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Generic Top Level Domain Name (gTLD) Decisions |
NATIONAL ARBITRATION FORUM
DECISION
Maya Tours v.
Eastwind Group
Claim Number: FA0411000358059
Complainant is Maya Tours
(“Complainant”), 3412 Leigh Road, Pompano Beach, FL 33062. Respondent is Eastwind Group
(“Respondent”), represented by Ari Goldberger of ESQwire.com Law Firm,
35 Cameo Drive, Cherry Hill, NJ 08003.
The domain name at issue is <mayatours.com>,
registered with Signature Domains.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
Proceeding.
Mark
McCormick, Panelist
PROCEDURAL
HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum electronically on October 31, 2004; the National
Arbitration Forum
received a hard copy of the Complaint on November 5, 2004.
On November 2, 2004, Signature Domains
confirmed by e-mail to the National Arbitration Forum that the domain name <mayatours.com>
is registered with Signature Domains and that the Respondent is the current
registrant of the name. Signature
Domains has verified that Respondent is bound by the Signature Domains
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 November 10, 2004, a Notification of
Complaint and Commencement of Administrative Proceedings (the “Commencement
Notification”),
setting a deadline of November 30, 2004 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@mayatours.com
by e-mail.
Respondent did not file a Response to the
Complaint.
On December 2, 2004, the National
Arbitration Forum received a second submission from Complainant. This submission was received without the
required fee and Complainant indicated that it considered the submission to be
a revised
Complaint. Therefore, this
submission is not in compliance with Supplemental Rule #7 and thus not
considered.
On December 7, 2004, a timely Additional
Submission was received by the National Arbitration Forum from Respondent
On December 13, 2004, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the
Forum appointed
Mark McCormick as Panelist.
Complainant requests that the domain name
be transferred from Respondent to Complainant.
Maya
Tours has been Complainant’s corporate name since 1991, and Complainant has had
the U.S. trademark for MAYA TOURS since 1998.
Complainant asserts that Respondent has no right to use the domain
because “Maya Tours” is the corporate name of Maya Tours, which
holds the U.S.
trademark for MAYA TOURS. Respondent
has the domain linked to a generic travel site, and clients of Complainant who
use the domain name are confused by finding
they end up at Respondent’s generic
travel site and conclude that Maya Tours has gone out of business and no longer
has a website. They become confused
because of the near identity between Complainant’s domain, <mayatour.com>,
and Respondent’s domain, <mayatours.com>. Respondent has never been known by the name
and is not making a legitimate non-commercial or fair use of the domain name
except for
their current link to their generic travel site. They have not responded to Complainant’s
efforts to communicate about the situation and to attempt to negotiate a
purchase of the
domain name registration from Respondent. Complainant in its initial filing contended
it did not know whether Respondent had acted in bad faith. Complainant did assert that its clients used
<mayatours.com> erroneously and were linked through it to
Respondent’s generic travel site, leading the clients to believe that
Complainant has gone
out of business or no longer has a website. This damages Complainant’s business.
Respondent
did not make an initial filing.
Instead, Respondent filed an additional written statement as permitted
by Supplemental Rule 7. The additional
written statement was timely. In its
statement, Respondent sought denial of the Complaint on the ground that there
was no allegation in the Complaint that the disputed
domain was registered in
bad faith and also defended on the ground that the domain was not registered in
bad faith. Respondent contended that it
used the domain because it was available and because Respondent intended to use
it for a website to promote
tours of Maya ruins in South America. Respondent did not register the domain with
the intent to sell it to anyone or to disrupt Complainant’s business or to
prevent Complainant
from reflecting its mark in a domain name or to confuse
people looking for Complainant’s website.
Respondent contended that the term “Maya” is a common term in the
language of people who were indigenous to Mexico.
