A UDRP panel just awarded several domains to the trademark holder while denying the transfer of others.
The only difference to the panel is what the domain owner was doing with the domains.
The domain holder got to keep those domains that had “developed websites” on them but but the panel ordered all the parked domains transferred to the trademark holder
The Complainant is Blue Diamond Hotels and Resorts Inc and the domain holder is Media Insight of Miami Beach, Florida otherwise known as Vacation Store.
The domains at issue were:
The disputed domain names fall into two broad categories: those which resolve to an active website and those which resolve to a “parking” page. For reasons which will become apparent, the Panel will deal with the two categories separately.
The disputed domain names which resolve to an active website are:
(collectively, the “active” disputed domain names).
The disputed domain names which resolve to a “parking” page are:
(collectively the “parked” disputed domain names).
C. The disputed domain names which resolve to an “active” website
Each of the active disputed domain names resolves to a website which promotes and offers for sale accommodation and other services at the Complainant’s relevant hotel.
The Respondent points out that each of these websites actually offers and sells bookings at the Complainant’s relevant hotel.
The Respondent says its parent company, Vacation Store, has been registering domain names related to the hotels it promotes through its packages since the mid-1990s.
According to the Respondent, the volume of business Vacation Store is able to direct to hotels and other travel related businesses is such that the hotels etc. are willing to offer it very preferential rates.
In the course of this practice, in 1999 Vacation Store registered
According to the Respondent, in 2012 it was advised by Ms. Valenzuela of the impending sale of the Grand Paradise hotel to the Complainant.
According to the Respondent, Ms. Valenzuela and others at the Complainant proposed that Vacation Store should register new domains to reflect the change in ownership and name. This appears also to have occurred in respect of the other hotels to which the active disputed domain names relate.
At all events, the Respondent claims it specifically informed the Complainant of the disputed domain names or that the Complainant’s officers were well aware of them and from time to time submitted media kits for use on the websites or requested other changes to the content of the websites.
After the Complainant sent its first cease and desist letter, it also stopped allowing Vacation Store to make bookings at its hotels. Vacation Store, however, made arrangements to continue buying accommodation and packages through another wholesaler. As a result, it is able to continue to offer bookings at the Complainant’s hotel from the relevant website.
While the precise details in respect of each active disputed domain name are not clear, the Panel notes that one or other of the emails submitted by the Respondent evidencing communications between officers of Vacation Store and Ms. Valenzuela refer to at least eight of the active disputed domain names.
In its Supplemental Filing, the Complainant contends that at least one of the emails, which refers specifically to four of the disputed domain names, has been doctored from the original email as sent and received by the insertion of the disputed domain names. This allegation was supported by production of a print out of an email that was said to be the original “undoctored” email supported by a declaration made by Ms. Valenzuela and another officer of the Complainant, Mr. Vega. The Complainant also denied that Ms. Valenzuela had any authority to bind or act on behalf of the Complainant.
In its Supplemental Filing in response to the Complainant’s Supplemental Filing, the Respondent submitted an affidavit from Mr. Blanco who the Respondent claims is an independent IT expert. In his affidavit, Mr. Blanco deposes that he has examined the emails in question (i.e., the emails as in possession of Vacation Store) and considers that they are the originals and not altered.
The affidavit provided by Mr. Blanco, admittedly provided in a very short time, is in some respects not very detailed. For example, it does not set out in any detail his qualifications or experience. Nor does it disclose whether he has any pre-existing relationship with the Respondent or Vacation Store. The Panel is not in a position, however, simply to reject his evidence on technical grounds or as inherently improbable. It provides some, on the face of it, independent corroboration of the Respondent’s claims.
The declarations of Ms. Valenzuela and Mr. Vega, the Complainant’s commercial director to whom she apparently provided a copy, are opposed to the affidavits of Ms. Rosanna Metz-Mendez, who is the president of Vacation Store, and Mr. Alvarez, who is a vice-president of Vacation Store and president of the Respondent.
The documents provided by Mr. Vega and Mr. Alvarez do not really add anything probative to what is said by, respectively, Ms. Valenzuela and Ms. Metz-Mendez.
