Barceló Corporación Empresarial S.A. (Barceló Group) v. Media Insights
Case No. D2010-0015
1. The Parties
The Complainant is Barceló Corporación Empresarial S.A. (Barceló Group)of Palma de Mallorca, Baleares, Spain, represented by Herrero & Asociados, Spain.
The Respondent is Media Insights of Miami Beach, Florida, United States of America, represented by Gaebe, Mullen, Antonelli & Dimatteo, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bavarocaribebeach.com> is registered with Melbourne IT Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2010. On January 6, 2010, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On January 8, 2010, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 January 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2010. Further to Respondent's request and Complainant's acquiescence the Response due date was extended to February 14, 2010. The Response was filed with the Center on February 12, 2010.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on February 23, 2010. 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.
4. Factual Background
The factual information about the Complainant was taken from the information provided in the Complaint.
The Complainant is a group of companies engaged in hotel management internationally. The group operates about 45,000 hotel rooms in 15 countries, and also operates in other sectors related to tourism and travel. Its history traces back to 1931.
The dispute concerns the Complainant's hotel resort operations at Bavaro in the Dominican Republic. The Complainant holds a considerable number of trademarks incorporating its name “Barceló”, including notably:
The Complainant holds many other trademarks internationally, for example:
BARCELÓ HOTELS AND RESORTS, USA trademark No. 2557091
BARCELÓ HOTELS USA, USA trademark No. 2596874
BARCELÓ HOTELS, Community trademark No. 2093722
BARCELÓ HOTELS, Honduras trademark No. 5336
The factual information about the Respondent was taken from the information provided in the Response.
The Respondent is a media division of Vacation Tours, which does business as a wholesale tour operator. The wholesaler puts together travel and accommodation packages that are sold to retailers who sell them to consumers. The Respondent does not own hotels but does business partly by handling bookings, and thereby may promote venues attractive to customers. One of these is the Complainant's hotel at Bavaro Beach in the Dominican Republic.
The disputed domain name appears to have been registered on October 26, 2006.
5. Parties' Contentions
A. Complainant
The Complainant contends that it is the holder of numerous trademarks embodying its name BARCELÓ, and submits in evidence a file of copies of trademark registration documents or trademark agency statements. A copy of a registration memorandum produced on the letterhead of Herrero & Asociados, International Patent and Trademark Consultants, records Dominican Republic trademark BARCELÓ BAVARO CARIBE as being registered in the name of the Complainant and shows a period of validity from May 15, 2003 to May 15, 2013.
The Complainant contends that it is well-known and competes in the international hotel chain business. The Complainant has been known as a transport company since 1931 and has been opening and operating hotels around the world in places such as Spain, Turkey, Africa, Mexico, the United States, the Dominican republic and the Caribbean since 1962.
The Complainant contends that the disputed domain name <bavarocaribebeach.com> is confusingly similar to its trademark BARCELÓ BAVARO CARIBE. The Complainant says that the disputed domain name does not include the trademark BARCELÓ but is very similar to the registered trademark BARCELÓ BAVARO CARIBE and is identical to the name of the resort. There is no other resort in the Caribbean with such a name.
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant has not authorised the Respondent to use its trademark or to apply for a domain name incorporating the trademark. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name because no authority has been granted for the Respondent to advertise the Complainant's resorts or to offer its accommodation. Only the Complainant can register domain names that coincide with its hotel names. The Complainant says that, in a Google search, the name Bavaro Caribe Beach finds references only to the Complainant's hotel. The Respondent has not, before notice of the Complaint, made any bona fide use of the disputed domain name for the offering of goods or services.
The Complainant further contends that the disputed domain name was registered and is used in bad faith. The Respondent's intention is to mislead Internet users to its website, which bears the name of the Complainant's resort, in order to solicit reservations in a way not authorised by the Complainant. The Respondent is using the disputed domain name for commercial gain by relying on Internet users being confused into thinking that the corresponding website has the endorsement of the Complainant. The Respondent in doing so is disrupting the business of the Complainant. The Respondent's choice of the disputed domain name cannot be accidental and the content appears as though it is the official website of the resort. The Complainant says that activities similar to those of the Respondent are very common on the Internet.
