Domain name – Domain name dispute resolution policy – Trademark – Identical – Confusingly similar – Legitimate rights – Bad faith – Recognition.

Complainant (Gorstew) is the owner of the trademark SANDALS in connection with hotel reservations, tours, and transportation.  Complainant (Gorstew) permitted Complainant (Unique) to use the trademark.  Complainant (Unique) owns the domain names, sandalsresorts.com and sandals.com in connection with Sandals resorts.  Respondent registered the domain name, supersandals.com.  Respondent sells Sandals Resort vacation packages.

Held, Name Transferred to Complainants.

The domain name is identical and confusingly similar to Complainants’ mark.  Respondent attempted to create confusion as to Complainants’ affiliation by incorporating Complainants’ SANDALS marks and the generic term, “super” in its domain name. 

Respondent is not commonly known by the name.  Also, Respondent is not using the name in connection with a bona fide offering of goods or services.  Respondent instead is offering competing services in order to make a profit.  Thus, Respondent has no legitimate rights in the name.

Respondent knew that confusion was likely to result, and that Complainants’ would lose business as a result.  Respondent intentionally registered the domain name to attract users to its site for commercial gain, and to disrupt Complainants’ business.  Therefore, Respondent registered and used the name in bad faith.

Policies referred to

Uniform Domain Name Dispute Resolution Policy

Panel decisions referred to

America Online v. iDomainNames.com, FA93766 (Nat. Arb. Forum).

Cunard Line Ltd. v. Champion Travel, Inc., FA92053 (Nat. Arb. Forum Mar. 7, 2000).

Hewlett-Packard Company v. Full System, FA94637 (Nat. Arb. Forum May 22, 2000).

Travel Services, Inc. v. Tour Coop of Puerto Rico, FA92524 (Nat. Arb. Forum Feb 29, 2000).

Johnson, Panelist: -

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain name at issue is “SUPERSANDALS.COM”, registered with Network
Solutions, Inc. (“NSI”).

PANELIST 

Honorable Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum")
electronically on 05/31/2000; The Forum received a hard copy of the Complaint on
06/01/2000. 

On 06/05/2000, NSI confirmed by e-mail to The Forum that the domain name
“SUPERSANDALS.COM” is registered with NSI and that the Respondent is the
current registrant of the name.  NSI has verified that Respondent is bound by the
Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 06/07/2000, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of 06/27/2000 by
which Respondent could file a Response to the Complaint, was transmitted to
Respondent via email, post and fax, and to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts by email. 

On  06/27/2000, having received no Response from Respondent, using the same
contact details and methods as were used for the Commencement Notification, The
Forum transmitted to the parties a Notification of Respondent Default. 

On 06/29/2000, pursuant to Complainant’s request to have the dispute decided by a
Single Member panel, The Forum appointed Honorable Carolyn Marks Johnson as
Panelist.

Having reviewed the communications records in the case file, the Administrative
Panel (the "Panel") finds that The Forum has discharged its responsibility under
Paragraph 2(a) of the Uniform Rules "to employ reasonably available means
calculated to achieve actual notice to Respondent." Therefore, the Panel may issue
its Decision based on the documents submitted and in accordance with the ICANN
Policy, ICANN Rules, The Forum’s Supplemental Rules and any rules and principles
of law that the panel deems applicable, without the benefit of any Response from the
Respondent.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent
to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant asserts that the domain name in question is confusingly similar to its
registered trademark.  The Complainant also contends that the Respondent has no
rights or legitimate interests to the site and has registered and is using the domain
name in question in bad faith.

B. Respondent

The Respondent submitted no response in this matter.

FINDINGS

The Complainant (Gorstew) is the owner of the trademark SANDALS (filed
12/18/1989; registered 09/18/1990; No. 1,614,295) for use in connection with hotel
reservation services, sightseeing tours, and motor vehicle transportation.  The
Complainant (Gorstew) also owns the trademark SANDALS (filed 02/06/1996;
registered 04/22/1997; No. 2,054,532) in connection with merchandise associated
with hotel and hospitality services (including luggage, passport cases, clothing,
umbrellas, etc.).  The Complainant (Gorstew) has permitted their trademark to be
associated with a chain of all-inclusive hotels that do business under the name
“Sandals Resorts.”  Each hotel has a separate “Sandals” name (ex: Sandals Royal
Jamaica, Sandals Negril, Sandals Montego Bay, Sandals Dunn’s River, etc.) that is
advertised throughout the world.

