Our cybersquatting attorneys represent one of the largest premium resort chains in South America and have been in litigation on cybersquatting claims under the Anticybersquatting Consumer Protection Act against a travel agency which registered over 20 domain names which include our client’s trademarked names. That ACPA litigation (BD Real Hoteles, S.A. de C.V. v. VacationTours, Inc., Media Insight Group, Inc., et. al.) has been pending in Miami Florida since January 14, 2008. Our attorneys were able to secure a large block of those domain names under the Uniform Domain Name Dispute Resolution Policy (UDRP) from the travel agency in favor of our resort hotel client in a fairly unusual case.
Because the travel agency had been authorized to book vacations at our client’s hotels, the vacation tour company took the position that they were entitled to register the domain names under a general marketing agreement. On several of the domain names, they simply cut and paste our client’s contact from their website. They used words such as “rresorts” and “rservice” suggesting that they were in fact the same entity as hotel resort chain. They engaged in classic behavior in violation of the Anticybersquatting Consumer Protection Act.
These matters are typically not right before the UDRP because of the complexity of issues. In this particular matter, the case was already pending in federal court in Miami Florida which typically makes a UDRP proceeding moot. In an interesting twist, the federal judge in Miami, Florida ordered the matter to UDRP arbitration in order to get an expert arbitrator’s review of the cybersquatting issue under the UDRP. While the ACPA is broader than the UDRP, the UDRP overlaps almost perfectly with the ACPA on the substantive cybersquatting issues. Stated another way, a violation of the UDRP strongly supports same findings under the ACPA.
If you are a hotel or resort chain which has relationships with a variety of travel agencies and tour companies, you need to be proactive in protecting your domain names in cyberspace. While in our client’s instance, the travel agency was fully aware of the trademark violations they were engaging in, many travel agencies simply don’t understand the law well enough to steer clear of domain disputes as a result of registering variations of their client’s hotel names.
Problems can quickly occur when prospective hotel guests get pricings from travel agents different from the hotels, or receive customer service from the travel agency which they believe is being provided on behalf of the hotel and resort company. This can result in serious customer problems including a loss of goodwill for the resorts.