Generic Top Level Domain Name (gTLD) Decisions

Gorstew Limited, Jamaica, and Unique Vacations, Miami, FL, USA
COMPLAINANT,

vs.

Twinsburg Travel, Twinsburg, OH, USA
RESPONDENT.

DECISION
Claim Number: FA0005000094944

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are “SANDALSHONEYMOON.COM”, SANDALSWEDDINGS.COM”, “SANDALSOUTLET.COM”, “2SANDALS.COM”, “SANDALSJAMAICA.NET”, “SANDALS.ORG”, “SANDALSRESORTS.NET”, “SANDALSBEST.COM”, and “SANDALOUTLETSTORE.COM”, registered with Network Solutions, Inc. (“NSI”).

PANELIST

Judge Irving H. Perluss [Retired] as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on May 30, 2000.

On June 5, 2000, NSI confirmed by e-mail to The Forum that the domain names “SANDALSHONEYMOON.COM”, SANDALSWEDDINGS.COM”, “SANDALSOUTLET.COM”, “2SANDALS.COM”, “SANDALSJAMAICA.NET”, “SANDALS.ORG”, “SANDALSRESORTS.NET”, “SANDALSBEST.COM”, and “SANDALOUTLETSTORE.COM” are registered with NSI and that the Respondent is the current registrant of the name.  NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 for the name “SANDALSOUTLETSTORE.COM” and by Version 4.0 for the rest of the names, 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 June 9, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 29, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.  Respondent filed a timely Response.

Pursuant to Complainant’s and Respondent’s request to have the dispute decided by a Single Member panel, The Forum appointed Judge Irving H. Perluss, [Retired] as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

1. Complainant

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

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

3.         Respondent has registered the domain names 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 websites associated with the offending domain names.

2. Respondent

1.         “Sandals” is a generic term..

2.         Respondent has a legitimate interest in the registered domain names.

3.         Respondent has not registered and/or used the domain names in bad faith.  To the contrary, it has acted as an approved partner and not a competitor in bringing guests to Complainant’s resorts.

FINDINGS

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, as follows:

Sandals Inn

Sandals Royal Jamaican

Sandals Montego Bay

Sandals Negril

Sandals Ocho Rios

Sandals Dunn’s River

Sandals Antigua

Sandals St. Lucia

Sandals Halcyon

3.         Over the years, Sandals Resorts have spent millions of dollars in advertising and promotion to familiarize the public with their resort hotels.  The Sandals Resort hotels constitute the largest chain of all-inclusive couples-only hotels in the Caribbean.

4.         Complainant 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 with Network Solutions.  Complainant Unique maintains substantial websites under these domain names which advertise the Sandals Resorts and from which websites consumers can obtain information about the various Sandals Resorts and make reservations directly with Unique for travel to the Sandals Resorts.

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

6.         Respondent Twinsburg Travel (“Twinsburg”) has registered nine (9) domain names which use the word “Sandals.”  They are:

sandalshoneymoon.com

sandalsweddings.com

sandalsoutlet.com

2sandals.com

sandalsjamaica.net

sandals.org

sandalsresorts.net

sandalsbest.com

sandalsoutletstore.com

7.         Respondent is a travel agency and has been selling Sandals Resort packages since the agency opened in 1994.

8.         Complainant Gorstew enrolled Respondent into the Certified Sandals Specialist Partnership Program (CSS) on January 12, 1996.  As such, Respondent works with Complainant in cooperative advertising programs, and Respondent’s Sandals-related sales literature, stationery, business cards, and advertisement copy are developed with Complainant’s input and prior knowledge.

9.         Respondent originated the phrase “The Sandals Outlet Store,” and first used it on May 20, 1996.  In June 1996, Respondent established its first website.  On this website, Respondent sold its first Sandals vacation trip over the Internet.

10.       Over the past four years, Respondent has worked closely with Complainant’s top managers, who have encouraged Respondent’s website from the first time it was ever discussed, even before Complainant’s site was created.  Complainant has closely and continuously monitored Respondent’s website.

11.       At least one version of the website contained changes in style and size requested by Complainant, and it also contained the photograph and endorsement of the Chairman of Sandals Resorts.

12.       Respondent has spent time and effort developing Complainant’s business over the Internet.  It has sold over 850 rooms to date in the year 2000.