The Complainant (Unique) is a Florida corporation that serves as the worldwide
representative for Sandals Resorts and provides marketing and reservation services. 
In connection with its marketing services, Unique has registered the following domain
names: <sandalsresorts.com> and <sandals.com>.  These two websites are the only
authorized sites by the Complainant.

The Respondent is a travel agent that sells Sandals Resort vacation packages among
other vacations and tours.  The Respondent has registered the domain name
“SUPERSANDALS.COM”. 

DISCUSSION 

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (“Policy”)
directs that the complainant must prove each of the following three elements to
support a claim 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.

The Complainant has offered exhibits in support of its claims, whereas the
Respondent has submitted no response in the matter.  The Respondent’s failure to
dispute the allegations of the Complainant permits the inference that the
Complainant’s allegations are true.  Further, the Respondent’s failure to respond
leads one to believe that the Respondent knows that its website is misleading and
intentionally diverting business from the Complainant.  See Hewlett-Packard
Company v. Full System, FA 94637 (Nat. Arb. Forum May 22, 2000).  Applying the
Policy to the issue in this case furthers these inferences.

Identical and/or Confusingly Similar

The Respondent’s mark is confusingly similar to the Complainant’s mark.  The
domain name in question incorporates the Complainant’s SANDALS marks, adding
the generic term “super”. 

By infringing upon the Complainant’s marks, the Respondent is attempting to create
confusion as to the source of the Complainant’s sponsorship, affiliation, and/or
endorsement.  See America Online v. iDomainNames.com, FA 93766 (Nat. Arb.
Forum) (holding that the Respondent’s domain name <go2aol.com> was confusingly
similar to AOL’s marks and domain name).  The Respondent’s conduct permits the
inference that it would like the public to believe that the two companies are affiliated
even though there is no official agreement to use the Complainant’s marks. 

Rights or Legitimate Interests

The Respondent does not assert any rights or legitimate interests to the domain name
in question. 

The name does not reflect a name that the Respondent is commonly known by. 
Policy  4(c)(ii).  Rather, the Respondent is using a portion of the Complainant’s
registered mark to offer competing services.

The Panel finds that the Respondent is not using the domain name in connection with
a bona fide offering of goods and services nor is making a legitimate noncommercial
or fair use of the site.  Policy  4(c)(i), (iii). Instead, the Respondent’s conduct
evidences that it seeks to profit from its registration of said domain name by offering
competing services and trading upon the image associated with the Sandals name. 
Policy  4(c)(i), (iii).  See Cunard Line Ltd. v. Champion Travel, Inc., FA 92053
(Nat. Arb. Forum Mar. 7, 2000) (finding that the Respondent had no rights or
legitimate interests in the domain name <cunardcruise.com>).  For these reasons, the
panel finds that the Respondent has no rights or legitimate interests in the domain
name. 
 
 

Registration and Use in Bad Faith 

The Respondent does not deny that its actions were taken in bad faith.

The Respondent registered the domain name in question to intentionally attract
Internet users to its website for its commercial gain.  Policy  4(b)(iv).  The
Respondent knew that confusion between the two businesses would result and that
the Complainant would lose customers and business would be disrupted as a result of
the competing website. Policy  4(b)(iii).  See Travel Services, Inc. v. Tour Coop
of Puerto Rico, FA 92524 (Nat. Arb. Forum Feb 29, 2000) (holding that using
domain names which imitate an established tradename “misleadingly diverts
consumers as well as tarnishing the trademark or service mark of the
Complainant”).  This is evidence of registration and use of a domain name in bad
faith.  Policy  4(b)(iii). 

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is
the decision of the panelist that the requested relief be granted. 

Accordingly, for all of the foregoing reasons, it is ordered that the domain name,
“SUPERSANDALS.COM” be transferred from the Respondent to the Complainant
(Unique).