Sandals
Resorts International Limited v World Tours
Claim Number: FA0104000097113
PARTIES
Complainant is Sandals Resorts International Limited, Montego Bay, Jamaica (“Complainant”) represented by David B. Newman, of Sonnenschein Nath & Rosenthal. Respondent is World Tours, Marietta , GA, USA (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is "weddingmoons.com" registered with Network Solutions, Inc.
PANEL
On May 21, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 26, 2001; the Forum received a hard copy of the Complaint on April 27, 2001.
On April 27, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "weddingmoons.com" is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 27, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 17, 2001 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@weddingmoons.com by e-mail.
Having received no formal 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.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “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 Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant alleges the following:
1)
Respondent’s domain name, weddingmoons.com,
is identical or confusingly similar to Complainant’s registered WEDDINGMOON
mark.
2) Respondent has no rights or legitimate interests in the disputed domain name.
3) Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent has not submitted an official response in this matter. However, Respondent did submit a letter to the Forum stating it has “ZERO interest in infringing on Complainant’s WEDDINGMOON mark…” and requested options to resolve this matter.
FINDINGS
Complainant, Sandals Resorts Int’l Ltd., owns the registered WEDDINGMOON mark, which it has used since 1994 in connection with hotel and hospitality services offered by Sandals Resorts. Through business and other agreements, Complainant has permitted its WEDDING MOON mark to be associated with wedding and honeymoon packages to a chain of couples-only hotels that do business under the name “Sandals Resorts.” Complainant is the largest chain of couples-only hotels in the Caribbean with hotels in Jamaica, Antiqua, St. Lucia, and the Bahamas. In addition, Complainant maintains a web site under the domain name “weddingmoon.com,” which advertises Complainant’s wedding and honeymoon packages.
Respondent, World Tours, registered the disputed domain name March of 1999. Respondent is a travel agent that sells “weddingmoon” vacation packages to Complainant’s resorts. However, Respondent does not own, operate or manage the “weddingmoon” packages offered at any of the hotels that conduct business under Complainant’s mark. Accordingly, Respondent is not licensed or otherwise authorized to use Complainant’s mark in any form.
DISCUSSION
Paragraph
15(a) of the Rules instructs this Panel to “decide a complaint on the basis of
the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the 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
Complainant’s rights are evidenced by its registered WEDDINGMOON mark.
The Panel finds that Respondent’s domain name, weddingmoons.com, is confusingly similar because it is comprised of Complainant’s mark with an “s” added to the end. See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an "s" to the end of the Complainant’s mark, “Cream Pie” does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”); see also Reuters Limited v Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).
Moreover, the disputed domain name is so confusingly similar a reasonable Internet user would assume the domain name is somehow associated with Complainant’s business. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with Complainant); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).
Accordingly, Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
The Panel finds that Respondent is not commonly known by the disputed domain name, nor is Respondent licensed or otherwise authorized to use Complainant’s mark for any purpose. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark or never applied for a license or permission from Complainant to use the trademarked name); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names “Nokia” and/or “wwwNokia”).
Further, Respondent does not oppose the remedy requested by Complainant. See Colgate-Palmolive Co. v. Domains For Sale, FA 96248 (Nat. Arb. Forum Jan. 18, 2001) (Respondent’s willingness to transfer the domain name at issue to Complainant, as reflected in its Response, is evidence that it has no rights or legitimate interests in the domain name).
Finally, Respondent asserted no rights or legitimate interests in the disputed domain name, which entitles the Panel to conclude Respondent has no such rights or legitimate interests in the domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. and D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interest where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any such right or interest that it may possess).
Thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
The Panel finds that Respondent knew or should have known of Complainant’s famous mark prior to registering the disputed domain name. See Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact “that the Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”); see also Ty. Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and thus Respondent should have been aware of it).
As a result, Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under ICANN Policy, this Panelist concludes that the requested relief shall be and is hereby granted.
Therefore, it is
Ordered that the domain name, weddingmoons.com,
be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated: May 29, 2001
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