WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Centro de Promociones Los Cabos San Lucas, S.A. de C.V. v. Domains by Proxy, LLC. / Martha Becerra

Case No. D2019-1908

1. The Parties

Complainant is Centro de Promociones Los Cabos San Lucas, S.A. de C.V., Mexico, represented by CAYAD, S.C., Mexico.

Respondent is Domains by Proxy, LLC., United States of America (“United States”) / Martha Becerra, Mexico.

2. The Domain Name and Registrar

The disputed domain name is <grand-solmar.com> which is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2019. On August 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from those in the Complaint. The Center sent an email communication to Complainant on August 8, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint by email on August 8, 2019.¹

The Center verified that the Complaint and the amendment to 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 2, 2019.

The Center appointed Gerardo Saavedra as the sole panelist in this matter on September 6, 2019. This Panel finds that it was properly constituted. This 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

Complainant is part of a Mexican hotel group which operates several hotels, timeshare sales and several restaurants.

Complainant has rights over the following trademarks, which are registered with the Mexican Institute of Industrial Property (“IMPI”): GRAND SOLMAR LAND’S END and design, registration No. 1106527 in class 43, registered on June 17, 2009; SOLMAR and design, registration No. 1149459 in class 43, registered on March 19, 2010; and GRAND SOLMAR VACATION CLUB and design, registration No. 1500201 in class 43, registered on December 4, 2014 (the “Trademarks”).

The disputed domain name was registered on February 28, 2018. According to Complainant, at the time the Complaint was filed the website associated to the disputed domain name was inactive, although the disputed domain name was used for email addresses.

5. Parties’ Contentions

A. Complainant

Complainant’s assertions may be summarized as follows.

Complainant is a Mexican hotel group incorporated in 1973. It currently operates five hotels: Playa Grande, Solmar, Grand Solmar, The Ridge and Quinta del Sol, comprising more than 1,000 rooms and villas. Complainant also operates as a timeshare sales company, and operates many restaurants.

Complainant is the sole owner of several trademark registrations, all of which contain the words “solmar” and/or “grand solmar” as the essential component of said trademarks. Complainant is also the owner of the following domain names, among others, through which Complainant advertises and offers its services: <solmar.com>, <grandsolmarresort.com>, <solmarcabosanlucas.com>, <grandsolmar.com> and <thegrandsolmarresort.com>.

The disputed domain name is confusingly similar and almost identical to the Trademarks. The disputed domain name incorporates the SOLMAR trademark in its entirety, as well as the Grand Solmar name. It is clear that the use of “grand solmar” in the disputed domain name leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademarks.

Respondent has no rights nor legitimate interests in respect of the disputed domain name. Respondent has not acquired trademark rights on the name “grand solmar”, it is not affiliated with Complainant, nor is Complainant’s licensee, and there are no agreements between the parties.

Complainant has conducted searches before the IMPI and has not found registrations for “grand solmar” in class 43, other than those granted in favor of Complainant and Complainant’s affiliates or representatives, that could suggest that Respondent has acquired trademark rights for “grand solmar” in Mexico. Complainant also conducted searches before the United States Patent and Trademark Office, and did not find registrations for the exact denomination of the disputed domain name (isolated or in combination) in class 43, that could indicate that Respondent has acquired trademark rights for “grand solmar” in the United States of America.

There is no website associated to the disputed domain name that shows content of any sort, advertises Respondent’s services, if any, or permits to establish contact with Respondent. Thus, at least as to a website, Respondent maintains a passive holding of the disputed domain name.

Although the disputed domain name does not resolve to an active website, it is being used to send emails purportedly from Complainant with a view to fraudulently obtain payments and information from customers, time-share or condo owners. Thus, Respondent is not using the disputed domain name to provide a bona fide offering of goods or services, nor in connection with a legitimate noncommercial or fair use.

