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Gorstew Limited and Unique Vacations, Inc. v. Caribbean Tours & Cruises [2000] GENDND 787 (28 July 2000)

National Arbitration Forum

Decision

Claim Number: FA0005000094927

Complainants are Gorstew Limited, Jamaica, and Unique Vacations, Miami, FL, USA

("Complainant"). Respondent is Caribbean Tours & Cruises, Lexington, KY, USA

("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s) The domain names at issue are: "SANDALSRESORTSJAMAICA.COM";

"SANDALSROYALBAHAMIAN.COM";

"SANDALS-ROYALBAHAMIAN.COM";

"SANDALSDUNNSRIVER.COM";

"SANDALSROYALCARIBBEAN.COM";

"SANDALS-ROYAL CARIBBEAN.COM";

"SANDALSMONTEGOBAY.COM";

"SANDALSINN.COM";

"SANDALSNEGRIL.COM";

"SANDALS-NEGRIL.COM";

"SANDALS-STLUCIA.COM";

"SANDALS-ANTIGUA.COM";

"SANDALS-DUNNSRIVER.COM";

"SANDALS-OCHORIOS .COM";

"SANDALS-ALL-INCLUSIVE-RESORTS.COM";

"SANDALSBEACHES.COM";

"SANDALS-BEACHES.COM";

"SANDALSBEACHESRESORTS.COM";

"SANDALS-BEACHESRESORTS.COM";

"BEACHESINN.COM";

"BEACHES-INN.COM";

"BEACHESTURKSCAICOS.COM";

"BEACHESTURKS.COM";

"BEACHESNEGRIL.COM";

"BEACHES-NEGRIL.COM":

registered with Network Solutions, Inc. ("NSI").

PANELIST(s)

M. Kelly Tillery, Esquire

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 05/30/2000; The Forum received a hard copy of the Complaint on 05/30/2000.

On 06/12/2000, NSI confirmed by e-mail to The Forum that the above listed domain names 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 4.0 for all the names except BEACHESTURKS.COM, SANDALS ALL-INCLUSIVE-RESORTS.COM, SANDALS-BEACHES-RESORTS.COM, BEACHESTURKSCAICOS.COM, and BEACHES-INN.COM, whose registrants are bound by Version 5.0.

On 06/13/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/05/2000 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 07/10/2000, pursuant to Complainant's request to have the dispute decided by a Single Member Panel, The Forum appointed M. Kelly Tillery, Esquire as Panelist.

RELIEF SOUGHT

Complainant requests that all twenty-five (25) domain names be transferred from Respondent to Complainant.

Complainant Gorstew Limited claims that it is the owner of at least three (3) valid, Federally-registered trademarks as follows:

MARK CLASS REGISTRATION NO. ISSUE DATE DATE OF FIRST USE

Sandals 39,42 1,614,295 9/18/90 12/15/81 Sandals 16,18,25 2,054,532 4/22/97 1991 Beaches A part of the Sandals Family 42 2,098,026 9/6/97 2/7/97 Complainant Unique Vacations, Inc. claims to be the authorized, world-wide representative of Complainant Gorstew Limited which provides marketing, reservation and web site services. Gorstew Limited owns and operates the following Caribbean resorts: COMPLAINANTS’ RESORTS SANDALS BEACHES Sandals Inn Beaches Negril Sandals Royal Jamaican Beaches Jamaica Sandals Montego Bay Beaches Turks and Caicos Sandals Ocho Rios Beaches Turquoise Sandals Dunn’s River Sandals Antigua Sandals Halcyon St. Lucia Sandals St. Lucia Sandals Negril Beach Sandals Royal Caribbean Sandals Royal Bahamian In addition, in connection with the operation of resort locations, Complainant Gorstew Limited, through Unique Vacations, Inc., registered and utilizes the following domain names: COMPLAINANTS’ DOMAIN NAMES DOMAIN NAMES CREATION DATE sandalsresorts.com 5/18/98 sandals.com 7/5/95 beaches.com 4/15/95 Complainant complain that Respondent has registered twenty (25) objectionable domain names from January 27, 1999 through March 28, 2000 as follows: RESPONDENT’S TWENTY-FIVE DOMAIN NAMES DOMAIN NAMES CREATION DATE

