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 ICANN’s 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 Respondent’s 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 Dunn’s 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 Respondent’s 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 Complainant’s 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, Respondent’s 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 Complainant’s 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.  Respondent’s 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.  Respondent’s activities, while creating some business for the Complainant’s resort hotels, amounts to an unauthorized use that also intentionally diverts business from the Complainants.  Accordingly, use in bad faith is found. 
The Respondent’s offer to sell the domain name to the Complainants is not taken into consideration as it appears to be an afterthought and not the Respondent’s 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