Decision
Gorstew Limited and Unique Vacations, Inc. v.
Claim Number: FA0005000094927
PARTIES
Complainants are Gorstew
Limited,
("Complainant"). Respondent is Caribbean Tours & Cruises,
("Respondent").
REGISTRAR
AND DISPUTED DOMAIN NAME(s) The domain names at
issue are: "SANDALSRESORTSJAMAICA.COM";
"SANDALSROYALBAHAMIAN.COM";
"SANDALS-ROYALBAHAMIAN.COM";
"SANDALSDUNNSRIVER.COM";
"SANDALSROYALCARIBBEAN.COM";
“SANDALS-ROYAL
CARIBBEAN.COM”;
“SANDALSMONTEGOBAY.COM";
"SANDALSINN.COM";
"SANDALSNEGRIL.COM";
"SANDALS-NEGRIL.COM";
“SANDALS-STLUCIA.COM";
"SANDALS-ANTIGUA.COM";
"SANDALS-DUNNSRIVER.COM";
"SANDALS-OCHORIOS
.COM";
"SANDALS-ALL-INCLUSIVE-RESORTS.COM";
“SANDALSBEACHES.COM”;
"SANDALS-BEACHES.COM";
“SANDALSBEACHESRESORTS.COM”;
"SANDALS-BEACHESRESORTS.COM";
"BEACHESINN.COM";
"BEACHES-INN.COM";
"BEACHESTURKSCAICOS.COM";
"BEACHESTURKS.COM";
"BEACHESNEGRIL.COM";
"BEACHES-NEGRIL.COM”:
registered
with Network Solutions, Inc. ("NSI").
PANELIST(s)
M. Kelly Tillery, Esquire
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
on 05/30/2000.
On 06/12/2000, NSI confirmed by e-mail to The Forum that the above
listed domain names are registered with NSI and that Respondent is the current
registrant of the names. NSI has verified that Respondent is bound by the
Network Solutions Service Agreement Version 4.0 for all the names except
BEACHESTURKS.COM, SANDALS ALL-INCLUSIVE-RESORTS.COM,
SANDALS-BEACHES-RESORTS.COM, BEACHESTURKSCAICOS.COM, and BEACHES-INN.COM, whose
registrants are bound by Version 5.0.
On
06/13/2000, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
07/05/2000 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 07/10/2000, pursuant to Complainant's request to have the dispute
decided by a Single Member Panel, The Forum appointed M. Kelly Tillery, Esquire
as Panelist.
RELIEF
SOUGHT
Complainant requests that all twenty-five
(25) domain names be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainants
Complainant Gorstew Limited claims
that it is the owner of at least three (3) valid, Federally-registered
trademarks as follows:
MARK CLASS REGISTRATION NO. ISSUE DATE DATE
OF FIRST USE
Sandals 39,42 1,614,295 9/18/90 12/15/81
Sandals 16,18,25 2,054,532 4/22/97
1991
Beaches
A part
of
the Sandals
Family 42 2,098,026 9/6/97 2/7/97
Complainant
Unique Vacations, Inc. claims to be the authorized, world-wide representative of
Complainant Gorstew Limited which provides marketing, reservation and web site
services. Gorstew Limited owns and operates the following
SANDALS BEACHES
Sandals Inn Beaches
Negril
Sandals Royal Jamaican Beaches
Sandals
Sandals Ocho Rios Beaches
Turquoise
Sandals Dunn’s River
Sandals
Sandals Halcyon
Sandals
Sandals Royal
Sandals Royal Bahamian
In addition, in connection with the
operation of resort locations, Complainant Gorstew Limited, through Unique
Vacations, Inc., registered and utilizes the following domain names:
DOMAIN
NAMES CREATION
DATE
sandalsresorts.com 5/18/98
sandals.com 7/5/95
beaches.com 4/15/95
Complainant complain that Respondent
has registered twenty (25) objectionable domain names from January 27, 1999 through March
28, 2000 as follows:
DOMAIN
NAMES CREATION
DATE
SANDALSRESORTSJAMAICA.COM 5/6/99
SANDALSROYALBAHAMIAN.COM 09/01/99
SANDALS-ROYALBAHAMIAN.COM 11/10/00
SANDALSDUNNSRIVER.COM 09/01/99
SANDALS-DUNNSRIVER.COM 11/10/99
SANDALSROYALCARIBBEAN.COM 10/12/99
SANDAL-ROYALCARRIBBEAN.COM 11/10/99
SANDALSMONTEGOBAY.COM 09/01/99
SANDALSINN.COM 10/07/99
SANDALSNEGRIL.COM 09/01/99
SANDALS-NEGRIL.COM 11/10/99
SANDALS-STLUCIA.COM 11/10/99
SANDALS-ANTIGUA.COM 11/10/99
SANDALS-OCHORIOS .COM 11/10/99
SANDALS-ALL-INCLUSIVE-RESORTS.COM 03/22/00
____________________________
SANDALSBEACHES.COM 01/07/99
SANDALS-BEACHES.COM 090/2/99
SANDALSBEACHESRESORTS.COM 05/06/99
SANDALS-BEACHES-RESORTS .COM 03/22/99
__________________________
BEACHESINN.COM 10/07/99
BEACHES-INN.COM 03/28/00
BEACHESTURKS.COM 02/25/00
BEACHESTURKSCAICOS.COM ?
