Hoteles Turísticos Unidos S.A., HOTUSA v. Jomar Technologies
Case No. D2008-0136
1. The Parties
The Complainant is Hoteles Turísticos Unidos S.A., HOTUSA, Barcelona, Spain.
The Respondent is Jomar Technologies, Pennsylvania, United States of America, represented by Christopher Mazullo, Esquire, Pennsylvania, United States of America.
2. The Domain Name and Registrar
The disputed domain name <eurostarsblue.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2008. On January 29, 2008, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On January 29, 2008, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 11, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2008.
The Center appointed James A. Barker as the sole panelist in this matter on March 14, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On March 21, 2008, the Respondent sent an email, stating that it had only ‘recently reviewed’ the notified Complaint, as it was formally notified to an email address that the Respondent said it rarely used. The Respondent also claimed that the hard copy of the Complaint sent to it had been ‘misplaced in the company’s mailroom and only brought to our attention this week.’ In response to that communication, and in accordance with paragraph 10 of the Rules, the Panel requested the Respondent to file any response that it wished to make by April 1, 2008. The Respondent filed a Response on April 1, 2008.
4. Factual Background
The following facts are not contested.
The Complainant is the owner of a number of registered trademarks for EUROSTARS, including marks registered in the United States of America (since December 5, 2006), the European Community (since September 22, 2004), and Spain (since April 27, 1985).
The Complainant’s trademarks are held in the name of HOTUSA, a Spanish company with its place of business in Barcelona, Spain. (Accordingly, although the Complainant did not explicitly include it as such, the Panel has treated both HOTUSA and Hoteles Turísticos Unidos S.A. as the Complainant in this case.)
The disputed domain name was created on October 29, 2007.
At the date of this decision, the disputed domain name reverted to a website with the prominent heading, on its homepage, “Boycott Eurostars Blue Hotel & Spa”. The website contains numerous references, with associated links to press articles, regarding the apparent theft of valuables, during a wedding at the Eurostars Blue hotel in Tulum, Mexico in October 2007. For example, one report quotes the father of the bride, Justice Thomas Culver, as saying “A card was used to access all of the rooms. Someone with a pass code was able to access all of the locked safety deposit boxes in all of the rooms.” The website also contains links to other, unrelated, news articles, as well as a link to the official Eurostars Blue Tulum website.
5. Parties’ Contentions
A. Complainant
The Complainant claims that the disputed domain name is confusingly similar to its registered marks.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant notes that HOTUSA is a prestigious Spanish hotel company that owns and controls more than 45 hotels around the world, one of which is the “Eurostars Blue Tulum” hotel, located in Mexico. The Complainant states that the Respondent is not in the hotel business, and is using the disputed domain name to infringe the reputation and prestige of the Eurostars Blue Tulum hotel. In relation the subject of the Respondent’s dispute with that hotel, the Complainant states that the hotel filed a formal criminal accusation to the police in Mexico, in relation to the theft of cash and valuables.
The Complainant also claims that the disputed domain name was registered and used in bad faith, because the Respondent has registered and used it primarily to disrupt the Complainant hotel’s business.
B. Respondent
In its Response, the Respondent outlines the facts surrounding the robbery at Eurostars Blue Talum, and claims that the Complainant made no subsequent contact with any member of the wedding party.
The Respondent claims that the Complainant does not have exclusive rights to the “Eurostars” name, since an “on line search” (which the Respondent does not detail) demonstrates that there is another company providing multiple services under that name. The Respondent also claims that the Complainant has waived rights to exclusive use of its mark by its “failure to adequately protect its mark from unauthorized use”. (The Respondent does not state what those claimed inadequacies are.)
The Respondent also notes that the Complainant does not have trademark rights in EUROSTARS BLUE as such. It claims that the link to the Complainant’s official website, on the Respondent’s website, avoids the risk of confusion.
The Respondent claims that its use of the disputed domain name in connection with the website is a legitimate non commercial and fair use, as it is clearly a ‘protest’ or ‘criticism’ website.
The Respondent claims that it has not acted in bad faith because the contents of its website are based on factual, fully verified events. The Respondent states that it has no duty of good faith or fair dealing to the Complainant because they are “not in contractual privity”. Further, the Respondent states that it has exhibited none of the circumstances of bad faith set out in paragraph 4(b)(i)-(iv) of the Policy.
(The connection between the Respondent, Jomar Technologies, and any individual associated with having critical views of Eurostars Blue Tulum hotel, is not detailed in the Response. However, the Panel has accepted what appears to be obvious: which is that there is such a connection, or that the Respondent is acting in the interests of such a person(s)).
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These issues are discussed as follows.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s EUROSTARS mark. The addition of the generic word ‘blue’ does little to distinguish the mark. Rather, the addition of that word may reinforce possible confusion with the Complainant’s mark. This is because, as obviously intended by the Respondent, the addition of that word is derived from the trade name of one of the Complainant’s hotels.
