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Gorstew Limited & Unique
Vacations, Inc. vs. Sunset Leisure Group DECISION PARTIES The Complainant is Gorstew Limited (“Gorstew”), Jamaica, and Unique Vacations, Inc.(“Unique”), Miami, FL, USA, (collectively the"Complainant"). The Respondent is Sunset Leisure Group (“Sunset”), Long Beach, CA, USA ("Respondent"). REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain names at issue are: “SANDALS-ALL-INCLUSIVE.COM” and “GO-TO-SANDALS.COM”, registered with Network Solutions, Inc. (“NSI”). PANELIST Charles K. McCotter, Jr. 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 06/05/2000, NSI confirmed by e-mail to The Forum that the domain names “SANDALS-ALL-INCLUSIVE.COM” and “GO-TO-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 4.0 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 June 28,2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Charles K. McCotter, Jr. as Panelist. RELIEF SOUGHT The Complainant requests that the domain names be transferred from the Respondent to the Complainant (Unique). PARTIES’ CONTENTIONS A. Complainant The Complainant contends that the domain names which Sunset has registered are confusingly similar to trademarks owned by Gorstew and domain names registered to Unique; that Sunset does not have rights or legitimate interests in respect to the domain names registered by Sunset; that the fact that Sunset is a travel agent and sells Sandals Resorts vacations does not give it any interest in or right to register the “Sandals” names; and that Sunset has registered and used the domain names in bad faith. The 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 The Respondent contends that its domain names are not identical, nor confusingly similar to the Complainant’s trademark; that the Respondent has a genuine, legitimate commercial interest in the use of the domain names because the Respondent is a travel agency which predominately represents Sandals resorts with respect to the domain names; that the Respondent is not a competitor of Complainant; and that the Respondent registered and uses the domain names in good faith. FINDINGS 1. The Complaint is based upon the trademarks “Sandals”, Registration Nos.1614295 and 2054532 which are used in connection with the operation of hotels and related hospitality services and products. Gorstew is the owner of the trademark “Sandals” for use in connection with hotel reservations services, sightseeing tours and motor vehicle transportation. The “Sandals” trademark was first used in 1981 and was registered in International Classes 39 and 42 in 1990. On April 27, 1997, the “Sandals” trademark was registered in International Classes 16, 18, and 25, to be used on a variety of merchandise associated with hotel and hospitality services, including luggage, passport cases, clothing, umbrellas and photograph albums. 2. Through business and other agreements, Gorstew has permitted the “Sandals” trademark to be associated with a chain of all-inclusive, couples-only hotels which do business under the name “Sandals Resorts”. Sandals Resorts is a large chain of all-inclusive, couples-only hotels in the Caribbean with nine (9) hotels in Jamaica, Antigua, St. Lucia, and the Bahamas. Sandals Resorts are advertised extensively throughout the world. Over the years, Sandals Resorts has spent millions of dollars in advertising and promotion to familiarize the public with their product. 3. 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” and “SANDALS.COM” (July 5, 1995) with NSI. 4. 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. 5. 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.
6. The Respondent, Sunset, has registered two (2) domain names which incorporate the word “Sandals”: SANDALS-ALL-INCLUSIVE.COM GO-TO-SANDALS.COM 7.Sunset is a travel agent. One of the primary products it sells is vacation packages to Sandals Resorts. Sunset does not own, operate or manage any of the hotels that conduct business under the name Sandals Resorts. 8. The Respondent’s domain names, “SANDALS-ALL-INCLUSIVE.COM” and “GO-TO-SANDALS.COM”, are not identical nor confusingly similar to the Complainant’s trademark “Sandals”. Respondent’s subject domain names identify Sunset as the owner and operator of the website in addition to featuring a pronounced graphic logo approved by Sandals that denotes to the internet user that Sunset is a Certified Sandals Specialist. 9. Both domain names incorporate a distinct descriptive word or phrase, which are not incorporated in the trademark “Sandals”. The other distinctive elements in each domain name, respectively, are “go‑to‑” and “all‑inclusive”. Although Sunset has not yet acquired registration, Sunset claims and reserves all rights to the Trademark “go-to” TM in Class 039 and 042 in reference to travel, destinations and travel information via global computer services. The phrase “all‑inclusive” describes a type of travel and means that all food, drinks, water sports, gratuities, etc are included in the price of the vacation. Sunset does business as Sunset All‑Inclusive Vacations. Sunset claims and reserves all rights to the Trademark “Sunset All‑Inclusive Vacations” TM in Class 039 and 042 in reference to travel, destinations and travel information via global computer services. Therefore, the use of incorporating a distinct phrase like “go‑to‑“ or “all‑inclusive” into a domain name makes these domain names distinguishable and not confusingly similar to the trademark “Sandals”.
10. Respondent has genuine, legitimate commercial interest in the use of the domain names. Sunset is a travel agency which predominately represents Sandals resorts with respect to the domain names. Respondent is not a competitor of Complainant. Respondent is a Certified Sandals Specialist and an approved travel agent representative of Sandals and Beaches Resorts. As a Certified Sandals Specialist, Respondent has co‑operatively with Complainant extensively advertised, and marketed, and booked Complainant’s Sandals and Beaches Resorts. 11. Respondent has not registered or used the subject domain names in bad faith. Sunset is a Certified Sandals Specialist and does market and sell trips to Sandals and Beaches Resorts. The Respondent has not prevented Complainant from registering domain names utilizing the Sandals trademark. Respondent did not register the domain names with the intention of selling them. Respondent has not disrupted the business of Complainant nor wrongfully attracted Internet users by creating confusion that the Respondent’s domain names are actually official websites of Sandals. 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 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; 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. Identical and/or Confusingly Similar The domain names which the Respondent has registered are not identical or confusingly similar to the trademarks owned by Gorstew and the domain names registered to Unique. Rights or Legitimate Interests The Respondent has rights or legitimate interests in the domain names. The Respondent has presented sufficient evidence to prove that, prior to notice of the dispute, it used the domain names in connection with a bona fide offering of the Complainant’s goods or services. Bad Faith The Complainant has failed to show that the Respondent registered or used the domain name in bad faith. There is no evidence (1) that the Respondent registered the domain name primarily for the purpose of transferring the domain name to the Complainant or a competitor of the Complainant for consideration in excess of out-of-pocket expenses directly related to the domain name; (2) that the Respondent has engaged in a pattern of registering domain names for the purpose of preventing owners of trademarks from reflecting the mark in a corresponding domain name; (3) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (4) that the Respondent has intentionally attempted to attract for commercial gain Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location. DECISION Based upon the above findings and conclusions, I find in favor of the Respondent. Therefore, the relief requested by the Complainant pursuant to Paragraph 4.i of the Policy is Denied. The Respondent shall not be required to transfer to the Complainant(Unique)the domain names “SANDALS-ALL-INCLUSIVE.COM” and “GO-TO-SANDALS.COM”. __________________________________________________ Charles K. McCotter, Jr., Arbitrator |