DECISION

The Coryn Group, Inc., and AM Resorts, LLC v. Media Insight

Claim Number: FA0310000198959

PARTIES

Complainants are The Coryn Group, Inc. and AM Resorts, LLC, Wilmington, DE (collectively, “Complainant”) represented by Thomas P. Arden, of Holland & Knight LLC, 131 South Dearborn Street, 30^th Floor, Chicago, IL 60603.  Respondent is Media Insight, Coral Gables, FL (“Respondent”) represented by James S. Robertson, of Allison & Robertson PA, 100 S.E. 2^nd Street, Suite 3350, Miami, FL 33131.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <secretscapri.com>, <secretsexcellence.com>, <sunscapepuntacana.com>, <sunscapethebeach.com>, and <royaluveroaltospa.com> registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Hon. Bruce E. Meyerson (Ret.), M. Kelly Tillery, and Hon. Ralph Yachnin (Ret.) as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 30, 2003; the Forum received a hard copy of the Complaint on October 2, 2003.

On October 3, 2003, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the Forum that the domain names <secretscapri.com>, <secretsexcellence.com>, <sunscapepuntacana.com>, <sunscapethebeach.com>, and <royaluveroaltospa.com> are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that the Respondent is the current registrant of the names.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. D/B/A Internet Names Worldwide registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On October 13, 2003, a Notification of Amended Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 3, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@secretscapri.com, postmaster@secretsexcellence.com, postmaster@sunscapepuntacana.com, postmaster@sunscapethebeach.com, and postmaster@royaluveroaltospa.com by e-mail.

Pursuant to Paragraph 5(d) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) and Forum Supplemental Rule 6, Respondent requested, with Complainant’s consent, that the Response deadline be extended by two days.  Respondent’s request was granted, and Respondent submitted a timely Response on November 5, 2003.

On November 10, 2003, Complainant submitted a timely Additional Submission pursuant to Forum Supplemental Rule 7.  On November 17, 2003, Respondent submitted a timely Additional Submission pursuant to Forum Supplemental Rule 7.

Thereafter, Complainant submitted a Motion to Strike and Respondent submitted a Response to Motion to Strike.  Although these submissions were untimely, the Panel, in the exercise of its discretion, will consider these submissions and denies the Motion to Strike. 

On November 17, 2003, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed the Hon. Bruce E. Meyerson (Ret.), M. Kelly Tillery, and Hon. Ralph Yachnin (Ret.) as Panelists.

RELIEF SOUGHT

Complainant The Coryn Group, Inc. (“Coryn” or “Complainant”) requests that the domain names be transferred from Respondent to The Coryn Group, Inc. 

PARTIES’ CONTENTIONS

A.  Complainant  (Including Additional Submissions)

Complainants contend that Respondent's domain names <secretsexcellence.com> and <secretscapri.com> not only comprise Coryn’s registered SECRETS mark, they are identical to the hotel names SECRETS EXCELLENCE and SECRETS CAPRI used by Complainant AM Resorts LLC for its hotels.  Respondent's domain names <sunscapepuntacana.com> and <sunscapethebeach.com> similarly use both the mark SUNSCAPE and the SUNSCAPE PUNTA CANA and SUNSCAPE THE BEACH hotel names.

Complainants assert that Respondent owns no trademark or service mark registration of the marks comprising the domain names and does not use them as marks for any services or products.  Respondent also does not use the domain names as corporate or trade names, and they are not names or marks otherwise commonly used to identify Respondent. 

Complainants contend that Respondent is a tour operator, which aggregates travel packages, including stays at resorts owned by Complainant AM Resorts LLC.  The web sites of Respondent, using the domain names in dispute, divert users to sites where Respondent does business: the <secretscapri.com> site displays links with icons containing logos of various resorts including resorts owned by Complainant AM Resorts LLC; the web site at <sunscapethebeach.com> also features the same display of logos and links to Respondent’s sites; the <secretsexcellence.com> and <royaluveroaltospa.com> sites contain reproductions of materials promoting these resorts, but links only to Respondent's sites; the <sunscapepuntacana.com> site also features similar promotional materials but contain links only to Respondent's sites. 

