Gorstew Limited and Unique Vacations,
Inc. v. KM a/k/a John Barry a/k/a Pro-Life Domains
Claim Number: FA0306000165151
Complainants are Gorstew Limited and Unique Vacations, Inc., Kingston,
Jamaica (“Complainant”) represented by Howard
Weller, of Sonnenschein Nath &
Rosenthal. Respondent is KM a/k/a John Barry a/k/a Pro-Life
Domains, Bronx, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwsandals.com>,
registered with Intercosmos Media Group,
Inc. d/b/a Directnic.Com.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainants
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on June 25, 2003; the Forum received a hard copy of the
Complaint on June 26, 2003.
On
June 26, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by
e-mail to the Forum that the domain name <wwwsandals.com>
is registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that
Respondent is the current registrant of the name. Intercosmos Media Group, Inc.
d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos
Media Group, Inc. d/b/a Directnic.Com 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
June 30, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 21, 2003 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@wwwsandals.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
July 30, 2003, pursuant to Complainants’ 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 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.
Complainants
requests that the domain name be transferred from Respondent to Complainants.
A. Complainants make the following assertions:
1. Respondent’s <wwwsandals.com> domain name is confusingly similar to
Complainant’s SANDALS mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwsandals.com>
domain name.
3. Respondent registered and used the <wwwsandals.com> domain name in
bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Since 1981,
Complainant Gorstew Limited has been using the SANDALS mark in commerce in
connection with hotel reservations services, using the mark in connection with
the “Sandals Resort” hotel chain, the largest chain of all-inclusive
couples-only hotels in the Caribbean. On September 18, 1990, Complainant
Gorstew obtained a federal registration for the SANDALS mark on the Principal
Register of the U.S. Patent and Trademark Office (U.S. Reg. No. 1,614,295) for
these services.
Complainant
Unique Vacations, Inc. provides marketing and reservations services for
Complainants’ SANDALS resorts. Complainant Unique operates websites which
utilize the SANDALS mark at the <sandals.com> and
<sandalsresorts.com> domain names, two domain names that are the only
official home pages for SANDALS resorts. These domain names were registered
with permisson from Complainant Gorstew, the holder of the SANDALS mark.
Respondent, KM
a/k/a John Barry a/k/a Pro-Life Domains, registered the <wwwsandals.com> domain name on April 27, 2002, without
license or authorization to use Complainant Gorstew’s SANDALS mark for any
purpose. Internet users who reach the disputed domain name are redirected to
the <abortionismurder.com> domain name, which hosts an informational
website providing anti-abortion materials, graphic images of unborn fetuses and
instructions on how to donate to various anti-abortion organizations.
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 Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that 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 Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(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.
Complainant
Gorstew has established rights in the SANDALS mark through registration of the
mark on the Principal Register of the U.S. Patent and Trademark Office, as well
as through widespread and continuous use of the mark in commerce.
Respondent’s <wwwsandals.com> domain name is
confusingly similar to Complainant’s SANDALS mark. It is an obvious attempt to
register a domain name that capitalizes on the common typing error of omitting
the period between the “www” and the second-level domain name that an Internet
user is attempting to access. The dominant feature of the domain name remains
Complainant’s SANDALS mark. See Bank of
Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding
that Respondent’s domain name <wwwbankofamerica.com> is confusingly
similar to Complainant’s registered trademark BANK OF AMERICA because it “takes
advantage of a typing error (eliminating the period between the www and the
domain name) that users commonly make when searching on the Internet”); see also Neiman Marcus Group, Inc. v. S1A,
FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been
established because the prefix "www" does not sufficiently
differentiate the <wwwneimanmarcus.com> domain name from Complainant's
NEIMAN-MARCUS mark).
Accordingly, the
Panel finds that the <wwwsandals.com> domain name is
confusingly similar to Complainant’s SANDALS mark under Policy ¶ 4(a)(i).
