Generic Top Level Domain Name (gTLD) Decisions

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

vs.

Shop A-Z.com, Inc., Carlsbad, CA, USA
RESPONDENT.

DECISION
Claim Number: FA0005000094941

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain names at issue are “SHOPSANDALS.COM” and “SHOP-SANDALS.COM”, registered with Network Solutions, Inc. (“NSI”).

PANELIST(s)

Honorable Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 05/31/2000; The Forum received a hard copy of the Complaint on 05/31/2000.

On 06/12/2000, NSI confirmed by e-mail to The Forum that the domain names “SHOPSANDALS.COM” and “SHOP-SANDALS.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 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 06/06/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 06/26/2000 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.

On 06/26/2000, 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 06/27/2000, pursuant to Complainant’s 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 in the case file, 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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the Respondent has registered domain names that are confusingly similar to its trademark registered for and in use by the Complainant.  Further, the Complainant contends that the Respondent has no rights or legitimate interests to the domain names, and that the respondent has registered and is using the domain names in bad faith.                   

B. Respondent

The Respondent submitted no timely or substantive response in this matter.

FINDINGS

A Response was due 06/26/2000 but was filed 06/30/2000. The Complaint Notification and Instructions form specifies in bold type the date for filing the Response under “5. Deadlines.” No motion for an extension of time in which to file and no affidavits or other offers of proof were attached to the untimely response. Accordingly, no factual claim of the Complainant is effectively controverted and this Decision would result in the same relief granted to Complainant if the untimely response had been given full consideration. UFCW International Union v. Union Automation and Keith Locke, FA 94665 (Nat. Arb. Forum June 8, 2000) (finding that all reasonable inferences of fact in the allegations of the Complaint will be taken as true where the Response was filed fourteen days late without supporting motions, affidavits or data).  Respondent’s failure to deliver the Complaint to counsel until after the time for a Response has passed is not good cause for late filing. By virtue of the fact that there has been no timely or substantive appearance by Respondent, all reasonable inferences of fact in the allegations of the Complaint will be taken to be true. Id.

The Complainant (Gorstew) is the owner of the trademark SANDALS (registered 09/18/1990; No. 1,614,295) for use in connection with hotel reservation services, sightseeing tours, and motor vehicle transportation.  The Complainant (Gorstew) also owns the trademark SANDALS (registered 04/22/1997; No. 2,054,532) in connection with merchandise associated with hotel and hospitality services (including luggage, passport cases, clothing, umbrellas, etc.).  The Complainant (Gorstew) has permitted its trademark to be associated with a chain of all-inclusive hotels that do business under the name “Sandals Resorts.”  Each hotel has a separate “Sandals” name (ex: Sandals Inn, Sandals Antigua, Sandals Montego Bay, etc.) that is advertised throughout the world.

The Complainant (Unique) is a Florida corporation that serves as the worldwide representative for Sandals Resorts and provides marketing and reservation services.  In connection with its marketing services, Unique has registered the following domain names: <sandalsresorts.com> and <sandals.com>.  These two websites are the only authorized sites by the Complainant.

The Respondent registered the domain names “SHOPSANDALS.COM” and “SHOP-SANDALS.COM”.  The Respondent is a retail travel agent that sells Sandals Resort vacation packages.

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 to support a claim 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.

The Complainant has offered exhibits in support of its claims, whereas the Respondent has submitted no timely response in the matter.  The Respondent’s failure to timely and substantively dispute the allegations of the Complainant permits the inference that the Complainant’s allegations are true.  Further, the Respondent’s failure to respond timely and substantively permits the inference that the Respondent knows that its websites are misleading and intentionally diverting business from the Complainant.  See Hewlett-Packard Company v. Full System, FA 94637 (Nat. Arb. Forum May 22, 2000).  Applying the Policy to the issue in this case furthers these inferences.

Identical and/or Confusingly Similar

The Respondent’s mark is confusingly similar to the Complainant’s mark.  The domain names in question incorporate the Complainant’s SANDALS marks.  By infringing upon the Complainant’s marks, the Respondent is attempting to create confusion as to the source of the Complainant’s sponsorship, affiliation, and/or endorsement.  See Marriott Int’l, Inc. v. Café au lait, FA 93670 (Nat. Arb. Forum March 13, 2000) (holding that the Respondent’s domain name <Marriott-Hotel.com> was confusingly similar to Marriott’s marks and domain name <Marriott.com>).  The Respondent’s business is not synonymous with the Complainant’s services; however, the Respondent’s conduct permits the inference that Respondent would like the public to believe that the two companies are affiliated.

Rights or Legitimate Interests

The Respondent did not timely and substantively assert any rights or legitimate interests to the domain names in question. 

The names do not reflect a name that the Respondent is commonly known by.  Policy ¶ 4(c)(ii).  Rather, the Respondent is using a portion of the Complainant’s registered and well-known mark to offer competing services.

The Panel finds that the Respondent is not using the domain names in connection with a bona fide offering of goods and services nor is Respondent making a legitimate noncommercial or fair use of the site.  Policy ¶ 4(c)(i), (iii). Instead, the Respondent seeks to profit from its registration of said domain names by offering competing services and trading upon the image associated with the Sandals name.  Policy ¶ 4(c)(i), (iii).  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>). 

For these reasons, the panel finds that the Respondent has no rights or legitimate interests in the domain names.  

Bad Faith

The Respondent did not deny timely or substantively that its actions were taken in bad faith.

The Respondent’s conduct permits the inference that Respondent registered the domain names in question to intentionally attract Internet users to its website for its commercial gain.  Policy ¶ 4(b)(iv).  Based on the Respondent’s experience in the travel business, the Respondent knew that confusion between the two companies would result.  When Internet users click on the Respondent’s site, they cannot know that they are not on the official “Sandals” website.  If the Respondent’s website is inactive, the consumer may conclude that Sandals Resorts do not have an Internet presence.  In either situation, the Complainant would lose customers and business would be disrupted as a result of the Respondent’s infringing website. Policy ¶ 4(b)(iii).  See Travel Services, Inc. v. Tour Coop of Puerto Rico, FA 92524 (Nat. Arb. Forum Feb 29, 2000). 

Based on the preceding argument, the panel finds that the Respondent registered and used the domain names in bad faith.

DECISION

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, “SHOPSANDALS.COM” and “SHOP-SANDALS.COM” be transferred from the Respondent to the Complainant.

Honorable Carolyn Marks Johnson

Dated: 07/11/2000