Coryn has not licensed or otherwise authorized Respondent to use its trade names or service marks.  Complainants, in fact, contacted Respondent repeatedly with requests to transfer Respondent's registrations of its domain names. 

Furthermore, Complainants contend that Respondent has developed a business plan centered on operating web sites under domain names consisting of the names of resort hotels.  In addition to the names of  hotels owned by Complainant AM Resorts LLC, Respondent has registered hotel names connected with resorts owned by Iberostar S.A.; Club Viva International, Inc.; Dorpan, S.L.; and Coral Resorts.  These marks are prominently displayed on Respondent's web sites at <secretscapri.com> and <sunscapethebeach.com> sites.  

Finally, Complainant’s contend that Respondent’s offer to sell its domain names for $125,000, a sum substantially greater than its out-of-pocket costs, is further evidence of Respondent's bad faith.

B. Respondent (Including Additional Submissions)

Respondent denies the contention that Complainants have repeatedly requested Respondent to transfer the registration of its domain names.  To the contrary, Respondent contends that Complainants have encouraged the Respondent to operate the websites throughout 2001, 2002, 2003 and 2004.  Complainants and Respondent have a contract which authorizes Respondent to use the websites, and Complainant is attempting to breach the contract through this proceeding. 

Respondent contends that Complainants “recognized” Respondent’s use of the internet web pages.  Although Respondent was responsible for the overall page structure of the websites, the photos and other promotional material were provided by the Complainants to the Respondent.

Next, Respondent contends that there is no evidence it has used the domain names in bad faith.  Respondent contends that Complainants have been aware, since 2001, of the Respondent’s use of the domain names.  Respondent contends that Complainants have provided material to Respondent to use on the web pages and that Complainants have received substantial economic benefit via the web pages.  Respondent contends that it has been authorized to use the domain names and has contracts authorizing it to use the domain names.  Furthermore, Respondent claims to have ownership interest in the domain names due to its development agreement with Royal Uvero Alto, Resorts & Spa.

Respondent further contends that Complainants cannot show that Respondent has engaged in a pattern of domain name hijacking.  Respondent contends that prior to instituting this claim, Complainants contacted Iberostar, Viva Resorts, Sol Melia, and Coral Hotels regarding Respondent’s use of the various domain names of those groups.  According to Respondent, all of the groups acknowledged that Respondent used the domain names with their consent.  All four groups refused to join in the complaint, because the four groups stated that Respondent was authorized to use the various domain names.  Indeed, Respondent contends that Complainants were aware of the agreements between Iberostar, Coral, Viva, Sol Melia and Respondent prior to the filing of the Complaint.

 

Finally, Respondent argues that its offer to settle was not evidence of bad faith.  Respondent contends that this was a settlement offer recognizing that it has expended substantial amount of time and costs directly to the development of the web pages at the request of the Complainants.  As a result of the efforts of Respondent, the websites became popular resulting in substantial income to the Complainants.  Pursuant to the contracts between the Complainants and the Respondent, Respondent was to receive commissions for the booking of the hotel rooms.  If Respondent loses its use of the websites, Respondent will have a substantial loss of commission.  That loss of income was the basis of the settlement offer. 

In summary, Respondent contends that it has not engaged any bad faith in the use of the websites.  All of the evidence establishes that by contract and/or other authorizations, Respondent has used the domain names with the consent and acknowledgement of the Complainants.  Complainants have received substantial economic remuneration as a result of Respondent’s use of the domain names, and Respondent has not diverted any of the income from Complainants to Respondent.  In fact, Respondent contends that Complainants knew that through contracts and agreements, Respondent was authorized to use the various domain names. 

FINDINGS

The record indicates the following undisputed facts:

Complainants are closely-held, family-owned, affiliated companies, which share common officers and shareholders.  Complainant The Coryn Group, Inc.[1] owns the names and marks SUNSCAPE and SECRETS and derivatives thereof, including SECRETS EXCELLENCE, SECRETS CAPRI, SUNSCAPE PUNTA CANA, and SUNSCAPE, THE BEACH.  Complainant AM Resorts LLC is engaged in the resort hotel business and uses those names and marks in connection with the resorts described in this Decision. 

