Domain name – Domain name dispute resolution policy – Trademark – Identical – Confusingly similar – Bad faith registration – Bad faith use – Legitimate interest – Sandals – Respondent sells Complainant's services. 

Complainant Gorstew was registrant of the trademark "sandal" for use travel and hotel services. Complainant Gorstew permitted trademark to be used with chain of hotels using the name Sandals Resorts. Complainant Unique provides marketing and reservation services for Sandals Resorts. Respondent, a travel agent selling Sandals Resorts vacation packages, registered the domain name sandalsvacation.com in 1999.

Held, Name Transferred to Complainant

Respondent’s failure to dispute allegations of Complainant permits the inference that Complainant’s allegations are true. Respondent’s failure to respond also leads to the inference that Respondent knows that its website is misleading and intentionally diverting business from Complainant.

Respondent’s mark is confusingly similar to Complainant’s mark. The domain name in question incorporates Complainant’s sandals marks. By infringing upon Complainant’s marks, Respondent is attempting to create confusion as to the source of Complainant’s sponsorship, affiliation, and/or endorsement.

Respondent has no rights or legitimate interest in the domain name. The name does not reflect a name by which Respondent is commonly known. 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. Respondent seeks to profit from its registration of the domain name by offering competing services and trading upon the image associated with the sandals name.

Respondent registered and used the domain name in bad faith. Respondent registered the domain name to intentionally attract Internet users to its website for commercial gain. Based on Respondent’s experience in the travel business, Respondent knew that confusion between the two companies would result. Internet users clicking on Respondent’s site cannot know that they are not on the official Sandals site.  And were  Respondent’s website inactive, the consumer might conclude that the various Sandals Resorts do not have an Internet presence.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Cases referred to

Hewlett-Packard Company v. Full System, FA 94637 (National Arbitration Forum, 22 May 2000)

Marriott Int’l, Inc. v. Café au lait, FA 93670 (National Arbitration Forum, 13 March 2000)

Cunard Line Ltd. v. Champion Travel, Inc., FA 92053 (National Arbitration Forum, 7 March 2000)

Travel Services, Inc. v. Tour Coop of Puerto Rico, FA 92524 (National Arbitration Forum, 29 February 2000)
 

Carmody, Panelist: -

Gorstew Limited, Jamaica, and Unique Vacations, Miami, FL, USA
COMPLAINANT,

vs.

Tropical Treasures, San Diego, CA, USA
RESPONDENT.

DECISION
Claim Number: FA0005000094934

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

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

PANELIST(s) 

Hon. James A. Carmody, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The
Forum") electronically on May 31, 2000; The Forum received a hard copy of the
Complaint on May 31, 2000. 

On June 5, 2000, NSI confirmed by e-mail to The Forum that the domain name
“SANDALSVACATION.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 5.0 and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN’s UDRP.

On June 6, 2000, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting a deadline
of June 26, 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 26, 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 June 27, 2000, pursuant to Complainant’s request to have the dispute decided
by a Single Member panel, The Forum appointed the Hon. James A. Carmody, 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 Unique.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the Respondent has registered a domain name that
is confusingly similar to its trademark registered for and in use by the Complainant. 
Further, the Complainant contends that the Respondent has no rights or legitimate
interests to the domain name, and that the respondent has registered and is using
the domain name in bad faith. 

B.     Respondent

The Respondent submitted no response in this matter and, accordingly, all
reasonable inferences of fact in the allegations of the Complaint will be accepted as
true.

FINDINGS

The Complainant (Gorstew) is the owner of the trademark SANDALS (registered
September 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 (registered April 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 Inn, Sandals Antigua, Sandals
Montego Bay, etc.) that is advertised throughout the world.

Complainant Unique is a Florida corporation which 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 sites authorized by the Complainant.

The Respondent registered the domain name “SANDALSVACATION.COM” on
or about April 12, 1998.  The Respondent is a travel agent which sells Sandals
Resort vacation packages.

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.  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 Marriott Int’l, Inc. v. Café au lait, FA 93670 (Nat. Arb.
Forum March 13, 2000) (holding that the Respondent’s domain name
<Marriott-Hotel.com> was confusingly similar to Marriott’s marks and domain
name <Marriott.com>).  The Respondent’s business is not synonymous with the
Complainant’s services; however, the Respondent would like the public to believe
that the two companies are affiliated. 

Rights or Legitimate Interests

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

The name does not reflect a name by which the Respondent is commonly known. 
Policy  4(c)(ii).  Rather, the Respondent is using a portion of the Complainant’s
registered and well-known 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 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. 

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).  Based on
the Respondent’s experience in the travel business, the Respondent knew that
confusion between the two companies would result.  When Internet users click on
the Respondent’s site, they cannot know that they are not on the official “Sandals”
website.  Were the Respondent’s website inactive, the consumer might conclude
that the various Sandals Resorts do not have an Internet presence.  In either
situation, the Complainant would lose customers, and business would be disrupted
as a result of the Respondent’s infringing website. Policy  4(b)(iii).  See Travel
Services, Inc. v. Tour Coop of Puerto Rico, FA 92524 (Nat. Arb. Forum Feb
29, 2000). 

Based on the preceding argument, the panel finds that the Respondent registered
and used the domain name in bad faith. 

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,
“SANDALSVACATION.COM” be transferred from the Respondent to
Complainant Unique.

James A. Carmody, Judge (Ret.)
Dated: July 3, 2000