Respondent sends emails from the email account associated with the disputed domain name to Complainant’s clients, using Complainant’s Trademarks (including registered logos), without authorization or license from Complainant, to offer sales and reservation services to actual members or time-share owners of Complainant’s hotels and resorts, defrauding customers and misleading them by contacting them and making them believe Respondent works for or acts in representation of one of Complainant’s hotels and resorts. These facts show that Respondent has not used the disputed domain name in connection with a bona fide offering of services, but quite the opposite.

An email sent to a Complainant’s customer on December 27, 2018, using the email account associated with the disputed domain name (“[…]@grand-solmar.com”), reproduces Complainant’s SOLMAR and design trademark in the email’s bottom signature block image, without authorization from Complainant. In that email a false phone number is provided, one that has no relation at all with Complainant’s resorts, and the name of a supposed representative from Solmar Hotels and Resorts, whose name does not correspond to any individual that works or has ever worked as a representative for any of Complainant’s resorts.

Other emails sent to a Complainant’s customer on May 15 and 16, 2019, from such email address, show how Respondent is fraudulently obtaining sensitive information from said Complainant’s customer, such as his bank account information. In this case the fraudulent email is supposedly being sent by an individual that purports to be a Rentals Manager for Grand Solmar Land’s End, one of Complainant’s resorts. The name of such individual does not correspond to any individual that works or has ever worked as a representative for any of Complainant’s resorts. Such email reproduces Complainant’s SOLMAR and design trademark.

Another email sent to a Complainant’s customer on May 30, 2019, from such email address, was an intent to fraudulently obtain personal information and payments from him. Such email reproduces Complainant’s GRAND SOLMAR LAND’S END and design trademark.

Respondent’s actions, specially the unauthorized use of Complainant’s Trademarks and logos to divert and defraud customers from Complainant, do not in any way support a finding that Respondent is making a bona fide offering of goods or services nor a fair use of Complainant’s Trademarks. Respondent has used Complainant’s Trademarks to perpetrate a fraud or phishing scheme by sending emails claiming to be from Complainant and which include false directions, offers or requests to lure unsuspecting members and owners to transfer funds or make payments in favor of Respondent or to obtain sensible information from such costumers. That is clearly a fraudulent use of the Trademarks.

Respondent clearly knew about Complainant’s services and operations and the Trademarks before and while conducting the phishing scheme since Respondent’s emails fraudulently refer to Complainant’s resorts and hotels, they reproduce some of Complainant’s Trademarks and are addressed to contact actual customers of Complainant’s properties.

The disputed domain name should be considered as having been used and registered in bad faith by Respondent.

Complainant has marketed and sold its services using the Trademarks well before Respondent’s registration of the disputed domain name in 2018. Performing searches across a number of Internet search engines for “grandsolmar” return multiple links referencing Complainant and its businesses.

Respondent has demonstrated a knowledge of and familiarity with Complainant’s Trademarks and business. Respondent has used the disputed domain name in a phishing attack which involved sending fake proposals to Complainant’s customers via email, from the email address “[…]@grand-solmar.com” and inserting a reproduction of Complainant’s SOLMAR and design and GRAND SOLMAR LAND’S END and design trademarks, which render the appearance of being sent by Complainant. In light of such facts, it is not possible to consider that Respondent would have been unaware of Complainant’s brands at the time the disputed domain name was registered.

By creating such likelihood of confusion between Complainant’s Trademarks and the disputed domain name, leading to misperceptions as to the source, affiliation, or endorsement of the disputed domain name, Respondent has demonstrated a vicious intent to capitalize on the goodwill of Complainant’s Trademarks for Respondent’s own direct or indirect profit. Respondent’s use of the disputed domain name in a phishing scheme also demonstrates that Respondent not only knew of Complainant, its business and the Trademarks, and that it targeted them at the time of registering the disputed domain name, but also attempted to pass itself off as Complainant.

