Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Gorstew Limited, Kingston, Jamaica ("Complainant") represented by David B. Newman, of Sonnenschein Nath & Rosenthal. The Respondent is JJ Domains, Grants Pass, OR, USA ("Respondent").

The domain name at issue is "sandels.com" registered with GANDI.

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

Judge Irving H. Perluss (Retired) is the Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on March 19, 2001; the Forum received a hard copy of the Complaint on March 22, 2001.

On March 21, 2001, GANDI confirmed by e-mail to the Forum that the domain name "sandels.com" is registered with GANDI and that the Respondent is the current registrant of the name. GANDI has verified that Respondent is bound by the GANDI 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 3, 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@sandels.com by e-mail.

A timely response was received and determined to be complete on April 23, 2001.

On April 27, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

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

A. Complainant

1. Respondent’s domain name is confusingly similar to those of Complainant Gorstew which owns the trademark "Sandals."

2. Respondent has no legitimate interest in the offending domain name which incorporates the trademark of a competitor.

3. Respondent has registered the domain name in bad faith to prevent Complainant Gorstew, the owner of the "Sandals" trademark, from reflecting that mark in corresponding domain names, to disrupt the business of the Sandals Resorts, and to attract, for commercial gain, Internet users to Respondent’s products by causing confusion as to the sponsorship of the websites associated with the offending domain name.

B. Respondent

1. Respondent’s domain name is similar but not confusingly similar to Complainant’s mark.

2. Respondent has a legitimate interest in the registered domain name.

3. Respondent has not registered and/or used the domain name in bad faith.

1. Complainant Gorstew is the owner of the trademark "Sandals" first used in 1981, and registered with the United States Patent and Trademark Office in 1990 and 1997, numbered 1614295 and 2054532, respectively. The trademark is used in connection with the operation of Complainant’s nine resort hotels, i.e., "Sandals Resorts," and with the sale of related services and products.

2. Sandals Resorts is the largest chain of all-inclusive couples-only hotels in the Caribbean with nine (9) hotels in Jamaica, Antigua, St. Lucia and the Bahamans. Each of the resort hotels has a separate "Sandals" name, as follows:

Sandals Inn

Sandals Royal Jamaican

Sandals Montego Bay

Sandals Negril

Sandals Ocho Rios

Sandals Dunn’s River

Sandals Antigua

Sandals St. Lucia

Sandals Halcyon

3. Over the years, Sandals Resorts have spent millions of dollars in advertising and promotion to familiarize the public with their resort hotels. The Sandals Resort hotels constitute the largest chain of all-inclusive couples-only hotels in the Caribbean.

4. Complainant Unique is a Florida corporation, which serves as the worldwide representative for Sandals Resorts and provides marketing and reservations services.

5. Neither Complainant specifically has authorized the use of the trademark "Sandals" as a part of any third parties’ domain name.

6. Respondent registered the domain name in issue on January 8, 2001.

7. Respondent is not a travel agent and purports, as a courtesy, to direct people using the Internet with misspelled names to a correct website.

8. Respondent does sell sandals for the feet.

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 Panelist finds and determines that the domain name in issue is confusingly similar to Complainant’s marks.

It is true that "sandals" is a generic term derived from the Latin "sandalium" and the Greek "sandalon," the term as here used is high on the evaluation spectrum. It has acquired a secondary meaning and is a "suggestive" mark, because imagination is required to determine the nature of Complainant’s offering. See, Money Store v. Harris Corp. Fin., Inc. (7^th Cir., 1982) [1982] USCA7 728; 689 F.2d 666, 673-674.

Thus, Respondent’s domain name, "sandels.com," is confusingly similar because a reasonable Internet user would assume the domain name is somehow affiliated with Complainant’s famous 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).

Moreover, although the spelling differs from Complainant’s mark, the domain name is phonetically identical to Complainant’s famous mark. See, Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainants mark satisfies Paragraph 4(a)(i) of the Policy).

Indeed, the disputed domain name is a common misspelling of Complainant’s mark. See, Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, <davemathewsband.com> and <davematthewsband.com>, are common misspellings and therefore confusingly similar).

Complainant prevails on this issue.

The Panelist finds and determines that Respondent has no rights or legitimate interest in the disputed domain name because Respondent is not commonly known by the disputed domain name, nor is Respondent licensed or otherwise authorized to use Complainant’s 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, 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 Complaint 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").

Respondent claims that the domain name in issue was utilized only as an "error site," and to describe the footwear it sells. Respondent also contends that its utilization of the domain name falls within the "dilution" exemption of 15 USC. §1125(4)(C) (mistakenly cited by Respondent as 15 USC §43 (c)(4), relating to "all forms of news reporting and news commentary."

The Panel has concluded that Respondent is in error on both counts. As will be seen, the domain name was utilized far more than for just an error site. Moreover, the Panel cannot agree that correcting a spelling error is "news reporting" by even the broadest standard.

If Respondent were a travel agency as charged by Complainant, the decision in this matter would be easy. Clearly, Respondent would be an infringer.

The difficulty, however, is that Complainant has presented no direct evidence establishing that Respondent is itself a travel agency or is affiliated with a travel agency, and Respondent denies that it is a travel agency.

However, Respondent’s claim that it utilizes the domain name only to correct erroneous spelling on the Internet, and to sell footwear is not credible.

Its website in part shows:

Respondent’s listing of "Honeymoon Travel" raises a reasonable inference that it was not providing a courtesy service, but was infringing on Complainant’s mark. Although it now claims that it no longer has the listing of "Honeymoon Travel. . .," unless there is a transfer or agreement, it could resume the listing.

The Panel concludes that the domain name in issue was registered and used in bad faith. See, America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s mark by offering the same chat services via his website as the Complainant); see also, 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).