The United States Patent & Trademark Office ("PTO") in September, 2003, issued a registration for the mark SUNSCAPE for hotel and restaurant services, Registration No. 2,760,264. The PTO allowed for registration of Coryn's application for the mark SECRETS in August 2003--U.S. Application Serial No. 76-077,684, stating that “the mark will register and the registration certificate will issue in due course."  Coryn also has registered the marks SECRETS and SUNSCAPE with the European Community Trademark Office (CTM Reg. Nos. 002318921, 002354728) and in Mexico (681,029, 716,145), the Dominican Republic (117,127, 133,432), Aruba (21,729, 21,688), Barbados (81/15,790, 81/15,789), and Bermuda (33,551, 33,550). 

The SECRETS EXCELLENCE resort in Punta Cana, Dominican Republic had previously been operated under the name ROYAL UVERO ALTO.  The ROYAL UVERO ALTO name still has great recognition value among the relevant customer class  and promotional materials and items bearing the ROYAL UVERO ALTO name are still distributed.[2]

The SECRETS mark is used in connection with four resorts, three of which have opened and one of which will open in November.  Of these hotels, two are called SECRETS EXCELLENCE and SECRETS CAPRI.  Similarly, the SUNSCAPE mark is used in connection with four resorts, one of which will open soon.  These hotels are called SUNSCAPE, PUNTA CANA GRAND; SUNSCAPE, THE BEACH; SUNSCAPE, CASA DEL MAR, LA ROMANA; and SUNSCAPE, TULUM, RIVIERA MAYA.

The SECRETS and SUNSCAPE marks have been in use since July, 2001.  The marks have been used on signage, paper items, and room accessories at the hotels.  The hotels  also have been promoted under the SECRETS EXCELLENCE, SECRETS CAPRI, SUNSCAPE PUNTA CANA, and SUNSCAPE THE BEACH marks in promotional materials and web sites.

DISCUSSION

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

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(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.

Identical and/or Confusingly Similar

Complainant has established rights under the Policy through registration of the SUNSCAPE and SECRETS marks with the European Community Trademark Office (CTM Reg. Nos. 002318921 and 002354728).  In addition, Complainant has registered the SUNSCAPE mark (Reg. No. 2760264) and filed for registration of its SECRETS mark (Serial No. 76-077,684 ) with the United States Patent and Trademark Office (“USPTO”).   See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which respondent operates;  it is sufficient that complainant can demonstrate a mark in some jurisdiction); see also McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy).

Complainant AM Resorts LLC also asserts rights in the ROYAL UVERO ALTO mark through its predecessor’s use and promotion of the mark and such rights are not disputed by Respondent.  Cf. Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established). 

Complainant has demonstrated that the disputed domain names, <sunscapepuntacana.com> and <sunscapethebeach.com>, contain its registered SUNSCAPE mark in its entirety and are identical to the names of its hotels.  Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name).  Furthermore, Complainant has established that the disputed names, <secretscapri.com> and <secretsexcellence.com>, contain its SECRETS mark in its entirety, and are identical to the names of its hotels.  See Porto Chico Stores, Inc. v. Otavio Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the issue under Policy ¶ 4(a)(i) is to be resolved “by comparing the trademark and the disputed domain name”).  In addition, Complainant is correct that the disputed name <royaluveroaltospa.com> merely adds the generic word “spa” to the ROYAL UVERO ALTO mark, creating a confusing similarity.  See Body Shop Int’l, PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to complainant’s THE BODY SHOP trademark).

Respondent does not contest that the disputed domain names are identical or confusingly similar to the marks in which Complainant has rights.   

Rights or Legitimate Interests

Respondent’s primary defense to the Complaint is its contention that it is authorized to use Complainant’s marks in the domain names at issue.  Specifically Respondent contends:

The evidence submitted by the Respondent clearly establishes that there was no bad faith on behalf of the Respondent, since the Respondent was authorized to use the domain names in question that are subject matter of this claim, and was also authorized to use all the domain names claimed by the Complainants to represent bad faith.

