spain, Respondent’s place of origin, such trademark has been registered since 1991; the disputed domain name was registered by Respondent on May 8, 2014 and that after the Complaint was filed, Respondent modified the content to refute Complainant’s allegations. Hence, given the current circumstances and concerning <marmara.club>, the fact that Respondent holds a large portfolio of domain names, indicates bad faith registration and use.
Furthermore, in accordance with Paragraph 5.9.2, of the URS Procedure, a domain name redirecting to a website displaying pay-per-click links does not in and of itself constitute bad faith under the URS. Nonetheless, such conduct may be abusive, as in the current circumstances.
The disputed domain name is a new gtld “.club”. By definition “club” is “(i) a group of people who meet to participate in an activity (such as a sport or hobby). (ii) the place where the members of a club meet. (iii) a sports team or organization”[3].
As per Respondent’s filed evidence (nic.club/why-club and nic.club/faq), the new gtld “.club” pretends to make it easy to bring people together, as a part of a group, in a common interest or passion, it is destined for clubs and membership organizations, which basically falls within the definition of club.
Thus, the use of the disputed domain names <marmara.club> as shown in Complainant’s or Respondent’s screen shot, does not correspond to the purpose of the new gtld “.club”. In Complainant’s screen shot simply displays pay-per-click links related to other Respondent’s websites, in Respondent’s screen shot shows pay-per-click links of different geographical references related to the word MARMARA, consequently, the use given by Respondent to the disputed domain name does not fulfill the rationale behind the new gtld “.club”. Moreover, the pay-per-click links are Respondent responsibility.
Thus, the Examiner concurs with Complainant and considers that Respondent registered the disputed domain name for the purpose of disrupting the business of a competitor and with the intention to attract internet users for commercial gain.
Although, Respondent pretends to refute the screen shot of Respondent’s website filed by Complainant as evidence, he does it by filing screen shots which were modified on July 2 and 3, 2014, as can be seen in Respondent’s filed evidence.
To refute Complainant’s screen shots taken on June 30, 2014, same day in which Respondent was served of the Complaint, Respondent should have shown that on June 30, 2014, the website was different from what Complainant showed and not three (3) days later when the website registered a modification.
Consequently, not only the first screen shot filed by Complainant is indicative of bad faith, the modification of said site to refute Complainant’s allegations also add to the count of bad faith registration and use by Respondent.
Furthermore, as stated above, Respondent ‘s use of the disputed domain name does not fall into the category of bona fide offering of goods or services, Respondent is not commonly known by the disputed domain name and the use made of the disputed domain name misleads divert consumers for Respondent’s commercial gain.
Finally, Respondent asserts that the disputed domain name is generic or descriptive, according to Paragraph 5.8.1, of the URS Procedure. However, for a trademark to be descriptive or generic, the analysis must be performed based on the goods and services which are identified, otherwise, no word could ever be registered as a trademark.
In this case, the trademark MARMARA identifies a tourist operator and other goods and services related to tourism. The tourist operator is based in France and owns several social clubs which go by the name of MARMARA in the Mediterranean.
When reviewed, MARMARA does not describe or indicate the goods or services as MARMARA does not have a meaning which could describe or be related to tourist services. MARMARA does not describe the quality or quantity of the goods or services, as MARMARA is neither a quantifier not a qualifier. MARMARA does not even describe or indicate the location, as the goods or services are not limited to a place in Turkey, but are clubs located in the Mediterranean.
Moreover, MARMARA is not generic, since the word as such, does not have any meaning in Spanish[4] or in English[5].
As per this reasoning, the Examiner finds that, in the present case, the disputed domain name was registered and is being used in bad faith, thus, the requirement set forth in Paragraph 1.2.6.3., of the URS Procedure is duly complied with.
Paragraph 8.3 of the URS Procedure explains the extent of the second element as established in Paragraph 1.2.6.2., of the URS Procedure which is that Registrant has no legitimate right or interest to the disputed domain name. In a URS procedure, Complainant’s burden of proof regarding Registrant’s lack of rights or legitimate interest in the disputed domain name, is limited present adequate evidence to substantiate Complainant’s trademark rights in the disputed domain name, such as, evidence of a trademark registration and evidence that the disputed domain name was registered and is being used in bad faith in violation of the URS.
As per the URS requirements, Complainant’s burden of proof has been met, regarding Registrant’s lack of rights or legitimate interest in the disputed domain name, as Complainant has successfully shown evidence to substantiate its trademark rights, such as, the trademark registration MARMARA in Austria (AT), Benelux (BX), Germany (DE), Spain (ES), Italy (IT), Monaco (MC) and Portugal (PT), since 1991.
Moreover, as established in Paragraph 8.3 of the URS Procedure, Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith in violation of the URS, as studied and shown before.
Consequently, the Examiner finds that, in the present case, Respondent has no legitimate right or interest to the disputed domain name, thus, the requirement set forth in Paragraph 1.2.6.2., of the URS Procedure is duly complied with.
After reviewing the parties’ submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the domain name <marmara.club> be SUSPENDED for the duration of the registration.
Fernando Triana, Examiner
Dated: July 10, 2014
[1] See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002).
[2] See ER Marks, Inc. and QVC, Inc. v. Hansmann, FA 1381755 (Nat. Arb. Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).
[3] http://www.merriam-webster.com/dictionary/club
[4] http://lema.rae.es/drae/?val=marmara
[5] http://www.merriam-webster.com/dictionary/marmara
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