and Unique Vacations, Inc., Miami, FL, USA.
v.
Regency Travel, San Diego, CA, USA
[Indexed as: Gorstew, and Unique Vacations v. Regency Travel]
[Indexed as: SANDALSJAMAICA.COM]
National Arbitration Forum
Administrative Panel Decision
Claim Number: FA0005000094921
Commenced: 30 May 2000.
Judgement: 6 July 2000.
Panel Member: P. Jay Hines
Domain name - Domain name dispute resolution policy Jamaica U.S. Trademark U.S. Service Mark - Identical - Confusingly similar - Bad faith registration - Bad faith use.
The Complainants' base the complaint upon the service mark
and trademark SANDALS, U.S. Service Mark for "SANDALS". Complainant,
Gorstew, has permitted the use of the mark in connection with a chain of
all-inclusive couples-only hotels under the business name Sandals Resorts.
Complainant (Unique) is the worldwide representative for Sandals Resorts,
providing marketing and reservation services. Complainant (Unique)
owns the domain name SANDALSRESORTS.COM and SANDALS.COM.
Respondent is a travel agency in San Diego that sells the vacation
packages of Sandals Resorts. It advertises the Sandals Resorts in
newspapers, mailings, window displays, etc.
Held, Domain name transferred.
The domain name is not identical to the mark or trade name of the
Complainants but the domain name registered by the Respondent is confusingly
similar to one or more service marks in which the Complainants have rights.
Respondent has a legitimate interest in selling vacation packages,
including those offered by the Complainants under its marks. However,
Respondent does not have a legitimate interest in offering its services
under a domain name that is confusingly similar to the marks and trade
names of the Complainants.
Respondent, by registering the domain name, has intentionally attempted
to attract, for commercial gain, Internet users to its website, by creating
a likelihood of confusion with the Complainants mark as to the source,
sponsorship, affiliation or endorsement of the website. This amounts
to bad faith registration.
Policies referred to
Rules for Uniform Domain Name Dispute Resolution Policy
Hines, Panelist: -
DOMAIN NAME TRANSFERRED
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
("The Forum") electronically on 05/30/2000; The Forum received a hard copy
of the Complaint 05/30/2000.
On 06/01/2000, NSI confirmed by e-mail to The Forum that the domain
name SANDALSJAMAICA.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 4.0 and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANNs Uniform Domain Name Dispute Resolution Policy (UDRP).
On 06/06/2000, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of 06/22/2000
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 June 22, 2000, pursuant to Complainants request to have the dispute
decided by a Single Member panel, The Forum appointed P. Jay Hines as Panelist(s).
RELIEF SOUGHT
The Complainants request that the domain name be transferred from the
Respondent to Unique Vacations, Inc.
PARTIES CONTENTIONS
A. Complainants
The Complainants base the complaint upon the service mark and trademark
SANDALS, U.S. Service Mark Registration No. 1,614,295 for the Mark SANDALS
in connection with Aarranging for site-seeing tours; and motor vehicle
transportation of passengers, and hotel reservation services, and
U.S. Trademark Registration No. 2,054,532 for the Mark SANDALS for Apen;
photograph albums, glass paper weights; mail order clothing and gift catalogs;
umbrellas; luggage tags; passport cases; luggage; leather pouches to hold
personal items and/or golf accessories; clothing, namely, visors; t-shirts;
caps; shorts; jackets; tank tops, rompers; robes, pants; shirts; sweatshirts
and sweaters. Use of the service mark is claimed since 1981 and use
of the trademark is claimed since 1991.
Complainant, Gorstew, a Jamaica Limited Company, has permitted use
of the mark in connection with a chain of all-inclusive couples-only hotels
under the business name Sandals Resorts, which it claims is the largest
chain of such hotels in the Caribbean. It appears that there are
six resort hotels in Jamaica under the names Sandals Inn, Sandals Royal
Jamaican, Sandals Montego Bay, Sandals Negril, Sandals Ocho Rios, and Sandals
Dunns River, with additional resort hotels in Antigua, St. Lucia and the
Bahamas under the names Sandals Antigua, SandalsSt. Lucia, Sandals Halcyon
and Sandals Royal Bahamian.
Complainant Unique Vacations is the worldwide representative for Sandals
Resorts, providing marketing and reservation services. Unique Vacations
owns the domain name SANDALSRESORTS.COM and SANDALS.COM. The websites
at these locations are the only official, authorized sites sponsored by
Sandals Resorts.
The Complainants contend that Sandals Resorts are advertised extensively
throughout the world and have supported the claim with evidence of numerous
awards received from travel magazines and guides, travel agencies, travel
writers, and tourism councils.
The Complainants contend that Respondents domain name is confusingly
similar to the SANDALS Mark and the authorized domain names. In this
regard, the Complainants point out that the domain name SANDALSJAMAICA.COM
incorporates the geographical location where the majority of Sandals Resorts
are located. Respondent is a travel agency. Consequently, Complainants
contend that the public is allowed to believe that the subject website
is an official home site sponsored by the owners of Sandals Resorts.
