Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Gorstew Limited, Jamaica, & Unique Vacations, Inc., Florida ("Complainant") represented by David B. Newman, of Sonnenschein Nath & Rosenthal. The Respondent is Private Holidays, Bellevue, WA, USA ("Respondent").

The domain name at issue is "sandals-smart.com" registered with Internet Domain Registrars.

On April 24, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a Panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on March 6, 2001; the Forum received a hard copy of the Complaint on March 22, 2001.

On March 7, 2001, Internet Domain Registrars confirmed by e-mail to the Forum that the domain name "sandals-smart.com" is registered with Internet Domain Registrars and that the Respondent is the current registrant of the name. Internet Domain Registrars has verified that Respondent is bound by the Internet Domain Registrars registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On March 28, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 17, 2001 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@sandals-smart.com by e-mail.

A late response was received on April 18, 2001 and was determined to be complete. However, an after the deadline response is not in compliance with ICANN Rule #5 (a). The Panel has reviewed the response and determined that the points raised do not affect the outcome of this proceeding as explained below.

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

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that the 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.

The disputed domain name "sandals-smart.com," is confusingly similar because the disputed domain name is primarily comprised of Complainant’s well-established mark. Respondent’s domain name, "sandals-smart.com," is confusingly similar because it is combines Complainant’s mark with a generic term. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that "[n] either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY"); See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word "shop" with the Complainant’s registered mark "llbean" does not circumvent the Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); General Electric Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term "direct" on to the Complainant’s marks (GE CAPTIAL and GECAL) does not alter the underlying mark held by the Complainant, and thus the Respondent’s domain names are confusingly similar); See also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to Complainant’s famous mark) and Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Respondent has not established a right to use Complainants protected mark. The evidence shows Respondent is not commonly known by the disputed domain name, nor is Respondent licensed or otherwise authorized to use the Complainant’s famous mark. See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that "unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services"); See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark or never applied for a license or permission from Complainant to use the trademarked name); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names "Nokia" and/or "wwwNokia").

The Respondent cannot claim to be using the domain name in connection with a bona fide offering of goods and services because linking a domain name that infringes upon another’s marks to a website that competes with the Complainant is not a "bona fide" use. Policy ¶ 4(c)(i). See America Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of a site "as a portal to suck surfers into a site sponsored by Tencent seems hardly legitimate").

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

As Complainant’s agent and competitor in sales, Respondent had to have been aware of Complainant’s famous mark prior to registering the disputed domain name, which shows bad faith. See Ty. Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and thus Respondent should have been aware of it); see also America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith).

Complainant has shown Respondent registered the disputed domain name intentionally to attract Internet users to its competing web site, strictly for commercial gain. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain).

Therefore, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted. Accordingly, it is Ordered that the domain name, "sandals-smart.com" be transferred from Respondent to Complainant.