DECISION

Gorstew Limited and Unique Vacations, Inc. v. KM a/k/a John Barry a/k/a Pro-Life Domains

Claim Number:  FA0306000165151

PARTIES

Complainants are Gorstew Limited and Unique Vacations, Inc., Kingston, Jamaica (“Complainant”) represented by Howard Weller, of Sonnenschein Nath & Rosenthal.  Respondent is KM a/k/a John Barry a/k/a Pro-Life Domains, Bronx, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwsandals.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.

PANEL

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 Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainants submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 25, 2003; the Forum received a hard copy of the Complaint on June 26, 2003.

On June 26, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the Forum that the domain name <wwwsandals.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.Com 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 June 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 21, 2003 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@wwwsandals.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 July 30, 2003, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainants make the following assertions:

1. Respondent’s <wwwsandals.com> domain name is confusingly similar to Complainant’s SANDALS mark.

2. Respondent does not have any rights or legitimate interests in the <wwwsandals.com> domain name.

3. Respondent registered and used the <wwwsandals.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Since 1981, Complainant Gorstew Limited has been using the SANDALS mark in commerce in connection with hotel reservations services, using the mark in connection with the “Sandals Resort” hotel chain, the largest chain of all-inclusive couples-only hotels in the Caribbean. On September 18, 1990, Complainant Gorstew obtained a federal registration for the SANDALS mark on the Principal Register of the U.S. Patent and Trademark Office (U.S. Reg. No. 1,614,295) for these services.

Complainant Unique Vacations, Inc. provides marketing and reservations services for Complainants’ SANDALS resorts. Complainant Unique operates websites which utilize the SANDALS mark at the <sandals.com> and <sandalsresorts.com> domain names, two domain names that are the only official home pages for SANDALS resorts. These domain names were registered with permisson from Complainant Gorstew, the holder of the SANDALS mark.

Respondent, KM a/k/a John Barry a/k/a Pro-Life Domains, registered the <wwwsandals.com> domain name on April 27, 2002, without license or authorization to use Complainant Gorstew’s SANDALS mark for any purpose. Internet users who reach the disputed domain name are redirected to the <abortionismurder.com> domain name, which hosts an informational website providing anti-abortion materials, graphic images of unborn fetuses and instructions on how to donate to various anti-abortion organizations.

DISCUSSION

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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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

Complainant Gorstew has established rights in the SANDALS mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through widespread and continuous use of the mark in commerce.

Respondent’s <wwwsandals.com> domain name is confusingly similar to Complainant’s SANDALS mark. It is an obvious attempt to register a domain name that capitalizes on the common typing error of omitting the period between the “www” and the second-level domain name that an Internet user is attempting to access. The dominant feature of the domain name remains Complainant’s SANDALS mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix "www" does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from Complainant's NEIMAN-MARCUS mark).

Accordingly, the Panel finds that the  <wwwsandals.com> domain name is confusingly similar to Complainant’s SANDALS mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The value of the <wwwsandals.com> domain name is based entirely on its confusing similarity with the SANDALS mark. The Panel need not even address the content that Respondent redirects Internet users to in determining that Respondent is making neither a bona fide offering of goods or services through the <wwwsandals.com> domain name, nor a legitimate noncommercial or fair use of the domain name. Thus, the provisions of Policy ¶¶ 4(c)(i) and (iii) do not avail Respondent in this dispute. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent lacks rights or legitimate interests in the disputed domain name vis á vis Complainant); see also Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site”).

Likewise, considering the nature of the disputed domain name and the fame of Complainant’s mark, the Panel is unwilling to find that Respondent was “commonly known by” the name WWWSANDALS prior to any notice of this dispute. Thus, Policy ¶ 4(c)(ii) does not apply to Respondent either. See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent”); see also Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <wwwsandals.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and used the <wwwsandals.com> domain name in bad faith. This is a clear-cut case of typosquatting, where Respondent took a known mark (Complainant Gorstew’s SANDALS mark) and appended the prefix “www.” Respondent deliberately chose to unjustly take advantage of the goodwill surrounding Complainant’s SANDALS mark at the time that it registered the disputed domain name, evidence that the domain name was registered in bad faith. See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the “www” portion of [a] web-address,” evidence that the domain name was registered and used in bad faith); see also RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (inferring that Respondent’s registration of the <wwwremax.com> domain name, incorporating Complainant’s entire mark, was done with actual notice of Complainant’s rights in the mark prior to registering the infringing domain name, evidencing bad faith).

Furthermore, Respondent is using Complainant’s SANDALS mark, without authorization, to redirect Internet users to a website dedicated to voicing anti-abortion views that are not necessarily endorsed by Complainant. Respondent’s reliance on the typing errors of Internet users attempting to reach Complainant’s website in order to expose those users to politically charged content is evidence that the domain name was registered and used in bad faith. See McClatchy Mgmt. Servs., Inc. v. Please DON'T Kill Your Baby, FA 153541 (Nat. Arb. Forum May 28, 2003) (finding “[b]y intentionally taking advantage of the goodwill surrounding Complainant’s mark to further its own political agenda, Respondent registered the disputed domain names in bad faith”); see also Journal Gazette Co. v. Domain For Sale Inc., FA 12202 (Nat. Arb. Forum Oct. 9, 2002) (finding “Respondent chose the domain name to increase the traffic flowing to the <abortionismurder.org> and <thetruthpage.com> websites,” which tarnished Complainant’s mark, evidence that the domain name was registered in bad faith).

The Panel thus finds that Respondent registered and used the <wwwsandals.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

In this dispute, Complainants failed to designate the party that the Registrar should transfer the disputed domain name to in the event that Complainants prevailed. As such, the Panel Orders that the <wwwsandals.com> domain name be TRANSFERRED from Respondent to Complainant Gorstew Limited, the holder of the SANDALS mark.

Judge Harold Kalina (Ret.), Panelist

Dated:  August 13, 2003

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