The Complainants contend that Respondent has no rights or legitimate
interest in the domain name in light of the fact that Respondent does not
do business under the name SANDALSJAMAICA.COM. Further, they claim
that the fact that Respondent sells vacation packages at the Sandals Resorts
does not give it any interest or right to the domain name absent a license
or other arrangement.
The Complainants contend that the actions of the Respondent demonstrate
bad faith and that it is a competitor intending to confuse the public and
trade upon the trademark rights of the complainants. They contend
that the Respondent is attempting to attract internet users for commercial
gain, and to disrupt the Complainants business by preventing them from
using the domain name SANDALSJAMAICA.COM. With respect to the diversion
of internet business, the Complainants contend that a key word search for
the term ASandals@ would list the Respondents website and that consumers
will then be confused as to which website is the official website of Sandals
Resorts. In addition to the potential loss of customers, whether
individuals or other travel agents, the Complainants contend that they
would have no control over a website which may contain incorrect, misleading
or inappropriate materials or information.
B. Respondent
Respondent contends that it is a travel agency in San Diego that sells
the vacation packages of Sandals Resorts. It advertises the Sandals
Resorts in newspapers, mailings, window displays, etc. Respondent
contends that it is in no way trying to create the impression that it is
the official representative of Complainants goes to or to take business
away from the Complainants. To the contrary, it contends that it
is encouraging sales for the benefit of itself and the Complainants.
Respondents indicates that it has refrained from using the domain name
SANDALSJAMAICA.COM on the web or in any email. Further, it states
that it does not intend to renew the domain name when its current registration
expires on September 30, 2000.
Finally, Respondents submission contains an offer to sell the domain
name to the Complainants.
DISCUSSION AND FINDINGS
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (Policy)
directs that the complainant must prove each of the following three elements
in order to demonstrate claims 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;
and
(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.
Identical and/or Confusingly Similar
The Panelist finds that the domain name SANDALSJAMAICA.COM is not identical
to the mark or trade name of the Complainants. The term Asandals
Jamaica is not identical to the terms Sandals or ASandals Resorts.
However, given the fact that the Complainants SANDALS mark is also the
formative component of the names of several resort hotels in the Caribbean,
including six in the country of Jamaica, many of which are comprised of
geographical designations as the second component, the Panelist finds that
the domain name registered by the Respondent is confusingly similar to
one or more service marks in which the Complainants have rights.
The Panelist notes that the Complainants have not demonstrated that
the authorized domain names SANDALS.COM and SANDALSRESORTS.COM function
as marks and, thus, they are not considered in making this finding.
Rights or Legitimate Interests
Respondent has a legitimate interest in selling vacation packages,
including those offered by the Complainants under its marks. However,
Respondent does not have a legitimate interest in offering its services
under a domain name that is confusingly similar to the marks and trade
names of the Complainants.
Respondent has offered no evidence of acquiescence on the part of the
Complainants to use of the domain name. Respondent is not commonly
known by the domain name and has not asserted a nominative or other fair
use claim. Respondents right to advertise and sell vacation packages
does not extend to the use of a mark or trade name of another as
a domain name. Thus, it cannot be said that Respondent has a legitimate
interest in respect of the domain name. This amounts to a bad faith
registration.
Bad Faith
It appears that the Complaintants marks and trade names are well known
in the travel industry. It is thus likely that Respondent knew of
the SANDALS mark and the names of several of the resort hotels composed
of the SANDALS mark and a geographic indicator. Thus, the purpose
of the domain name registration was to trade upon the SANDALS mark in attracting
customers of Caribbean vacation packages.
The Panelist does not find that the Respondent has systematically registered
the domain name in order to prevent the owner of the service mark from
reflecting the mark in a corresponding domain name. Nor has Respondent
registered the domain name primarily for the purpose of disrupting the
business of a competitor. However, Respondent, by registering the
domain name, has intentionally attempted to attract, for commercial gain,
Internet users to its website, by creating a likelihood of confusion with
the Complainants mark as to the source, sponsorship, affiliation or endorsement
of the website. This amounts to bad faith registration
Likewise, by means of the unauthorized use of the domain name that
is designed to cause confusion and trade upon the reputation of the Complainants,
the Panelist finds that the Respondent has used the domain name in bad
faith. The Complainants, by means of the creation of valuable good will
in their mark and trade names have the right to control the use of their
mark and trade names by third parties. Respondents activities, while
creating some business for the Complainants resort hotels, amounts to
an unauthorized use that also intentionally diverts business from the Complainants.
Accordingly, use in bad faith is found.
The Respondents offer to sell the domain name to the Complainants
is not taken into consideration as it appears to be an afterthought and
not the Respondents primary purpose in acquiring the domain name.
DECISION
Based upon the entire record and the above findings, I direct that
the domain name SANDALSJAMAICA.COM be transferred to Complainant Unique
Vacations,Inc.
P. Jay Hines
Dated: July 6, 2000
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