BEACHESNEGRIL.COM 10/05/99
BEACHES-NEGRIL.COM 11/10/99
Complainants complain that Respondent is a retail
travel agent which sells, among other things, vacation packages to Sandals and
Beaches resorts and that it does not own or manage any of the resorts that
conduct business under the Sandals/Beaches names and that it has no authority
from either Complainant to utilize any mark identical to or confusingly similar
with the aforementioned registered marks.
Complainants further complains that Respondent’s
domain names are identical and/or confusingly similar to the aforementioned
marks and are used solely to lead the public to believe that Respondent’s Web
Sites are in fact the Web Sites of Complainants and/or that they are sponsored
or authorized by Complainants.
Complainants further claim that Respondent has no rights or legitimate
interests in respect to any of the domain names and that Respondent has
registered and is using them in bad faith
to prohibit Complainants’ from registering identical domain names and to
disrupt Complainants’ business.
B. Respondent
Respondent does not dispute Complainants’ ownership of
the Sandals and Beaches marks, but claims that Respondent’s uses of its domain
names are in compliance with Complainant’s guidelines for the use of said marks
by travel agents. Respondent claims that Complainant has known of, approved of
and encouraged Respondent in said uses since early 1999.
Respondent registered its first allegedly offending domain name on
January 6, 2000 (sandalsbeaches.com) and has continued through and up to March
28, 2000 to register
additional allegedly offending names. Respondent claims that, of the twenty five
(25) domain names in question here, nine (9) resolve to active web sites, one (1) is “under construction” and the remaining fifteen
(15) are yet to be implemented.
Respondent
further claims that it has made continuous and bona fide use of the domain
names at issue, its travel agency has become commonly known by use of the
domain names, that it has made and continues to make legitimate use of the
domain names, that the “sandalsbeaches.com” web site receives approximately
70,000 hits per month, that it has not used the domain names in bad faith and
that Complainants have acquiesced in Respondent’s use of the Sandals and
Beaches marks and thus it is entitled to an implied license.
FINDINGS
Complainants
have sustained their burden to prove by a preponderance of the credible,
relevant, admissible evidence that all twenty five (25) of Respondent’s
domain names are identical and/or confusingly similar to valid, Federally-registered
trademarks/service marks in which Complainants have rights.
Complainants
have also sustained their burden to prove by a preponderance of the credible,
relevant, admissible evidence that Respondent has no rights or legitimate
interests in respect to any of said twenty five (25) domain names.
Complainants
have also sustained their burden to prove by a preponderance of the credible,
relevant, admissible evidence that all of Respondent’s twenty five (25) domain
names have been registered and are being used in bad faith.
DISCUSSION
Paragraph 4(a) of the ICANN
Uniform Domain Name Dispute Policy ("Policy") directs that
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 Respondent is
identical or confusingly similar to a trademark or service mark in which
Complainant has rights;
(2) 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.
A. Identical and/or Confusingly Similar
The evidence clearly establishes
that Complainant Gorstew is the owner of valid, Federally-registered trademarks
for Sandals and Beaches,[1]
that Complainants have used said marks widely and extensively throughout the
In fact, Respondent continues to
and wishes to continue to utilize those very marks in its domain names, for the
same reason that Complainants utilizes them, that is to identify and
distinguish the products and services of Complainants and to draw
customers and potential customers.
