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 Satin Leaf, Incorporated, Delray Beach, FL. ("Respondent" or "Satin Leaf").

The domain names at issue are "SANDALSAGENCY.COM"and "SANDALSAGENT.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 names "SANDALSAGENCY.COM"and "SANDALSAGENT.COM"are 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 names be transferred from Respondent to Unique.

A. Complainant

Complainant contends that:

1. Each of Respondent’s domain names is confusingly similar to those of Gorstew which owns the trademark "Sandals".

2. Each of Respondent’s domain names is confusingly similar to the domain names which Gorstew has authorized be registered utilizing the "Sandals" trademark.

3. Respondent has no legitimate interest in the offending domain names which incorporate the trademark of a competitor.

4. Respondent has registered the domain name in bad faith to prevent Gorstew, the owner of the "Sandals" trademark, from reflecting that mark in corresponding domain names, to disrupt the business of the Sandals Resorts, and to attract, for commercial gain, Internet users to Respondent’s products by causing confusion as to the sponsorship of the website associated with the offending domain names.

5. Complainant contends that neither Gorstew nor Unique licensed or authorized the Respondent to use the "Sandals" trademarks as part of any domain name.

B. Respondent

Respondent contends that:

1. Respondent’s domain names are not confusingly similar to those of Gorstew which owns the trademark "Sandals". The use of the words "agent" or "agents" as part of the domain names dismisses all possibility for such confusion.

2. Respondent has legitimate interest in the domain names since it is a travel agency that is an authorized agent and agency to sell goods and/or services of the Complainant. Respondent is not a competitor of the Complainant, but is in fact a partner helping to sell more Sandals vacations.

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

1. Complainant Gorstew is the owner of the trademark "Sandals", first used in 1981, and registered with the United States Patent and Trademark Office in 1990 and 1997, numbered 1614295 and 2054532, respectively. The trademark is used in connection with the operation of Complainant’s nine resort hotels, i.e., "Sandals Resorts," and with the sale of related services and products.

2. Sandals Resorts is the largest chain of all-inclusive couples-only hotels in the Caribbean with nine (9) hotels in Jamaica, Antigua, St. Lucia and the Bahamas. Each of the resort hotels has a separate "Sandals" name.

3. Over the years, Sandals Resorts have spent millions of dollars in advertising and promotion to familiarize the public with their resort hotels.

4. Unique is a Florida corporation which serves as the worldwide representative for Sandals Resorts and provides marketing and reservations services. In connection with its marketing services, it has registered the domain names "SANDALSRESORTS.COM" (May 18, 1998) and "SANDALS.COM" (July 5, 1995) with NSI.

5. Unique maintains a website under these domain names which advertises the Sandals Resorts and from which website consumers can obtain information about the various Sandals

Resorts and make reservations directly with Unique for travel to the Sandals Resorts.

6. The referenced domain names "SANDALSRESORTS.COM" and "SANDALS.COM" are the only official home pages for the Sandals Resorts and the only website sponsored by Sandals Resorts. These two websites are the only authorized sites by Complainants.

7. Neither Complainant specifically has authorized the use of the trademark "Sandals" as a part of any third parties’ domain name.

8. Respondent, Satin Leaf, has registered two (2) domain names which incorporate the word "Sandals":

"SANDALSAGENCY.COM" and "SANDALSAGENT.COM".

9. Satin Leaf is a corporation in Florida that was created to sell various types of travel as an agent for cruise lines and vacation properties. Sandals Resorts sells its travel packages through thousands of travel agents throughout the world. The front cover of their current brochure indicates that Sandals has been "Voted the World's Best By Travel Agents Worldwide Six Years in a Row", and the back cover tells consumers "For more information, call your professional travel agent or Sandals", and below that, it is printed "Book through your travel agent".

10. Neither of the two domains in question have been developed yet, nor has Satin Leaf's main home site. However, Satin Leaf is less than one year old.

11. Sandals condones the sale of its resorts through travel agents and agencies. Satin Leaf intends to act as a bona fide partner to Sandals, selling their packages in return for a commission. Satin Leaf does not intend to use the domain names as the main web sites for the agency. The domains in question would be "doorway pages" designed to give consumers information about Sandals, and about the value-added services that Satin Leaf can provide. These sites would then link to the main Satin Leaf sites.

12. The SANDALS.COM web site encourages travel agents to set up a "Sandals Page" on the agent’s current web.

However, all links to the Sandals website should be directed to "http://www.sandals.com." However, Complainant has not explicitly authorized Respondent to use the "Sandals" trademark in a domain name.

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 Respondent’s domain names, "SANDALSAGENCY.COM" and "SANDALSAGENT.COM," are confusingly similar to the Complainant’s trademark "Sandals". This could lead the public to believe that the Satin Leaf websites are the official home page of Sandals Resorts or that the websites are sponsored by Sandals Resorts, which they are not.

Satin Leaf has no rights or legitimate interest in respect of the offending domain names. Said names do not reflect the corporate name under which Satin Leaf conducts business. The mere fact that Satin Leaf is a travel agent and sells Sandals Resorts vacations does not give it any interest in or right to register the "Sandals" names which it does not own and as to which it has no license. Satin Leaf has no long term relationship with Complainant from which implied consent can be inferred. Nor can consent be inferred from Complainant’s web site where no authorization is given to use the "Sandals" trademark in a domain name.

The domain names have been registered and is being used in bad faith. Any consumer looking for the official website of Sandals Resorts may be connected to Satin Leaf’s websites rather than that of Sandals Resorts. Since the domain names at issue are confusingly similar to SANDALS.COM and SANDALSRESORTS.COM, Satin Leaf’s use of the offending domain names is likely to confuse consumers and travel agents who would expect to find the offered home page of Sandals Resorts at Satin Leaf’s websites and domain name locations. By using the "Sandals" trademark in each of its domain name, Satin creates the inference that the website and products listed thereon emanate from Sandals. Satin Leaf is intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website.

Based upon the above findings and conclusions, the Panel finds in favor of Complainant. Therefore, the relief requested by Complainant pursuant to Paragraph 4(i) of the Policy is Granted. Respondent shall be required to transfer the domain names "SANDALSAGENCY.COM" and "SANDALSAGENT.COM" to Complainant.