v.
Cottrell Travel
[Indexed as: Gorstew v. Cottrell Travel]
[Indexed as: SANDALS-VACATIONS.COM]
National Arbitration Forum
Administrative Panel Decision
Forum File No.: FA0005000094923
Commenced: 07 June 2000
Judgement: 03 July 2000
Presiding Panelist: Carmody, James A.
Domain Name - Domain name dispute resolution policy - Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use - No legitimate interest - Disrupting competitor's business Competing with competitors business Knowledge of Complainant's business.
Complainant (Gorstew) owns the trademark SANDALS for use in connection with various travel services and has permitted its trademark to be associated with a chain of all-inclusive hotels, Sandal Resorts. Complainant (Unique) serves as the worldwide representative for Sandals Resorts and provides marketing and reservation services. Complainant (Unique) has registered the only Internet sites authorized by Complainant (Gorstew), sandalsresorts.com and sandals.com.
Respondent is a retail travel agent which sells Sandals Resorts vacation packages and registered the domain name SANDALS-VACATIONS.COM. Respondent submitted no response.
Held, Name Transferred to Complainant.
Respondents mark is confusingly similar to Complainants mark and the disputed domain name incorporates Complainants SANDALS marks. Respondent is attempting to create confusion as to the source of Complainants sponsorship, affiliation, and/or endorsement.
Respondent does not assert any rights or legitimate interests to the domain name in question. The domain 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 Respondent 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 does not deny that its actions were taken in bad faith. Respondent registered the domain name to intentionally attract internet users to its website for its commercial gain. Based on respondents experience in the travel business, Respondent knew that confusion between the two companies would result. When visiting Respondents website, Internet users can not know that they are not on the official Sandals website. If Respondents website were familiar to a consumer, and it were to become inactive, the consumer might conclude that various Sandals Resorts do not have an Internet presence. In either situation, Complainant would lose customers, and business would be disrupted as a result of Respondents infringing website.
Policies referred to
ICANN Uniform Domain Name Dispute Policy
Registration Agreements referred to
Network Solutions Service Agreement Version 4.0
Panel Decisions referred to
Marriott Intl Inc. v. Caf* au lait, FA 93670 (Nat.Arb.Forum March
13, 2000).
Cunard Line Ltd. V. Champion Travel, Inc., FA 92053 (Nat.Arb.Forum
March 7, 2000)
Travel Services, Inc. v. Tour Coop of Puerto Rico, FA 92524 (Nat.Arb.Forum
Feb 29, 2000)
Cases referred to
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James A. Carmody, Panelist: -
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is SANDALS-VACATIONS.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 30, 2000; The Forum received a hard
copy of the Complaint on May 30, 2000.
On June 2, 2000, NSI confirmed by e-mail to The Forum that the domain
name SANDALS-VACATIONS.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 June 7, 2000, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of June
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 June 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 June 29, 2000, pursuant to Complainants 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 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 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 will be drawn from the Complaint.
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 its 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.
The 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 Internet sites
authorized by the Complainant.
The Respondent registered the domain name SANDALS-VACATIONS.COM on
June 3, 1999. The Respondent is a retail 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.
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.
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 Marriott Intl, Inc. v. Café
au lait, FA 93670 (Nat. Arb. Forum March 13, 2000) (holding that the Respondents
domain name <Marriott-Hotel.com> was confusingly similar to Marriotts
marks and domain name <Marriott.com>). The Respondents business
is not synonymous with the Complainants 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 to
the domain name in question.
The domain name at issue does not reflect a name by which Respondent
is commonly known. Policy 4(c)(ii). Rather, the Respondent
is using the Complainants 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 Respondent
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
as is alleged by Complainant.
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 Respondents experience in the travel business,
the Respondent knew that confusion between the two companies would result.
When Internet users click on the Respondents site, they cannot know that
they are not on the official Sandals website. Were the Respondents
website to be familiar to a consumer, and were it to become 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 Respondents
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 panel that the requested relief be
granted.
Accordingly, for all of the foregoing reasons, it is ordered that the
domain name, SANDALS-VACATIONS.COM be transferred from the Respondent
to the Complainant.
James A. Carmody, Judge (Ret.)
Dated: July 3, 2000
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