Generic Top Level Domain Name (gTLD) Decisions

The Complainants are Gorstew Limited, Kingston, Jamaica and Unique Vacations, Inc., Miami, Florida, ("Complainants"). The Respondent is Jason Cavadas, Twinsburg, OH, USA ("Respondent").

The domain names at issue are "beachesoutletstore.com", "sandals-hotels.com", "twinsburgtravelbeaches.com" and "twinsburgtravelsandals.com", registered with Network Solutions, Inc. ("NSI").

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

Honorable Carolyn Marks Johnson sits as Panelist.

Complainants submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 08/16/2000; The Forum received a hard copy of the Complaint on 8/15/2000.

On 8/21/2000, NSI confirmed by e-mail to The Forum that the domain name(s) "beachesoutletstore.com", "sandals-hotels.com", "twinsburgtravelbeaches.com" and "twinsburgtravelsandals.com" 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 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 08/21/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 9/11/2000 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@beachesoutletstore.com, postmaster@sandals-hotels.com, postmaster@twinsburgtravel.com and postmaster@twinsburgtravelsandals.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 09/20/2000, pursuant to Complainants’ request to have the dispute decided by a Single Member panel, The Forum appointed Honorable Carolyn Marks Johnson 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 Uniform 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 the Respondent.

Complainants request that the domain name(s) be transferred from Respondent to the Complainants.

A. Complainants

B. Respondent

Complainant Gorstew is the owner of the trademark "SANDALS" for use in connection with hotel reservation services, sightseeing tours, and motor vehicle transportation. The "SANDALS" trademark was first used in 1981 and was registered to Complainant Gorstew in 1990 under the registration number 1614295. The "SANDALS" mark was registered in other classes in 1997 under the registration number 205432.

Complainant Gorstew is also the owner of the trademark "Beaches" for use in connection with hotel reservation services, sightseeing tours, and motor vehicle transportation. The "Beaches" trademark was first used in 1997 and was registered to Complainant Gorstew the same year under the registration number 2098026.

Through business and other arrangements, Complainant Gorstew permitted the trademark to be associated with a chain of family oriented hotels, which do business under the "Beaches Resort" tradename. These resorts are located in Negril, Jamaica, and Turks and Caicos.

Through business and other arrangements, Complainant Gorstew permitted the trademark to be associated with a chain of family oriented hotels, which do business under the "SANDALS" tradename.

Complainant Unique is a Florida corporation that serves as the worldwide representative for Sandals and provides marketing and reservation services. With permission from Complainant Gorstew, Unique registered the domain names <sandalsresorts.com>, <beaches.com>, and <sandals.com>. These are the only official websites sponsored by Complainant Gorstew.

Respondent is the owner of a travel agency, selling, among other services, vacation packages to the Sandals Hotels and Beaches Resorts. Respondent’s travel agency is named Twinsberg Travel, which has been the Respondent in prior UDRP proceedings for registering domain names that infringe upon Complainant Gorstew’s marks.

The domain names in question lead Internet users to a website operated by Respondent.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that a 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.

Complainants have rights in the registered marks "SANDALS" and "BEACHES." Respondent’s domain names contain the registered mark "sandals" in addition to other tourism related words. Respondent’s domain names are confusingly similar to Complainants’ trademarks. See State Farm v. Kaufman, FA 94335 (Nat. Arb. Forum April 24, 2000) (finding that <statefarmdirect.com> is confusingly similar to Complainant’s registered mark).

Complainants contend that Respondent has no rights or legitimate interests in the domain names. The fact that Respondent is a travel agent and sells Sandals vacations does not give Respondent any interest or legitimate right to register the "Beaches" or "Sandals" trademarks, which it does not own or have a license to use, as a domain name. The record permits an inference that such registration is calculated to and was intended to lead users to believe that the website is sponsored by an entity that owns the Sandals Hotels and Beaches Resorts. Respondent is not commonly known by the "Sandals" mark nor "Beaches" mark. Policy ¶ 4.c.(ii).

Respondent has not offered evidence that it has any rights or legitimate interests under Policy ¶ 4.c. Therefore, the Panel concludes that Respondent has no rights or legitimate interests in the domain names. See Cunard Line Ltd. v. Champion Travel, Inc., FA 92053 (Nat. Arb. Forum Mar. 7, 2000) (finding that the Respondent had no rights or legitimate interests in the domain name <cunardcruise.com>).

Complainants contend that Respondent registered and used the domain names in bad faith. Respondent has not denied this assertion.

Respondent’s website leads Internet users to believe that Respondent’s website is the official home page of Sandals Hotels and Beaches Resorts. Attracting Internet users to a website by creating confusion with a Complainant’s marks as to the sponsorship of the site is evidence of bad faith. Policy ¶ 4.b.(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where the Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as the Complainant).

Therefore, the Panel concludes that the domain names were registered and used in bad faith.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the Panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain names, "beachesoutletstore.com", "sandals-hotels.com", "twinsburgtravelbeaches.com" and "twinsburgtravelsandals.com", be transferred from Respondent to Complainants.

Honorable Carolyn Marks Johnson