The value of the
<wwwsandals.com> domain name is based entirely on its confusing
similarity with the SANDALS mark. The Panel need not even address the content
that Respondent redirects Internet users to in determining that Respondent is
making neither a bona fide offering of goods or services through the <wwwsandals.com> domain name, nor
a legitimate noncommercial or fair use of the domain name. Thus, the provisions
of Policy ¶¶ 4(c)(i) and (iii) do not avail Respondent in this dispute. See Diners Club Int’l Ltd. v. Domain
Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23,
2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of Complainant’s DINERS CLUB
mark, was evidence in and of itself that Respondent lacks rights or legitimate
interests in the disputed domain name vis á vis Complainant); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting as a means of redirecting
consumers against their will to another site, does not qualify as a bona fide
offering of goods or services, whatever may be the goods or services offered at
that site”).
Likewise,
considering the nature of the disputed domain name and the fame of
Complainant’s mark, the Panel is unwilling to find that Respondent was
“commonly known by” the name WWWSANDALS prior to any notice of this dispute.
Thus, Policy ¶ 4(c)(ii) does not apply to Respondent either. See Medline, Inc. v. Domain Active Pty. Ltd.,
FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature
of the [<wwwmedline.com>] domain name and its similarity to Complainant’s
registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶
4(c)(ii) does not apply to Respondent”); see
also Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<wwwsandals.com> domain name
under Policy ¶ 4(a)(ii).
Respondent
registered and used the <wwwsandals.com>
domain name in bad faith. This is a clear-cut case of typosquatting, where
Respondent took a known mark (Complainant Gorstew’s SANDALS mark) and appended
the prefix “www.” Respondent deliberately chose to unjustly take advantage of
the goodwill surrounding Complainant’s SANDALS mark at the time that it
registered the disputed domain name, evidence that the domain name was
registered in bad faith. See Black &
Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the
<wwwdewalt.com> domain name was registered to “ensnare those individuals
who forget to type the period after the “www” portion of [a] web-address,”
evidence that the domain name was registered and used in bad faith); see also RE/MAX Int’l, Inc. v. Seocho,
FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (inferring that Respondent’s
registration of the <wwwremax.com> domain name, incorporating
Complainant’s entire mark, was done with actual notice of Complainant’s rights
in the mark prior to registering the infringing domain name, evidencing bad
faith).
Furthermore,
Respondent is using Complainant’s SANDALS mark, without authorization, to
redirect Internet users to a website dedicated to voicing anti-abortion views
that are not necessarily endorsed by Complainant. Respondent’s reliance on the
typing errors of Internet users attempting to reach Complainant’s website in
order to expose those users to politically charged content is evidence that the
domain name was registered and used in bad faith. See McClatchy Mgmt. Servs., Inc. v. Please DON'T Kill Your Baby, FA
153541 (Nat. Arb. Forum May 28, 2003) (finding “[b]y intentionally taking
advantage of the goodwill surrounding Complainant’s mark to further its own
political agenda, Respondent registered the disputed domain names in bad
faith”); see also Journal Gazette Co. v.
Domain For Sale Inc., FA 12202 (Nat. Arb. Forum Oct. 9, 2002) (finding
“Respondent chose the domain name to increase the traffic flowing to the
<abortionismurder.org> and <thetruthpage.com> websites,” which
tarnished Complainant’s mark, evidence that the domain name was registered in
bad faith).
The Panel thus
finds that Respondent registered and used the <wwwsandals.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Having established
all three elements required under ICANN Policy, the Panel concludes that relief
shall be GRANTED.
In this dispute,
Complainants failed to designate the party that the Registrar should transfer
the disputed domain name to in the event that Complainants prevailed. As such,
the Panel Orders that the <wwwsandals.com>
domain name be TRANSFERRED from Respondent to Complainant Gorstew
Limited, the holder of the SANDALS mark.
Judge Harold Kalina (Ret.), Panelist
Dated:
August 13, 2003
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