Respondent registered the first
of the twenty-five (25) domain names in question on January 7, 1999 and has
continued to register similar marks through March 28, 2000. However, there is no question on this record
that Complainant Gorstew has utilized these marks extensively since as early as
1981 for Sandals and as early as 1997 for Beaches, long before registration of any
domain name by Respondent. Thus,
Respondent is clearly a subsequent user of each of these marks.
Under such circumstances,
Respondent is obligated to either secure a license from Complainant trademark owner to utilize its marks or
use a mark that is neither identical nor confusingly similar thereto.
Respondent has consciously
chosen to utilize marks that are in fact either identical and/or certainly
confusingly similar to the valid, Federally-registered marks of Complainants.
Respondent has actually registered three (3)
different classes of domain names utilizing the marks of Complainants; (1) a
group of domain names which include the word Sandals and the name of one
of Complainants’ hotels, (2) a group of domain names which include the word
Beaches and the name of one of Complainants’ hotels and (3) a group of
domain names including a combination of the words Sandals and Beaches. The only domain name that does not fit one of
these categories is: “sandals-all-inclusive-resorts.com” which, of course, uses
Sandals and a tagline often used by Complainants in Sandals literature. Whether
used separately, together, separated by a hyphen or otherwise, each of the
twenty-five are either identical or confusingly similar to marks in which
Complainants have substantial rights.
Based upon the evidence of record, it is
beyond question that Respondent have consciously selected, registered and
utilized domain names which are either identical or confusingly similar to the
valid Federally-registered marks of Complainants. It is almost beyond belief how Respondent
could, with straight face, claim otherwise.
It is difficult, if not impossible, for example, for this Arbitrator to
believe that the 70,000 individuals who “hit” Respondent’s website
“sandalsbeaches.com” were actually looking for the website of a retail travel
agency in
B. Rights
or Legitimate Interest
Respondent is neither the owner of nor a
licensee of the aforementioned Federally-registered marks for Sandals and/or
Beaches. Neither its
business name, Caribbean Tours and Cruises, nor the name of its principal, Tom
Carr, is even close to Beaches or Sandals.
While Respondent has produced some evidence, albeit
anecdotal, that some employees or agents of Complainants were aware of and may
have tacitly approved its utilization of the “sandalsbeaches.com” domain name
(only 1 of 25 in question), this Arbitrator cannot, upon this record, find that
such evidence proves a valid trademark license, implied or otherwise. No evidence whatsoever exists of any such
knowledge/approval of any of the other twenty-four (24) domain names.
Further, the evidence
does not support Respondent’s contention that the use of any of these domain
names is in accord with Complainant’s guidelines for travel agents.
Respondent acknowledges that it registered
these domain names with the specific intent desire to sell services to
customers who wish to go to resorts owned and operated by Complainants,
presumably for which Respondents would be paid a standard travel agent
percentage or fee. This is classic
trademark infringement, even if the ultimate result of same is
that some revenue flows to the owner of the marks.
The only other basis upon which Respondent
can claim to demonstrate rights to and legitimate interest in said domain names
is ICANN Rule
4(c)(i). That Rule provides that
Respondent may demonstrate its rights to and legitimate interest in its domain
names if the Arbitrator finds that, before any notice of this dispute,
Respondent used or made demonstrable preparations to use any of those domain
names or any names corresponding to the domain names in connection with a bona
fide offering of goods or services.
Respondent acknowledges that at least fifteen
(15) of the domain names in question have not yet been “used” by Respondent and
that one is “under construction.”
However, neither Respondent nor Complainants have identified those with
any particularity making individual analysis somewhat cumbersome on this
issue. The record also contains no
evidence of “demonstrable preparations to use same.” Thus, clearly at least sixteen (16) of the
domain names in question cannot not possibly meet the requirements of Rule 4(c)(i).
Based upon the record, it appears that only
the domain name “sandalsbeaches.com” could possibly meet the requirements of
Rule 4(c)(i).
While the record reflects that Respondent may
in fact have been “offering services” utilizing “sandalsbeaches.com” since as
early as January 7, 1999 and that Respondent first received notice of this
dispute on June 13, 2000 upon receipt of the “Notification of Complaint and
Commencement of Administrative Proceeding”, this Arbitrator cannot find that
such offering of services was “bona fide.”
