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Quiroocan, S.A. DE C.V (Barcelу) v. Media Insights
Case No. D2006-0801
1. The Parties
The Complainant is Quiroocan, S.A. DE C.V (Barcelу), Mйxico, belonging to Barcelу Group, Palma de Mallorca, Spain, represented by Herrero & Asociados, Spain.
The Respondent is Media Insights, Miami Beach, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <barcelomayacolonial.com> is registered with
Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2006. On June 28, 2006, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 4, 2006. 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 July 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2006.
The Center appointed Alvaro Loureiro Oliveira as the
sole panelist in this matter on August 11, 2006. 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
Complainant is Quiroocan, S.A. DE C.V. (Barcelу), a company established in Mexico, which belongs to Barcelу Group, a Spanish hotel group with hotel business around the world.
Barcelу Group is a group of companies that operate in the tourist sector with hotel management, being one of the 30 largest hotel companies in the world, and one of the ten best regarded brands in Latin America. The history of the group goes back to the early thirties in Spain, where the business was founded by Mr. Simуn Barcelу.
Complainant provided copies (exhibits 02 and 03 of it’s Complaint) of the annual report of the Group, as well as of a list of the hotels and resorts in Latin America and Caribbean area.
One of these famous hotels is named Barcelу Maya Colonial Beach, and is seated in the Mayan Riviera, in Mexico (exhibit 04 of the Complaint consists of comprehensive information on this hotel).
The Barcelу Group holds several trademark registrations for BARCELУ, BARCELУ
HOTELS, BARCELУ HOTELS & RESORTS and other variations, granted in each country
where they own a hotel. Exhibit 05 of the Complaint lists several of these registrations.
5. Parties’ Contentions
Complainant contends that the domain name <barcelomayacolonial.com> is identical to the name of one of their prestigious hotels in Mexico, and confusingly similar with their registered trademarks BARCELУ, BARCELУ HOTELS, BARCELУ HOTELS & RESORTS, registered throughout the world in connection with hotel services and other related services, as states exhibit 05.
Complainant claims never having licensed or authorized the Respondent to use its mark or to apply it to any kind of domain name. Complainant also states that the Respondent is not making a legitimate use of the referred domain name. On the contrary, they allege that the domain name is being used to offer information on other hotels in the Caribbean Area. Exhibit 06 is a print evidencing this allegation.
In sum, Complainant shows evidence of substantial goodwill and name recognition in the expression “Barcelу”, as well as of the other marks registered or detained by the “Barcelу Group”, based on intensive use on a long term basis.
Although timely notified of the Complaint, the Respondent
did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy, in its paragraph 4 (a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:
i. The subject domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
ii. Respondent has no rights or legitimate interests in respect to the domain name; and
iii. Respondent’s domain name has been registered and is being used in bad faith.
A. Identity or confusing similarity between domain name and the Complainant’s trademark:
Regarding the first of the elements, the Panel is satisfied that the Complainant has presented adequate proof of having rights in the marks BARCELУ, BARCELУ HOTELS, BARCELУ HOTELS & RESORTS, which are registered in several countries where the BARCELУ GROUP does business and consequently used regularly in those countries. In addition, the Complainant owns a hotel resort in the Mayan Riviera, which is identified by the name and mark BARCELУ MAYA COLONIAL BEACH.
Further, the Panel finds that the subject domain name, <barcelomayacolonial.com> is indeed confusingly similar to the trademarks belonging to the Complainant, since this mark is entirely reproduced in the domain name registered by the Respondent. Besides, the domain name repeats the name and mark of the referred hotel located in the Mayan Riviera, Barcelу Maya Colonial Beach.
Hence, the Panel concludes that the first of the elements in the Policy has been satisfied by the Complainant in this dispute.
B. Respondent’s rights or legitimate interests in the domain name:
The Panel understands that the expression “Barcelу” is a distinctive term, associated with the Complainant, since it is not only registered as a mark in its name, but also is the main part of the Complainant’s trade name. In addition, it is the name of the company’s creator, Mr. Simуn Barcelу.
Further, the Complainant provided sufficient evidence of the renown of their marks in the tourist industry throughout the world. Hence, the Panel considers that the Respondent, in all likelihood, could not be unaware of the marks BARCELУ, BARCELУ HOTELS, BARCELУ HOTELS & RESORTS, as well as BARCELУ MAYA COLONIAL HOTEL and their direct relation to the Complainant. The Panel is satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights and legitimate interests in the disputed domain name. This has not been rebutted by the Respondent.
Thus, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name For this reason the Complainant has satisfied the second element of the Policy.
C. Existence of bad faith in Respondents’ registration and use of the domain name:
It is clear to the Panel that the Respondent has in all probability registered the domain name <barcelomayacolonial.com> with the purpose of taking advantage of the renown of the Complainant’s marks and particularly of the Complainant’s hotel seated in Mexico, the Barcelу Maya Colonial Hotel.
Once summoned by the letter sent by the Complainant, the Respondent did not answer.
Further, the Complainant is using the domain name to do business in the hotel field, advertising a series of hotel services in the Caribbean area, in a clear act of bad faith. It appears to be doing so far the purpose of commercial gain arising from the probable confusion of the disputed domain name with the Complainant and its marks. In fact even aware of this Complaint, the Respondent did not stop the use, as confirmed by this Panelist.
The Panel finds that for the reasons above the Respondent obtained the registration and has been using the domain name in question in bad faith.
The Panel, hence, finds present the third element.
As outlined above, the Panel concludes that the domain name <barcelomayacolonial.com> reproduces the Complainant’s registered mark “BARCELУ”, which is also the Complainant’s trade name; in addition , the domain name is virtually identical to the Complainant’s trademark BARCELУ MAYA COLONIAL HOTEL. The Pane concludes, besides, that the Respondent has no rights or legitimate interest in the domain name and that the Respondent registered and used the domain name in bad faith.
Therefore, pursuant to paragraph 4 (i) of the Policy, the Panel orders that the domain name < barcelomayacolonial.com> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Dated: August 25, 2006