Gorstew Limited & Unique Vacations, Inc.
v.
Twinsburg Travel

[Indexed as: Gorstew Limited v. Twinsburg Travel]
[Indexed as:  BEACHESRESORTS.com]

National Arbitration Forum
Administrative Panel Decision

Claim Number: FA0008000095424
Commenced:  August 16, 2000
Judgment:  September 21, 2000

Presiding Panelist:  Judge Harold Kalina (Ret.)

Domain name - Domain name dispute resolution policy - Trademark - Confusingly similar - Tradename - Identical - Respondent default - Rational inferences in complaint - Respondent used website to sell Complainant’s product.

Complaint was registrant of trademark BEACHES and operates under the tradename Beaches Resorts.  Complainant used the trademark in connection with vacation packages.  Respondent is a travel agent, selling among other services, vacations to Beaches Resorts.  Respondent registered the domain name beachesresorts.com.  Respondent did not reply to notification transmitted by e-mail, fax and post to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

Held, Name Transferred to Complainant.

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." Respondent has submitted no response for the Panel to consider.  Based on this, the Panel will accept all rational inferences in the Complaint. 

Respondent’s domain name is identical to Complainant’s tradename and is confusingly similar to Complainant’s trademark. 

The fact that Respondent is a travel agent and sells Beaches Resorts vacations does not give it any interest or right to register the "Beaches" trademark, which it does not own or have a license to use, as a domain name.  Further, it does not give Respondant the right to lead users to believe that the website is sponsored by an entity that owns the Beaches Resorts.  Respondent’s website leads Internet users to believe that Respondent’s website is the official home page of Beaches Resorts.  Attracting Internet users to a website by creating confusion with Complainant’s marks as to the sponsorship of the site is evidence of bad faith.

Policies Referred to

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

Panel Decisions referred to 

Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000).
State Farm v. Kaufman, FA 94335 (Nat. Arb. Forum April 24, 2000).
Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000).

Kalina, Panelist:-

PARTIES
The Complainant is Gorstew Limited ("Gorstew"), Kingston, Jamaica and Unique Vacations, Inc., ("Unique") Miami, Florida, USA ("Complainant"). The Respondent is Twinsburg Travel, Twinsburg, OH, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s) 
The domain name at issue is "beachesresorts.com", registered with Network Solutions, Inc. ("NSI").

PANELIST(s) 
The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 08/16/2000; The Forum received a hard copy of the Complaint on 08/15/2000. 
On 08/18/2000, NSI confirmed by e-mail to The Forum that the domain name "beachesresorts.com" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by 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 08/21/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 9/11/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@beachesresorts.com <mailto:postmaster@beachesresorts.com> by e-mail. 
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 September 18, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, 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. 

PARTIES’ CONTENTIONS
A. Complainant
o Respondent’s domain name is confusingly similar to Gorstew’s trademark "Beaches".
o Respondent has no legitimate interest in the offending domain name which incorporates the trademark of a competitor.
o Respondent has registered the domain name in bad faith to prevent Gorstew, the owner of the "Beaches" trademark, from reflecting this mark in corresponding domain names, to disrupt the business of Beaches Resorts, and to attract for commercial gain, internet users to the Respondent’s products by causing confusion as to the sponsorship of the website associated with the offending domain name.
B. Respondent
The Respondent has submitted no response for the Panel to consider. Based on this, the Panel will accept all rational inferences in the Complaint. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint").

FINDINGS
Gorstew is the owner of the trademark "Beaches" for use in connection with hotel reservation services, sightseeing tours, and motor vehicle transportation. The "Beaches" trademark was first used in 1997 and was registered to Gorstew the same year under the registration number 2098026.
Through business and other arrangements, Gorstew has permitted the trademark to be associated with a chain of family oriented hotels, which do business under the "Beaches Resort" tradename. These resorts are located in Negril, Jamaica, and Turks and Caicos. 
Unique is a Florida corporation which serves as the worldwide representative for Breaches Resorts and provides marketing and reservation services. With permission from Gorstew, Unique has registered the domain name <beaches.com>. This is the only official website sponsored by the Complainant. 
The Respondent has registered multiple domain names which incorporate the Complainant’s mark.
The Respondent is a travel agent, selling, among other services, vacation packages to the Beaches Resorts. The domain name in question leads Internet users to a website operated by the Respondent. 

DISCUSSION 
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order 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 Complainant has rights in the registered mark "BEACHES." The Respondent’s domain name contains the registered mark "beaches" in addition to the word "resorts." When combined, the domain name forms the tradename that the Complainant uses to sell vacation packages, "Beaches Resorts". The Respondent’s domain name is identical to the Complainant’s tradename and confusingly similar to the Complainant’s trademark. See State Farm v. Kaufman, FA 94335 (Nat. Arb. Forum April 24, 2000) (finding that <statefarmdirect.com> is confusingly similar to Complainant’s registered mark).
Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the domain name.
The fact that the Respondent is a travel agent and sells Beaches Resorts vacations does not give it any interest or right to register the "Beaches" trademark, which it does not own or have a license to use, as a domain name and lead users to believe that the website is sponsored by an entity that owns the Beaches Resorts. The Respondent is not commonly known by the "Beaches" mark. Policy ¶ 4.c.(ii). The Respondent has not offered evidence that is has any rights or legitimate interests under Policy ¶ 4.c. Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name.
Registration and Use in Bad Faith
The Complainant contends that the Respondent has registered and used the domain name in bad faith. The Respondent has not denied this assertion.
The Respondent’s website leads Internet users to believe that the Respondent’s website is the official home page of Beaches Resorts. Attracting Internet users to a website by creating confusion with the Complainant’s marks as to the sponsorship of the site is evidence of bad faith. Policy ¶ 4.b.(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where the Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as the Complainant). 
Therefore, the Panel concludes that the domain name was registered and used 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, "BEACHESRESORTS.COM", be transferred from the Respondent to the Complainant.
 


Domain Name Transferred