Gorstew and Unique Vacations, Inc.
v.
The Cruise Company
[Indexed as: Gorstew and Unique v. Cruise Company]
[Indexed as: supersandals.com]
National Arbitration Forum
Case No.: FA0005000094930
Commenced: 5 June 2000
Judgement: 12 July 2000
Presiding Panelist: Carolyn Marks Johnson
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 ICANNs
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
Respondents 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 Complainants 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 Forums 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 Dunns 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 Respondents
failure to
dispute the allegations of the Complainant permits the inference that
the
Complainants allegations are true. Further, the Respondents
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 Respondents mark is confusingly similar to the Complainants mark.
The
domain name in question incorporates the Complainants SANDALS marks,
adding
the generic term super.
By infringing upon the Complainants marks, the Respondent is attempting
to create
confusion as to the source of the Complainants sponsorship, affiliation,
and/or
endorsement. See America Online v. iDomainNames.com, FA 93766
(Nat. Arb.
Forum) (holding that the Respondents domain name <go2aol.com> was
confusingly
similar to AOLs marks and domain name). The Respondents 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 Complainants
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 Complainants
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 Respondents 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).
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