The American Heritage Dictionary of the English Language (Third Edition,
1992) defines “bona fide” as “made or carried out in good faith”, “authentic”
or “genuine.” This Arbitrator cannot
find that the use by Respondent of marks identical and/or confusingly similar
to valid, Federally-registered marks of another to constitute offering of
services “in good faith” and certainly not “authentic” or “genuine”, especially
since there is no authorization from Complainants. Thus, Rule 4(c)(i)
is of no avail to Respondent on this record.
While this Arbitrator is not bound by prior
decisions of other Arbitrators, Complainant has cited a number of ICANN
Arbitration decisions in similar cases in which similar results have been
obtained[2]
and with which this decision is consistent.
Acceptance of Respondent’s
arguments would permit Respondent or any other travel agent to register and use
any presently unregistered versions of domain names which include the
trademarks or service marks (registered or unregistered) of thousands of
other airlines, hotels, resorts and the like.
Neither The Lanham Act nor the ICANN Policy or Rules provide for or
intend such a result. Permitting Respondent
to retain the domain names in question would amount to the grant of a
compulsory license, a result neither sanctioned nor permitted by The Lanham
Act, the ICANN Policy or the ICANN Rules.
C.
Registration
and Use in Bad Faith
At the
time that Respondent registered each and every one of the twenty-five (25) domain
names in question, Respondent, by its own admission, was well aware of the
registered trademarks and rights of Complainants. Indeed, even if Respondent was not actually
aware of same, the valid, Federal registrations issued in 1990 and 1997 were all
prior to the registration by Respondent’s of its first domain name on
January 7, 1999 (“sandalsbeaches.com”); thus Respondent certainly had
constructive knowledge of same.
As set
forth hereinabove, it is clear from the evidence that Respondent registered
these domain names with the intent to draw customers of Complainants to
Respondent’s Web Site. ICANN Rule 4(b)(iv) sets forth some circumstances under which an
Arbitrator may find registration and use to be in bad faith:
Evidence
of Registration and Use in Bad Faith
“For the
purposes of Paragraph 4(a)(iii), the following
circumstances, in particular, but without limitation, if found by the Panel to
be present, shall be evidence of the registration and use of a domain name in
bad faith. ***(iv).
by using the domain name, you have
intentionally attempted to attract, for commercial gain, Internet users to your
website or other on-line location, by creating a likelihood of confusion with
the Complainant’s mark as to the source, sponsorship, affiliation, endorsement
of your web site or location of a product or service on your web site or
location.” Rule 4(b)(iv).
Based
upon the foregoing, there can be no question that it was not only the intent
upon registration but remains the intent and practice of Respondent to do
precisely what is prohibited by ICANN Rule 4(b)(iv), that is, Respondent has
intentionally attempted to attract, for commercial gain, Internet users to its
websites by creating a likelihood of confusion with Complainants’ marks as to
the source, sponsorship, affiliation and/or endorsement of Respondent’s web
site or location of a product or service on its web site or location.
Thus, the
evidence is substantial that Respondents have registered all twenty-five of
these domain names in bad faith and are using same in bad faith. Respondent has reaped where it has not sown
and the prevention of same is the foundation of trademark and domain name
protection.
DECISION
Each of Respondent’s twenty-five
(25) domain names should be immediately transferred to Complainant.
M. Kelly Tillery, Esquire, Arbitrator
July 28, 2000
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[1] The actual mark registered is “BEACHES A Part of the Sandals Family.” Because the evidence indicates that Complainant regularly and widely uses the abbreviated form – “BEACHES” alone or in combination with the location of one of its resorts, and Respondent does not dispute Complainants’ rights in the “BEACHES” mark, this Arbitrator finds that Complainants have rights in the “BEACHES” mark as well.
2 Cunard
Line Ltd. v. Champion Travel, Inc., FA 0001000092053 (Banks, Arbitrator); Travel
Services, Inc. v. Tour Cool 2 of Puerto Rico, FA 0001000092524
(Dietch, Arbitrator), Tourism and Corporate Automation Ltd. v. TSI, Ltd.,
AF 0096 (Hardy, Arbitrator); America Online, Inc. v. iDomain names.com,
FA 0002000093766 (Merhige, Arbitrator); Mariott International, Inc. v. Café
Oau Lai, FA 0002000093670 (Condon, Arbitrator). But, Cf., Adaptive Molecular
Technologies, Inc. v. Woodward, WIPO Case No. D 2000-0006
(Abel, Arbitrator); Weber – Stephen Products
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