The arguments raised by the Respondent in this respect are misplaced. The Policy does not require a Complainant to demonstrate that it has exclusive rights. The Policy clearly does not require the Complainant to have registered rights that exactly correspond to the relevant portion of the domain name (‘eurostarsblue’) – that much is contemplated by the Policy allowing a Complainant to demonstrate that the domain name is “confusingly similar”. The Respondent’s claim that the Complainant has ‘waived’ its rights, because of some claimed inadequacy in enforcing them, is vague. It specifies no conduct by which could be said to amount to such a ‘waiver’. The Complainant’s prosecution of these proceedings itself suggests that the Complainant is keen to protect its trademark rights.
The Complainant’s claim that its link to the official Eurostars Blue Tulum website is no defense. The issue of confusing similarity is determined by a literal comparison between the mark and the disputed domain name, absent broader use factors that may, in many jurisdictions, be relevant to a claim of trademark infringement. (See e.g. A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc.,
WIPO Case No. D2003-0172). Link or not, any reasonable Internet user would not likely be confused as to whether the Respondent’s website is, in fact, the Complainant’s. The website is clearly intended to criticize the Complainant, and no reasonable Internet user would expect the Complainant to be criticizing itself. As relevantly noted by the panel in Triodos Bank NV v. Ashley Dobbs,WIPO Case No. D2002-0776, in relation to a similar argument: “The fact that the nature of the site is apparent as soon as one arrives at it is too late. By then, the visitor has been deceived, the Respondent has achieved his objective and the damage is done.”
For these reasons, the Panel finds that the Complainant has established this first element.
B. Rights or Legitimate Interests
To demonstrate that the Respondent lacks rights or legitimate interests, the Complainant refers to the use of the disputed domain name to promote a boycott of the Eurostars Blue Tulum hotel. This, says the Complainant, is an attack on its reputation and prestige.
In this way, the Respondent’s website is evidently designed for a dual, and related, purpose. Firstly, the Respondent’s website operates as a forum for criticism of the Complainant’s hotel at Tulum, specifically in relation to the incident of theft at the wedding in October 2007. Secondly, the Respondent’s website incites the taking of a specific and negative action against the Complainant: in this case, the boycott of the Eurostars Blue Tulum hotel. That action is obviously designed to damage the Complainant’s business.
Neither of these uses are ‘commercial’, in the sense that the Respondent is seeking to obtain some financial benefit from them. (Although the Respondent’s use is clearly intended to have a commercial and detrimental effect on the Complainant.) For such non-commercial uses, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions notes that there are two main views:
“There is also some division between proceedings involving US parties and proceedings involving non-US parties, with few non-US panelists adopting the reasoning in View 2.
View 1: The right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark. …
View 2: Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if the use is fair and non-commercial.”
This Panel takes the view that it is consistent with the prior panel authority to apply ‘View 2’ where the parties are both resident in the United States of America. That is not the case here.
As such, the Panel has applied ‘View 1’. That is, in this case, the use of the confusingly similar domain name for a criticism website does not confer a legitimate interest on the Respondent. And, as noted above, the Panel has found that the disputed domain name (which combines the trademark EUROSTARS with the word ‘blue’ in a context in which the Complainant operates a hotel called in part ‘Eurostars Blue’) is confusingly similar to the Complainant’s mark.
This finding does not reflect on the Respondent’s right to operate a website criticizing the Complainant. The Respondent has a right to do so and clearly believes that its criticisms are well-founded. However, as noted by the panel in Triodos Bank NV v. Ashley Dobbs,
WIPO Case No. D2002-0776:
“there is a world of difference between, on the one hand, a right to express (or a legitimate interest in expressing) critical views and, on the other hand, a right or legitimate interest in respect of a domain name. The two are completely different. The fact that use of the Domain Name enables the Respondent to transmit his views more effectively is neither here nor there. Depriving the Respondent of the ability to deceive internet users by his use of the Domain Name does not in any way deprive him of his right to free speech. He could readily use a domain name which telegraphs to visitors precisely what his site contains and thereby obviate any risk of deception.”
For these reasons, the Complainant has established this second element.
C. Registered and Used in Bad Faith
It is central to a finding of bad faith that a respondent knew of a complainant, and intended to take advantage of its mark, when it registered and then used the disputed domain name.
In this case, it is obvious that the Respondent was well-aware of the Complainant when it registered the disputed domain name. The disputed domain name is identical to the name of the Complainant’s hotel, and confusingly similar to its mark. It is natural that the Respondent intended to attract the largest numbers of visitors that it could to its website, to maximize its criticism of the Complainant’s hotel. The Respondent was likely aware that such a confusingly similar domain name would be more useful for this purpose. In this way, the Respondent, by registering and using the disputed domain name, intentionally took advantage of its similarity with the Complainant’s mark.
Whether or not, as the Respondent claims, its motivations also arose from ‘factual events’ is not relevant in this respect. Neither is its claim that it owes no general or equitable duty of good faith or fair dealing toward the Complainant. The Policy does not apply such a duty.
For these reasons, the Panel finds that the Complainant has established this third element.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <eurostarsblue.com>, be transferred to the Complainant.
James A. Barker Sole Panelist
Dated: April 3, 2008
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