In the recent decision of Occidental Hoteles Management, S.L. v. Media Insights a/k/a Media Insight (Nat. Arb. Forum, 1239395, March 2, 2009), a single member panel was faced with a dispute over 20 different domains. The domains in dispute are listed below:
www.occidentalallegro.com
www.occidentalallegrocozumel.com
www.occidentalallegroplayacar.com
www.occidentalallegropuertoplata.com
www.occidentalgrandcozumel.com
www.occidentalgrandflamenco.com
www.occidentalgrandpuntacana.com
www.occidentalgrandxcaret.com
www.occidentalroyalhideaway.com
www.occidentalgrandcancunresort.com
www.occidentalgrandpapagayo.com
www.occidentalgrandpuertoplata.com
www.occidentalgrandarubaresort.com
www.allegrojacktarpuertoplata.com
www.allegroplayacar.com
www.allegropapagayoresorts.com
www.grandcozumelresort.com
www.grandarubaresort.com
www.grandxcaretresorts.com
www.royalhideawayrivieramaya.com
As the Panel explained the facts the following appears to be clear: (1) Occidental Hotels and Resorts is associated with at least 46 hotels in Europe, Africa, the Caribbean and the Americas, using the mark OCCIDENTAL since at least 1985. Complainant operates a web site locate at www.occidentalhotels.com. The disputed domains were registered by Respondent between November 2001 and April 2008. Respondent claimed to be a wholesale tour operator which provided travel packages, including hotel accommodations. Respondent claims that Complainant not only knew about the web sites for a long period of time, but also encouraged their operation by providing materials to be included on them.
The Panel reviewed the three elements of the Policy under paragraph 4(a), namely:(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.
In addressing the first element, whether the domain names are identical or confusingly similar to Complainant’s mark, the Panel noted that seven (7) of the domains were similar in any manner to the mark. They included www.allegrojacktarpuertoplata.com, www.allegroplayacar.com, www.allegropapagayoresorts.com, www.grandcozumelresort.com, www.grandarubaresort.com,
www.grandxcaretresorts.com, and www.royalhideawayrivieramaya.com. The Panel found Complainant failed to prove those domains were identical or confusingly similar. The Panel then oddly made the following statement: “With regard to the remaining domain names, the Panel declines to enter a finding as to identicality or confusing similarity.” Based upon the other factors it appears to have not mattered, but this was an odd lack of review on the part of a Panel.
The Panel then addressed the second prong, whether Respondent had any rights or legitimate interests in the domain. The Panel explains that Complainant had a contractual relationship with Respondent’s “Parent Company” (which the Panel explains as a related entity). The Panel found that the web sites were promoting Complainant, with commissions or other payments being made to Complainant. Although Complainant may not have authorized Respondent directly, the Panel found that Complainant was long aware of these domains.
The Panel declined to address the bad faith prong based upon its findings in the first two elements, and ruled that Complainant’s request be DENIED.
DefendMyDomain Commentary: This is another example of why a reseller of goods or services can use a similar domain provided that the reseller adequately discloses the nature of his or her goods or services on the subject website.