Complainants complain that Respondent is a retail travel agent which sells, among other things, vacation packages to Sandals and Beaches resorts and that it does not own or manage any of the resorts that conduct business under the Sandals/Beaches names and that it has no authority from either Complainant to utilize any mark identical to or confusingly similar with the aforementioned registered marks. Complainants further complains that Respondent’s domain names are identical and/or confusingly similar to the aforementioned marks and are used solely to lead the public to believe that Respondent’s Web Sites are in fact the Web Sites of Complainants and/or that they are sponsored or authorized by Complainants. Complainants further claim that Respondent has no rights or legitimate interests in respect to any of the domain names and that Respondent has registered and is using them in bad faith to prohibit Complainants’ from registering identical domain names and to disrupt Complainants’ business. B. Respondent Respondent does not dispute Complainants’ ownership of the Sandals and Beaches marks, but claims that Respondent’s uses of its domain names are in compliance with Complainant’s guidelines for the use of said marks by travel agents. Respondent claims that Complainant has known of, approved of and encouraged Respondent in said uses since early 1999. Respondent registered its first allegedly offending domain name on January 6, 2000 (sandalsbeaches.com) and has continued through and up to March 28, 2000 to register additional allegedly offending names. Respondent claims that, of the twenty five (25) domain names in question here, nine (9) resolve to active web sites, one (1) is "under construction" and the remaining fifteen (15) are yet to be implemented. Respondent further claims that it has made continuous and bona fide use of the domain names at issue, its travel agency has become commonly known by use of the domain names, that it has made and continues to make legitimate use of the domain names, that the "sandalsbeaches.com" web site receives approximately 70,000 hits per month, that it has not used the domain names in bad faith and that Complainants have acquiesced in Respondent’s use of the Sandals and Beaches marks and thus it is entitled to an implied license. FINDINGS Complainants have sustained their burden to prove by a preponderance of the credible, relevant, admissible evidence that all twenty five (25) of Respondent’s domain names are identical and/or confusingly similar to valid, Federally-registered trademarks/service marks in which Complainants have rights. Complainants have also sustained their burden to prove by a preponderance of the credible, relevant, admissible evidence that Respondent has no rights or legitimate interests in respect to any of said twenty five (25) domain names. Complainants have also sustained their burden to prove by a preponderance of the credible, relevant, admissible evidence that all of Respondent’s twenty five (25) domain names have been registered and are being used in bad faith. DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the domain name; and

The evidence clearly establishes that Complainant Gorstew is the owner of valid, Federally-registered trademarks for Sandals and Beaches, that Complainants have used said marks widely and extensively throughout the United States and the world advertising their goods and services. Respondent does not question the validity and/or strength of Complainant’s marks.

In fact, Respondent continues to and wishes to continue to utilize those very marks in its domain names, for the same reason that Complainants utilizes them, that is to identify and distinguish the products and services of Complainants and to draw customers and potential customers.

Respondent registered the first of the twenty-five (25) domain names in question on January 7, 1999 and has continued to register similar marks through March 28, 2000. However, there is no question on this record that Complainant Gorstew has utilized these marks extensively since as early as 1981 for Sandals and as early as 1997 for Beaches, long before registration of any domain name by Respondent. Thus, Respondent is clearly a subsequent user of each of these marks.

Under such circumstances, Respondent is obligated to either secure a license from Complainant trademark owner to utilize its marks or use a mark that is neither identical nor confusingly similar thereto.

Respondent has consciously chosen to utilize marks that are in fact either identical and/or certainly confusingly similar to the valid, Federally-registered marks of Complainants.

Respondent has actually registered three (3) different classes of domain names utilizing the marks of Complainants; (1) a group of domain names which include the word Sandals and the name of one of Complainants’ hotels, (2) a group of domain names which include the word Beaches and the name of one of Complainants’ hotels and (3) a group of domain names including a combination of the words Sandals and Beaches. The only domain name that does not fit one of these categories is: "sandals-all-inclusive-resorts.com" which, of course, uses Sandals and a tagline often used by Complainants in Sandals literature. Whether used separately, together, separated by a hyphen or otherwise, each of the twenty-five are either identical or confusingly similar to marks in which Complainants have substantial rights.

Based upon the evidence of record, it is beyond question that Respondent have consciously selected, registered and utilized domain names which are either identical or confusingly similar to the valid Federally-registered marks of Complainants. It is almost beyond belief how Respondent could, with straight face, claim otherwise. It is difficult, if not impossible, for example, for this Arbitrator to believe that the 70,000 individuals who "hit" Respondent’s website "sandalsbeaches.com" were actually looking for the website of a retail travel agency in Lexington, Kentucky. Respondent candidly admit that it seeks to sell vacation packages to customers who wish to attend a Sandals and/or Beaches resort. Respondent clearly wants customers and potential customers to believe that the domain names are sponsored by, associated with and/or authorized by Complainants. Under such circumstances, Respondent may utilize same only if it has a valid license from Complainants.

