Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Gorstew Limited,Jamaica,("Gorstew"), and Unique Vacations, Inc., Miami, FL, USA, ("Unique") (collectively "Complainant"). The Respondent is Broker4domains.com, Canoga Park, CA. ("Respondent").

The domain name at issue is "800BEACHES.COM" registered with Network Solutions, Inc. ("NSI").

The Panelist certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") on 08/14/2000.

On August 18, 2000, NSI confirmed by e-mail to The Forum that the domain name "800BEACHES.COM"

is registered with NSI and that the Respondent is the current registrant of the name and verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Uniform Domain Name Dispute Resolution Policy (UDRP), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN).

On 08/15/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 09/11/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail.

On September 22, 2000, pursuant to Complainant’s and Respondent’s request to have the dispute decided by a Single Member panel The Forum appointed the Honorable Charles K. McCotter, Jr. as Panelist.

Complainant requests that the domain name be transferred from Respondent to Unique.

A. Complainant

Complainant contends that:

1. Respondent’s domain name is confusingly similar to those of Gorstew which owns the trademark "Beaches a part of the Beaches Family" (referred to herein as "Beaches").

2. Respondent’s domain name is confusingly similar to the domain names which Gorstew has authorized be registered utilizing the "Beaches" trademarks.

3. Respondent has no legitimate interest in the offending domain name and registered the name solely to resell it and for no other legitimate business purpose.

4. Respondent has registered the domain name in bad faith to prevent Gorstew, the owner of the "Beaches" trademark, from reflecting that mark in corresponding domain names.

B. Respondent

Respondent contends that:

1. The term "Beaches" is not exclusive and is generic.

2. Respondent has legitimate interest in the domain name.

3. Respondent has not registered the domain names in bad faith.

1. The Complaint is based upon the trademark "Beaches a part of the Beaches Family," Registration No. 2098026 which is used in connection with the operation of hotels and related hospitality services and products.

2. Gorstew is the owner of the trademark "Beaches" for use in connection with hotel reservations services, sightseeing tours and motor vehicle transportation. The "Beaches" trademark was first used in 1997 and was registered in International Class 42, the same year, under Registration Number 2098026.

3. Through business and other arrangements, Gorstew has permitted the "Beaches" trademark to be associated with a chain of family orientated all-inclusive hotels which do business under the name "Beaches Resort." Beaches Resorts are currently located in Negril, Jamaica and Turks and Caicos. Each of the hotels have a separate "Beaches" name.

4. To Complainant’s knowledge, there are no other hotel chains or hotels which do business under the "Beaches" name other than those which utilize the names pursuant to the authority granted by Gorstew. Beaches Resorts are advertised extensively throughout the world. Over the years, Beaches Resorts have spent millions of dollars in advertising and promotion to familiarize the public with their resort hotels.

5. Unique, is a Florida corporation, which serves as the worldwide representative for Beaches Resorts and provides marketing and reservations services. In connection with its marketing services, it has registered the domain name BEACHES.COM (April 15, 1995) with NSI.

6. Unique also owns the telephone number 1-800 BEACHES which is used in attracting customers to purchase vacation packages at Beaches Resorts.

7. Unique maintains a website under this domain name which advertises the Beaches Resorts and from which website consumers can obtain information about the various Beaches Resorts and make reservations directly with Unique for travel to the Beaches Resorts.

8. The referenced domain name "BEACHES.COM" is the only official home page for the Beaches Resorts and the only website sponsored by Beaches Resorts. Neither Gorstew nor Unique has licensed, authorized or otherwise given any person or entity permission to use the "Beaches" trademarks, as part of any domain name.

9. Respondent has registered a domain name which incorporates the word "Beaches": "800BEACHES.COM".

10. Respondent, is the business of creating a virtual storefront for the exchange of information and to that end has registered over 10,000 domain names. The focus of the company has been, in part, the creation of websites that utilize generic names as a method of attracting end users, creating a data base and directing web traffic to vendors. It is a policy of the Company to avoid trade names, registered names and to abandon any names that have as their base a registered tradename or trademark. Notwithstanding that policy, and the Company’s willingness to abandon the domain name of "800BEACHES.COM" it is also the position of the Company that Gorstew is not entitled to the relief which it seeks.

11. On June 1, 2000, Complainant filed an application with the United States Patent and Trademark Office for trademark rights to the name "800BEACHES."

12. Respondent’s registration of the website entitled 800BEACHES.COM occurred on or about June 12, 2000.

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 canceled 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.

The term "Beaches" is in use by a number of various entities in various businesses including restaurants, perfumes and cosmetics, travel, the environment, beverages, software, clothing, medical services, and, therefore, is not exclusive.

The term "Beaches" has a generic meaning and as such protection is less likely to be accorded. Respondent has not registered any name involving the word or name "Sandals" or "Sandals-Family." The use by Gorstew of "Beaches, a part of the "Sandals Family" is distinguishable and identifiable. The original registration included a non-generic element, namely "Sandals" because it identifies by source the Sandals Family and that would take the name out of the generic domain. Without that reference, the mark at issue is generic and new.

Here, because serious questions exist as to whether Complainant has any proprietary rights in an arguably generic term, Complainant has failed to satisfy Paragraph 4(a)(i) of the policy. See Pet Warehouse v. Pets.Com, Inc., ICANN Case No. D2000-0105 (WIPO April 13, 2000). The ultimate decision as to whether Complainant does or does not have proprietary rights is better left to a court or trademark office tribunal. Id. In light of this determination, the Panel need not consider whether the domain name "BEACHES.COM" is identical or confusingly similar to Complainant’s alleged service mark, nor whether Respondents have rights or legitimate interests in "BEACHES.COM", nor whether Respondents’ registration and use of the disputed domain name was in bad faith. Id.

Based upon the above findings and conclusions, the Panel finds in favor of Respondent. Therefore, the relief requested by Complainant pursuant to Paragraph 4(i) of the Policy is Denied. Respondent shall not be required to transfer the domain name "800BEACHES.COM" to Complainant.