The Complainant sent a cease, desist and transfer letter to the Respondent who, according to an attachment submitted in evidence, replied with the enclosure of a report from a business journal entitled “Travel agency wins intellectual property suit”. The case concerned Vacation Tours (associated with the present Respondent) and the Internet site “www.bavaropalace.com”.
The Complainant submitted to the Panel a number of citations and quotations in support of its contentions. These included excerpts from the World Intellectual Property Organization publication “Joint Recommendation Relative to Provisions on Protection of Well-Known Marks”, and certain European Conventions. The Complainant also cited, with excerpts in some instances, eight previous WIPO UDRP decisions concerning domain names incorporating the element “barcelo” or “barceló” that had been decided in favour of the Complainant, and an excerpt from Banco Santander Central Hispano, S.A. v. Banco Santander Of Central Hispano,
WIPO Case No. D2005-0631.
The Complainant requests the transfer of the disputed domain name.
B. Respondent
The Respondent denies the Complaint.
The Respondent sets out a lengthy chronology of it relations with the Complainant, and contentions stemming from that relationship, that will be summarised briefly. The Respondent refers throughout its submission to issues of similarity to a trademark, rights in the disputed domain name, and bad faith.
The Respondent contends that it is involved in the business of tours and travel outside the United States, in conjunction with Vacation Tours. The Respondent will use the term Respondent to refer jointly to Media Insights and Vacation Tours. The Respondent explains its business as putting together packages containing travel, transfers and accommodation, taking commissions and making profits in the conventional way.
The Respondent says that it and the Complainant were at one time in a business relationship that had the effect of the Respondent supplying business benefits, such as bookings, to the Complainant. The disputed domain name was registered and used innocently and not for any of the reasons that may constitute bad faith. The Respondent was authorised to sell the Complainant's hotel rooms and to use the Complainant's marks, logos and copyrighted materials for the purpose. The Respondent asserts that the Complainant wants to take the website that has been developed.
The Respondent asserts that its use of the disputed domain name has been in good faith for the bona fide offering of hotel rooms, and that it has rights and legitimate interests in the disputed domain name.
The Respondent contends that the disputed domain name is composed of geographic and generic words in such as way as to be unprotectable. Bavaro is a place; beach is a generic word; and caribe is a word used in the context of the Caribbean that appears in the names of businesses other than the Complainant's. The word “barcelo” does not appear in the disputed domain name.
The Respondent also contends that this dispute has a history not disclosed by the Complainant. The Respondent says that the Complainant filed suit in the United States Federal Court against Vacation Tours Inc., and a proprietor thereof, in the matter of certain trademarks and domain names, but not the currently disputed domain name. The essential conclusion of the Court was that the plaintiff (the present Complainant) had not demonstrated a protectable interest in the term “Bavaro Palace” and that the plaintiff failed. On appeal the Court's decision was upheld on this count.
The Respondent contends that the Complainant's trademarks rely essentially on the component “Barceló”. The Respondent does not in the present context use the Complainant's trademark BARCELÓ but conversely does own the United States trademark BAVAROPALACE.COM (documentation submitted) and thereby is using “bavaro” as part of its trademark.
The Respondent submits that the Complainant does not claim to own a hotel called precisely “Barcelo Bavaro Caribe Beach”.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant') asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Complainant must prove that it has rights in a trademark to which the disputed domain name is identical or confusingly similar.
The Panel has reviewed the submitted evidence as to the Complainant's trademarks and is satisfied that the Complainant has rights in the Dominican Republic trademark No. 162895 BARCELÓ BAVARO CARIBE, registered May 15, 2003, together with a considerable number of other trademarks internationally that incorporate the word “Barceló”.
The disputed domain name is <bavarocaribebeach.com>. The Complainant seeks to establish that its trademarks including BARCELÓ BAVARO CARIBE, and others relating to tourism and travel and having in common the word BARCELÓ, are identical or confusingly similar to the disputed domain name. The gTLD designation “.com” may be neglected in the consideration of confusing similarity. The remainder of the disputed domain name, upon dissection, comprises the recognisable components “bavaro”, “caribe” and “beach”.