Complainant
made an Additional Submission on December 2, 2004, which it characterized as a
revised Complaint. This submission was
not in compliance with supplemental Rule 7 which states that additional
submissions “may not amend the original
Complaint or Response.” In the revised Complaint, Complainant
contended that Respondent acted in bad faith, attributing this to the confusion
and disruption
of its business caused by the confusion between the
domains. Complainant asserted that
Respondent continued using the domain name for commercial gain after being
alerted it was using Complainant’s
registered service mark, and that Respondent
had ignored Complainant’s attempt to communicate offers to purchase the domain
name,
but did not otherwise know Respondent’s purpose.
The
Panel’s findings would be the same whether the amended complaint is considered
or not. The Panel believes that the
failure to prove a bad faith use of the domain name by Respondent is fatal to
Complainant’s claim. See Creative
Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002)
(finding that because Complainant must prove all three elements under the
Policy, Complainant’s
failure to prove one of the elements makes further
inquiry into the remaining element unnecessary). Even in its revised Complaint, Complainant has not offered any
proof of Respondent’s bad faith.
Respondent’s failure to respond to Complainant’s attempts to communicate
and its continued use of the domain to link to a generic
travel site do not
establish bad faith. Respondent has put
the domain name to a legitimate commercial use in attempting to attract clients
who desire to take tours to Maya
sites to use Respondent’s generic travel
site. Respondent had no obligation to
respond to Complainant’s efforts to purchase the domain name. Complainant acknowledges that it does not
know whether Respondent registered the domain name in order to prevent
Complainant from
reflecting its trademark or service mark from reflecting the
mark in a corresponding domain name.
Respondent has no objection to Complainant’s use of its mark. Complainant acknowledges it does not know
whether Respondent registered its domain name primarily for the purpose of
disrupting Complainant’s
business. No
evidence exists that this was Respondent’s intention. Finally, the mere fact that the similarity of domain names has
caused disruption of Complainant’s business through confusion among
clients
does not establish Respondent’s bad faith.
See Chestnutt v. Tumminelli,
D2000-1758 (WIPO Feb. 2, 2001) (finding no bad faith registration or use of the
domain name <racegirl.com> where no evidence
was presented that
Respondent intended to divert business from Complainant or for any other
purpose prohibited by UDRP Rules); see also Loris Azzaro BV, SARL v. Asterix & De Vasconcellos, D2000-0608
(WIPO Sept. 4, 2000) (“Mere belief and indignation by Complainant that
Respondents have registered and are using the
Domain Name in bad faith are
insufficient to warrant the making of such a finding in the absence of
conclusive evidence”).
It
seems clear that the term “Maya” is a common, well-known term descriptive of
people who were indigenous to Mexico, and who are
identified with ruins which
are popular tourist sites in Central and South America. It appears there are several travel agencies
which provide professional tours of these sites. Respondent’s use of its domain name to attract consumers to its
generic website has not been shown to have been motivated by bad faith. See Canned Foods Inc. v. Ult. Search Inc.,
FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (holding that where the domain name is
a generic term, it is difficult to conclude that
there was a deliberate attempt
to confuse on behalf of Respondent, and stating that “[i]t is precisely because
generic words are
incapable of distinguishing one provider from another that
trademark protection is denied them”); see also Trump v. olegevtushenko,
FA 101509 (Nat. Arb. Forum Dec. 11, 2001) (finding that <porntrumps.com>
does not infringe on Complainant’s famous mark TRUMP,
since Complainant does
not have the exclusive right to use every form of the word “trump”)
Paragraph
15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the
“Rules”) 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.
There
is simply no proof that Respondent registered and acquired its domain name in
bad faith. No evidence shows Respondent
did so solely for the purpose of profiting from Complainant’s trademark
rights. No evidence has been proffered
to show that Respondent adopted the domain name with the specific intention to
confuse clients seeking
Complainant’s services or to disrupt Complainant’s business. Respondent has articulated a credible
legitimate interest in use of its domain name which supports its denial of bad
faith.
Because
Complainant has failed to establish at least the third of the three elements
required under the ICANN Policy, the Panel concludes
that relief shall be DENIED.
Mark McCormick, Panelist
Dated: December 27, 2004
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URL: http://www.worldlii.org/int/other/GENDND/2004/1523.html