The Panel disagrees.  None of the documentation provided by Respondent supports its claim that Complainant has authorized Respondent to use Complainant’s marks in a domain name.  Although there is evidence that AM Resorts LLC paid Respondent to advertise and promote the hotels described herein, the advertising documents do not authorize Respondent to use Complainant’s marks in a website.  Furthermore, the record does not support Respondent’s contention that a representative of either Coryn or

AM Resorts LLC authorized changes in Respondent’s websites. 

Respondent lacks rights and legitimate interests in the disputed domain names for a further reason--Respondent uses the names to divert Internet users to its website that offers competing services.  Thus, Respondent is not providing a bona fide offering of goods or services, or a legitimate noncommercial or fair use, within the meaning of Policy ¶¶ 4(c)(i) & (iii).  See generally Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that respondent’s appropriation of complainant’s mark to market products that compete with complainant’s goods does not constitute a bona fide offering of goods and services); Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to complainant’s mark and that respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods);  Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide” offering of goods or services where respondent used complainant’s mark without authorization to attract Internet users to its website, which offered both complainant’s products and those of complainant’s competitors).

Furthermore, Respondent through its travel business has not been commonly known by the domain names, and thus has no rights or legitimate interests in the names pursuant to   Policy ¶ 4(c)(ii).  Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that respondent does not have rights in a domain name when respondent is not known by the mark);  Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that respondent has no rights or legitimate interests in domain names because it is not commonly known by complainant’s marks and respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Registration and Use in Bad Faith

The record supports Complainant’s contention that Respondent is using Complainant’s marks in domain names to attract Internet users to its competing sites for commercial gain.  This violates Policy ¶ 4(b)(iv).  G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because respondent was using the confusingly similar domain name to attract Internet users to its commercial website); Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where respondent directed Internet users seeking complainant’s site to its own website for commercial gain).

This case is not unlike Gorstew Limited and Unique Vacations, Inc. v. Caribbean Tours & Cruses, FA 94927 (Nat. Arb. Forum July 28, 2000).  In that case, the panel found bad faith where the respondent travel agency sold vacation packages to the complainants’ resorts and lacked authority to use the complainants’ marks in the disputed domain names.  The panel found that the respondent had engaged in bad faith because, among other things, the respondent “intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainants’ marks.”  See generally Cunard Line Ltd. v. Champion Travel, Inc., FA 92053 (Nat. Arb. Forum Mar. 8, 2000); Travel Services Inc. v. Tour Coop of Puerto Rico, FA 92524 (Nat. Arb. Forum Feb. 29, 2000). 

All defenses raised by Respondent not expressly addressed herein are denied.

DECISION

IT IS ORDERED transferring the domain names  <secretscapri.com>, <secretsexcellence.com>, <sunscapepuntacana.com>, <sunscapethebeach.com>, and <royaluveroaltospa.com> from Respondent to Complainant The Coryn Group, Inc.

Hon. Bruce E. Meyerson (Ret.), M. Kelly Tillery, and Hon. Ralph Yachnin (Ret.), Panelists
Dated: December 5, 2003

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[1] Complainants The Coryn Group, Inc. and AM Resorts, LLC, submitted this Complaint. The Coryn Group, Inc. is the owner of the names and marks relevant to this dispute and seeks to have the disputed domain names transferred to it. Complainant AM Resorts LLC is an affiliated company sharing common officers and shareholders and owns and operates the hotels that are discussed herein. Although Rule 3(a) contemplates that only one party may initiate a complaint, Respondent has not objected to AM Resorts LLC also joining as a complainant. Accordingly, we choose not to sua sponte dismiss AM Resorts LLC from this proceeding. Because the marks which form the basis of this Complaint are held by Complainant The Coryn Group, Inc., the use of the word “Complainant” hereafter in this Decision shall constitute a reference to The Coryn Group, LLC.

[2] We express no opinion on whether the use of the mark ROYAL UVERO ALTO by a predecessor entity is sufficient to give Complainant “rights” in the mark within the meaning of Policy 4(a)(i). There being no objection from Respondent, however, we hold for the purpose of this Decision that Complainant AM Resorts LLC has established sufficient rights within the meaning of the Policy.

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