27th Dec 2004
NATIONAL ARBITRATION FORUM
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.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mayatours.com>, registered with Signature Domains.
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
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 email@example.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