13.       Over the years, Respondent has made Complainant approximately $9,000,000 in sales.  In 1999, Respondent focused over 90% of its entire business on selling Sandals vacation over the Internet, which has been very profitable to Respondent and Complainant.

14.       Respondent’s employees have been feted by Complainant’s management, and Respondent’s owners were given first class airfare and paid accommodations at Sandals St. Lucia.

15.       Respondent has its name, Twinsburg Travel, prominently displayed on every page of Respondent’s website.  It has not represented to anyone that it is Sandals, or that its website is the official Sandals website.  Respondent’s employees answer the phone “Twinsburg Travel,” and Respondent advertises in print and radio as Twinsburg Travel.

16.       Potential Sandals customers have the option of making their reservations directly through Complainant at its 1-888-Sandals number or through its official website, or working with a travel agency.  Respondent is listed as a travel agency to contact, on the official Sandals website.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (“Policy”) directs that the Complainant must prove each of the following three elements in order to demonstrate claims 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; and

(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 by Respondent.

Each of these elements will be considered seriatim.

Identical and/or Confusingly Similar

On this issue, Respondent cannot prevail.  While as Respondent suggests, “sandals” is a generic term derived from the Latin “sandalium” and the Greek sandalon,” the term as here used is high on the evaluation spectrum.  It has acquired a secondary meaning and is a “suggestive” mark, because imagination is required to determine the nature of Complainant’s offering.  [See, Money Store v. Harris Corp. Fin., Inc. (7^th Cir., 1982) [1982] USCA7 728; 689 F.2d 666, 673-674.]

The term utilized in the mark and the term utilized in the domain names are identical and could be confusingly similar.  As will be seen, however, the similarity was not without the implied consent of Complainant.  Moreover, the confusion has been somewhat ameliorated by the Respondent placing its own name on the website, i.e., “The Sandals Outlet Store, a division of Twinsburg Travel.”

Rights or Legitimate Interests

On this issue Complainant must lose.

While Complainant apparently did not expressly consent to the use of its mark, its words, conduct and inaction were effective as a manifestation of consent.  [See, Restatement of the Law, Third, Unfair Competition (1995) §29, Comment a.]  Complainant also clearly engaged in affirmative conduct such as expressions of encouragement and more, fairly implying consent [Restatement, supra, §29, Comment c].

Moreover, the Panelist has concluded that Complainant is estopped from terminating the implied consent which, if allowed, would be inequitable because of Respondent’s reasonable reliance, evaluated in the light of the long-lasting relationship between the parties.  [Restatement, supra, §29, Comment d; see, also, Money Store v. Harris Corp. Fin., Inc., supra (7^th Cir., 1982) [1982] USCA7 728; 689 F.2d 666, 674; Lebold v. Inland Steel Co. (7^th Cir., 1941) 125 F.2d 369, 375.]

Bad Faith

Section 4b of the I ANN Uniform Domain Name Dispute Policy sets forth circumstances in particular, but without limitation, which would be evidence of bad faith registration and use of a domain name in bad faith.  The circumstances are:

(i) circumstances indicating that a Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) a Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that a Respondent has engaged in a pattern of such conduct; or

(iii) a Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, a Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location of a product or service on the Complainant’s website or location.

In the view of the Panelist, only paragraph iv appears to have relevance here.  But, even Paragraph iv under the circumstances here presented, really does not help Complainant.

This is because the evidence demonstrates that Complainant and Respondent are not truly competitors, but, in fact, that they are partners in seeking to attract guests to the Sandals Resorts.  Their interaction over the years underscores this conclusion.  Both make money (a 10% commission is paid to Respondent) when Respondent sells a Sandals Resort package.  In other words, Respondent is not acting in bad faith, but, as an agent, is acting in good faith on behalf of Sandals Resorts, as well as itself.

DECISION

Based on the above findings, conclusions and pursuant to Rule 4(i), it is decided as follows:

The request of Complainant to transfer the domain names in issue from Respondent Twinsburg Travel to Complainant Unique Vacations be, and the same is hereby denied.  Complainant has not proved elements 2 and 3 of paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy.

JUDGE IRVING H. PERLUSS [Retired]

Panelist Dated: July 7, 2000