B. Rights or Legitimate Interest

Respondent is neither the owner of nor a licensee of the aforementioned Federally-registered marks for Sandals and/or Beaches. Neither its business name, Caribbean Tours and Cruises, nor the name of its principal, Tom Carr, is even close to Beaches or Sandals.

While Respondent has produced some evidence, albeit anecdotal, that some employees or agents of Complainants were aware of and may have tacitly approved its utilization of the "sandalsbeaches.com" domain name (only 1 of 25 in question), this Arbitrator cannot, upon this record, find that such evidence proves a valid trademark license, implied or otherwise. No evidence whatsoever exists of any such knowledge/approval of any of the other twenty-four (24) domain names.

Further, the evidence does not support Respondent’s contention that the use of any of these domain names is in accord with Complainant’s guidelines for travel agents.

Respondent acknowledges that it registered these domain names with the specific intent desire to sell services to customers who wish to go to resorts owned and operated by Complainants, presumably for which Respondents would be paid a standard travel agent percentage or fee. This is classic trademark infringement, even if the ultimate result of same is that some revenue flows to the owner of the marks.

The only other basis upon which Respondent can claim to demonstrate rights to and legitimate interest in said domain names is ICANN Rule 4(c)(i). That Rule provides that Respondent may demonstrate its rights to and legitimate interest in its domain names if the Arbitrator finds that, before any notice of this dispute, Respondent used or made demonstrable preparations to use any of those domain names or any names corresponding to the domain names in connection with a bona fide offering of goods or services.

Respondent acknowledges that at least fifteen (15) of the domain names in question have not yet been "used" by Respondent and that one is "under construction." However, neither Respondent nor Complainants have identified those with any particularity making individual analysis somewhat cumbersome on this issue. The record also contains no evidence of "demonstrable preparations to use same." Thus, clearly at least sixteen (16) of the domain names in question cannot not possibly meet the requirements of Rule 4(c)(i).

Based upon the record, it appears that only the domain name "sandalsbeaches.com" could possibly meet the requirements of Rule 4(c)(i).

While the record reflects that Respondent may in fact have been "offering services" utilizing "sandalsbeaches.com" since as early as January 7, 1999 and that Respondent first received notice of this dispute on June 13, 2000 upon receipt of the "Notification of Complaint and Commencement of Administrative Proceeding", this Arbitrator cannot find that such offering of services was "bona fide." The American Heritage Dictionary of the English Language (Third Edition, 1992) defines "bona fide" as "made or carried out in good faith", "authentic" or "genuine." This Arbitrator cannot find that the use by Respondent of marks identical and/or confusingly similar to valid, Federally-registered marks of another to constitute offering of services "in good faith" and certainly not "authentic" or "genuine", especially since there is no authorization from Complainants. Thus, Rule 4(c)(i) is of no avail to Respondent on this record.

While this Arbitrator is not bound by prior decisions of other Arbitrators, Complainant has cited a number of ICANN Arbitration decisions in similar cases in which similar results have been obtained and with which this decision is consistent.

Acceptance of Respondent’s arguments would permit Respondent or any other travel agent to register and use any presently unregistered versions of domain names which include the trademarks or service marks (registered or unregistered) of thousands of other airlines, hotels, resorts and the like. Neither The Lanham Act nor the ICANN Policy or Rules provide for or intend such a result. Permitting Respondent to retain the domain names in question would amount to the grant of a compulsory license, a result neither sanctioned nor permitted by The Lanham Act, the ICANN Policy or the ICANN Rules.

in question, Respondent, by its own admission, was well aware of the registered trademarks and rights of Complainants. Indeed, even if Respondent was not actually aware of same, the valid, Federal registrations issued in 1990 and 1997 were all prior to the registration by Respondent’s of its first domain name on January 7, 1999 ("sandalsbeaches.com"); thus Respondent certainly had constructive knowledge of same.

As set forth hereinabove, it is clear from the evidence that Respondent registered these domain names with the intent to draw customers of Complainants to Respondent’s Web Site. ICANN Rule 4(b)(iv) sets forth some circumstances under which an Arbitrator may find registration and use to be in bad faith:

Based upon the foregoing, there can be no question that it was not only the intent upon registration but remains the intent and practice of Respondent to do precisely what is prohibited by ICANN Rule 4(b)(iv), that is, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation and/or endorsement of Respondent’s web site or location of a product or service on its web site or location.

Thus, the evidence is substantial that Respondents have registered all twenty-five of these domain names in bad faith and are using same in bad faith. Respondent has reaped where it has not sown and the prevention of same is the foundation of trademark and domain name protection.

Each of Respondent’s twenty-five (25) domain names should be immediately transferred to Complainant. M. Kelly Tillery, Esquire, Arbitrator July 28, 2000

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