Generic Top Level Domain Name (gTLD) Decisions

Complainant is Gorstew Limited, Kingston, II, Jamaica ("Complainant") represented by David B. Newman, of Sonnenschein Nath & Rosenthal. Respondent is Sue Oschanski Dylan Michael Associates, LLC, Elmwood Park, NJ, USA ("Respondent").

The domain name at issue is "sandalsshowroom.com" registered with Network Solutions, Inc.

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as Panelist in this proceeding.

James P. Buchele, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 29, 2001; the Forum received a hard copy of the Complaint on March 30, 2001.

On March 30, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "sandalsshowroom.com" is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 April 2, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 23, 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@sandalsshowroom.com by e-mail.

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 April 30, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "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, without the benefit of any Response from Respondent.

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

B. Respondent

Respondent has not submitted a response in this matter.

Complainant, Gorstew Limited & Unique Vacations, Inc., owns the registered mark SANDALS, which it has used since 1981 in connection with hotel reservation services, sightseeing tours and motor vehicle transportation. In addition, Complainant’s mark is used on merchandise associated with hotel and hospitality services. Complainant’s mark is advertised extensively throughout the world.

Respondent sells various vacation packages bearing Complainant’s mark. However, Respondent does not own, operate or manage any of the hotels that conduct business under Complainant’s mark. Accordingly, Respondent is not licensed or otherwise authorized to use Complainant’s mark in any form. To date, Respondent has used the disputed domain name to sell vacation and travel services.

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

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.

Complainant’s rights are evidenced by its registered mark, SANDALS.

Respondent’s domain name, sandalsshowroom.com, is confusingly similar because it combines Complainant’s famous mark with a generic term. See 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 Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding <westfieldshipping.com> confusingly similar because WESTFIELD mark was dominant element).

In addition, the disputed domain name is so confusingly similar reasonable Internet users would assume the domain name is somehow associated with Complainant’s well-established mark. See 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 website, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

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

Respondent is not commonly known by the disputed domain name, nor is Respondent licensed or in any way authorized to use Complainant’s famous mark. 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Moreover, Respondent asserted no rights or legitimate interests in the disputed domain name; therefore, the Panel is free to conclude Respondent has no such rights or legitimate interests in the domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that "Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names"); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names and no use of the domain names has been proven).

The evidence supports the conclusion that Respondent was aware of Complainant’s mark prior to registering the disputed domain name, which demonstrates bad faith. See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names); see also Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact "that the Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue").

Further, it appears 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).

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

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, sandalsshowroom.com, be transferred from Respondent to Complainant.