A WhoIs search of the disputed domain name showed that Respondent was using a privacy shield or proxy, not revealing the name of the corresponding registrant. In this case, the use of a privacy shield or proxy service along with the phishing scheme activities conducted by Respondent, should establish an indication of bad faith.

The disputed domain name is being used to send emails purportedly from Complainant with a view to fraudulently eliciting information and payments from customers. Therefore, Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of Complainant.

Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

As regards who is the proper Respondent in this case, pursuant to paragraph 1 of the Rules “Respondent means the holder of a domain-name registration against which a complaint is initiated”. The Complaint filed with the Center named Domains By Proxy LLC as Respondent. At the Center’s request, the Registrar sent its registrar verification on August 8, 2019, disclosing Martha Becerra as the registrant of the disputed domain name, and thus on that same date Complainant filed an amendment to the Complaint adding Martha Becerra as Respondent. Since the real underlying registrant has been promptly disclosed, this Panel decides to have Martha Becerra as the proper Respondent and thus further references to Respondent herein shall be understood to Martha Becerra.²

The lack of Response from Respondent does not automatically result in a favorable decision for Complainant (see Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, and section 4.3 of the WIPO Overview 3.0. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is undisputed that Complainant has rights over the Trademarks.

Since the addition of a generic Top-Level Domain (“gTLD”) suffix after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a trademark. Further, it is also well explored that a domain name can only consist of an alphanumeric string, and cannot incorporate figurative or device elements of a mark (see Park Place Entertainment Corporation v. Mike Gorman, WIPO Case No. D2000-0699; and Espire Infolabs Pvt. Ltd. v. TW Telecom, WIPO Case No. D2010-1092).

The disputed domain name entirely incorporates the terms “grand” and “solmar” (albeit with an hyphen in-between), which are the distinctive nominative terms of the Trademarks. It is clear to this Panel that the Trademarks are recognizable in the disputed domain name, rendering the disputed domain name confusingly similar to the Trademarks.

Thus this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant contends that Respondent does not have trademark rights in the disputed domain name, that it has no relationship with Respondent, and that it has not authorized Respondent to use the Trademarks.

Complainant asserts that Respondent is using the disputed domain name as an email address for sending emails to Complainant’s customers. The evidence in the file shows that such email communications reproduce some of Complainant’s Trademarks and convey the impression that the sender is associated with Complainant. This Panel considers that Respondent is using the disputed domain name to impersonate Complainant in order to deceive Complainant’s customers. Such use demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.³

This Panel considers that Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name (see section 2.1 of the WIPO Overview 3.0). In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name by Respondent.

Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

The evidence in the file leads this Panel to infer that Respondent’s choice of the disputed domain name was deliberate with the intention of deceiving Complainant’s customers. It is clear to this Panel that Respondent should have been aware of the existence of Complainant and the Trademarks at the time it obtained the registration of the disputed domain name.

The fact that the disputed domain name incorporates the essential nominative terms of the Trademarks, coupled with the fact that Respondent’s email communications from the disputed domain name reproduce some of Complainant’s Trademarks and that such email communications were sent to Complainant’s customers, lead this Panel to conclude that Respondent registered and used the disputed domain name in bad faith. Further, the fact that Respondent has hidden its name and contact details is also indicative, in this case, of Respondent’s bad faith.

Although there is no evidence that an active website is associated to the disputed domain name, this Panel considers that Respondent’s use of the disputed domain name might well be characterized as phishing, that is, the deceitful obtention of sensitive information or of a payment, by trying to impersonate another by using a domain name confusingly similar to that other’s trademark.⁴

In this Panel’s view, the lack of response is also indicative that Respondent lacks arguments and evidence to support its holding of the disputed domain name.

In light of all the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <grand-solmar.com> be transferred to Complainant.

Gerardo Saavedra
Sole Panelist
Date: September 20, 2019

The original Complaint was filed against Domains By Proxy, LLC. The amendment to the Complaint named Martha Becerra as additional Respondent, as per the information disclosed by the Registrar.