The word “beach”, on its own, is found by the Panel to be an ordinary descriptive dictionary word. The word “caribe” is found to be, on the basis of usage as supported by the evidence, a commonly used derivative of the word “Caribbean”, the latter being a generalised geographical region and a word of no protectable value in itself in this context. The word “bavaro” is found to be a geographical identifier, being the name of a location in the Dominican Republic known as a place of recreation and the home of a number of businesses associated with vacations and tourism.
In the context of domain name disputes jurisprudence it is widely accepted that a geographical identifier in itself usually conveys little or no protection upon a trademark, except in extraordinary circumstances. For a geographical identifier to acquire trademark status it may be necessary for the connection between the place name and the trademark to be so strong that the geographical significance of the place name is effectively displaced by the corresponding product or service.
The Panel can find nothing protectable in the assemblage of words in the disputed domain name, namely “bavaro, caribe, beach”, comprising as it does the place “Bavaro”, the word “caribe” evocative of the Caribbean, and the plain word “beach”. Furthermore, the Panel can find no secondary meaning and nothing protectable in the specific concatenation of these words forming the disputed domain name.
The Panel has no reason to doubt that the Complainant has protectable rights in the trademark word BARCELÓ in a combination such as BARCELÓ BAVARO CARIBE. In that trademark, however, it is specifically the component BARCELÓ that makes what would otherwise be an unprotectable combination of “Bavaro” and “beach” into a protectable trademark, by endowing it with the Complainant's distinctive trademark name BARCELÓ. Whilst the word BARCELÓ is the key distinctive word throughout the Complainant's extensive portfolio of trademarks, it is conspicuously absent from the disputed domain name. The Panel can find no basis upon which confusing similarity could be found between the Complainant's trademarks, reliant as they are upon the word BARCELÓ, and the disputed domain name that does not contain the word “Barceló”.
The Panel finds for the Respondent in the terms of paragraph 4(a)(i) of the Policy and accordingly the Complaint must fail altogether.
It is not unusual for a Panel, having found against the Complainant in the terms of paragraph 4(a)(i) of the Policy, to continue for completeness to consider the remainder of the Complaint under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. In the present instance, the Panel considers the Complainant's prospects of success as having been so limited from the outset that brief comments only will be made on the remaining counts.
B. Rights or Legitimate Interests
The onus is upon the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel is well aware that the business of travel and accommodation is one that particularly attracts agents who operate on the Internet in the expectation of garnering commissions. Broadly speaking such Internet operators may work legitimately, acting with the acquiescence of the supplier of the services or goods and passing on bookings in return for commissions, or they may do so illegitimately, possibly among other things by trading on another's trademark without permission.
The Panel has considered aspects of the history of the relationship between the Complainant and the Respondent, evidenced by the Respondent having operated in this manner since about 2003 and the style of the Respondent's website. The Complainant appears to have a significant basis for its argument that the Respondent's website may project an image of being an “official” website of the Complainant's hotel. It is also noted that the Respondent's website has content over which the Complainant might possibly assert copyright. Nevertheless, taking into account the previous finding that the disputed domain name is not confusingly similar to the Complainant's trademark, the Panel is not convinced that the Complainant has succeeded in proving on the balance of probabilities that the Respondent is without rights or legitimate interests in the disputed domain name itself. The UDRP is concerned essentially with abusive registration and use of a domain name, and not with copyright infringement as such, which would be a business dispute properly to be argued in another forum.
C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(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 registration 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 location or of a product or service on your website or location.
The Panel did not find evidence that the disputed domain name was registered by the Respondent primarily for purposes of sale, or as a blocking registration, or primarily to disrupt the business of a competitor.
In the terms of paragraph 4(b)(iv) of the Policy, it appears to the Panel that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by using a name similar to that of the Complainant's resort, which, without the BARCELÓ branding, is essentially generic in composition. In order to succeed on this point the Complainant would have needed to prove confusion, within the meaning of paragraph 4(b)(iv) of the Policy, with the Complainant's trademark, not merely with the name of the resort.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Dr. Clive N.A. Trotman Sole Panelist
Dated: March 4, 2010
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