The emails in question are in Spanish and translations have not been provided by either party. It is plain from the emails (apart from the wording alleged to have been added by the doctoring), however, that what is being discussed is the content of materials to go on a website or websites being operated by the Respondent relating to the Complainant’s hotels. It seems unlikely that Ms. Valenzuela would have been discussing content on a website or websites and providing material for those websites in this manner without reviewing the website or websites in question. Ms. Valenzuela’s declaration does not address this point. The Complainant does not suggest it was dealing with the Respondent or Vacation Store in relation to other, authorized websites.
To the contrary, in its Complaint, the Complainant presented Vacation Store and the Respondent as people with whom it had not had any dealings before other than the provision of an (unaccepted) offer to enter into a contract.
The allegation that the email in question has been doctored is plainly a very serious matter. In the circumstances, the Panel is unable to accept the Complainant’s allegation that the email has been doctored by the Respondent. The Panel is not able to make a final determination one way or the other on this point given the limitations of these proceedings. There was on the record in this case, however, a course of dealing between Ms. Valenzuela and Vacation Store in relation to the contents of an active website or websites. Although the Complainant contends Ms. Valenzuela was not authorized to bind it in relation to these matters, the emails she sent, even in the “undoctored” form the Complainant relies on, identify her as the “Contract & Rates Manager, Inventory Control” at Blue Diamond Hotels and Resorts Inc.
The significance of this for present purposes is that the Complainant cannot succeed in establishing that the Respondent registered the active disputed domain names in bad faith as, on the record in this case, it appears that the Respondent (as agent for Vacation Store) believed it was registering them with the knowledge and concurrence of the Complainant.
This finding makes it strictly unnecessary to consider whether the nature and content of the Respondent’s websites qualifies as a bona fide offering of goods or services for the purposes of the second limb or use in bad faith for the purposes of the third limb.
This is because under the Policy the requirements under the third limb of registration in bad faith and use in bad faith must be satisfied conjunctively.
The way a domain name is used may enable inferences to be drawn about the purpose of registration, but the Panel must be satisfied the registration was in bad faith as well as the use being in bad faith: see Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470, InnoGames GmbH v. Buydomains.com, Inventory Management, WIPO Case No. D2011-0085 and the cases there discussed.
D. The disputed domain names which resolve to a “parking” page – rights or legitimate interests
It is not clear from the Response whether the Respondent claims it was authorized to register and use these disputed domain names also. If it does, the materials it submitted do not appear to refer to them specifically. Moreover, if it (or Vacation Store) was encouraged to register them, it does not explain on what basis or why they do not resolve to active websites.
Instead, shortly before the Complaint was filed, the parked disputed domain names resolved to a “parking” page which included click-through advertising links to hotels and resorts which competed with the Complainant’s business.
The Respondent says it did not authorize this; it was something done by the Registrar.
The preponderance of views under the Policy, however, is that a respondent will normally be held responsible for content appearing on a website which its domain name resolves to even if it does not exercise direct control over that content: WIPO Overview 2.0 paragraphs 2.6 and 3.8. The Respondent has not provided any evidence of the steps, if any, it took to try to have the links removed. The absence of such evidence is all the more compelling as the “parking” pages in question do not have such links at the time this decision is being prepared.
The use of the parked disputed domain names to generate click through revenues from advertising by competitors to the Complainant does not qualify as a bona fide offering of goods or services under the Policy.
Accordingly, paragraph 4(c)(i) is not available to the Respondent. The other sub-paragraphs of paragraph 4(c) also do not apply. In these circumstances, the Respondent has failed to displace the Complainant’s prima facie case of lack of rights or legitimate interests in the parked disputed domain names. The Complainant, therefore, has established the second requirement under the Policy in respect of the parked disputed domain names.
E. The disputed domain names which resolve to a “parking” page – bad faith registration and use
As discussed in section 5D above, the way in which the Respondent has used the parked disputed domain names constitutes use in bad faith under the Policy. The parked disputed domain names have been used to generate revenues from click through advertising; that is, to take advantage of the trademark significance of the parked disputed domain names.
Similarly, as explained in section 5D above, the justification advanced by the Respondent for registration of the active disputed domain names does not apply to the parked disputed domain names.
In the absence of that justification and having regard to the way they have been used, the Panel finds that the parked disputed domain names were registered in bad faith.
Accordingly, the Complainant has also established the third requirement under the Policy in respect of the parked disputed domain names.
For the foregoing reasons
(a) in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names
(b) the Complaint is otherwise denied.