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Gorstew Limited v. Pat Cavanaugh [2004] GENDND 1106 (25 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Gorstew Limited v. Pat Cavanaugh

Case No. D2004-0503

1. The Parties

The Complainant is Gorstew Limited, of Kingston, Jamaica, represented by Dechert, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Pat Cavanaugh, of Alexandria, Virginia, United States of America.

2. The Domain Name and Registrar

The disputed domain name <booksandalsbeaches.com> (herein the “domain name in dispute”) is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2004. On July 12, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On July 13, 2004, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 15, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2004.

The Center appointed J. Nelson Landry as the Sole Panelist in this matter on August 17, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant has operated a holiday business since at least 1981 under the Trademark SANDALS, as it appears from the date of first use in its first United States of America registration and since at least 1994 under the Trademark BEACHES in the United States of America (although U.S. registration 2,098,025 showing first use of BEACHES in 1997 was cancelled in June 2004), the UK, the European Union, and world-wide, particularly in relation to the provision of holidays and related services and associated souvenir items. The Complainant has eleven Sandals resorts in Jamaica, Antigua, St Lucia and the Bahamas and four Beaches resorts in Jamaica and Turks & Caicos. The Complainant markets these resorts under the Trademarks SANDALS and BEACHES in the USA (herein collectively the “Trademarks” or “Trademarks SANDALS and BEACHES”).

The Complainant has developed, owned and now owns a large portfolio and family Trademark registrations world-wide for SANDALS and BEACHES, alone or in association with other words, in particular in Australia, the European Union, Cayman Islands, Mexico, United Kingdom and United States.

Furthermore the Complainant trades on various websites using the Trademarks SANDALS and BEACHES and the domain names <sandals.com> and <beaches.com> wherein, as the Panel has observed, the association between Sandals and Beaches is mentioned as well as the diversified presence of the Trademarks such as in the 1-888 SANDALS and 1 888 BEACHES telephone numbers.

The domain name in dispute was registered on December 16, 2003, by Meara Travel Group Inc. of Annapolis, Maryland, United States of America and the administrative contact for this registrant was John Meara of the same address. The domain name in dispute was subsequently sold to Pat Cavanaugh for US $10,000, pursuant to one month negotiations. This sale was mentioned by the administrative contact on March 4, 2004, in reply to a cease and desist letter sent to Meara Travel Group Inc. by the Complainant’s representatives on March 1, 2004.

In a further exchange between the Complainant’s representatives and John Meara the latter suggested that Respondent Pat Cavanaugh was the current owner of the domain name in dispute which was confirmed by Complainant’s own verification.

The Complainant has not licensed or otherwise permitted or authorised the Respondent to use its Trademarks or to apply for a domain name incorporating any such Trademarks.

Pursuant to verification by Complainant and corroborated by the Panel’s own verification, there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name in dispute in connection with a bona fide offering of goods or services and there is currently no active website operated by the Respondent at the domain name in dispute but only a holding page on behalf of the Registrar.

The Respondent has not previously been known by the domain name in dispute.

There is a connection between the original registrant of the domain name in dispute and the current Respondent. John Meara of Meara Travel Group was the Respondent in a previous case The Coryn Group, Inc., Apple Vacations West, Inc. v. John A. Meara aka Pat Cavanaugh, WIPO Case No. D2003-0690, which case related to the domain names <bookapple.com>, <bookapplecamp.com> and <bookapplegrant.com> and was lodged by The Coryn Group Inc., which owns several trademarks incorporating the word “apple” in relation to the provision of travel agency services.

As noted in the decision in WIPO Case No. D2003-0690, John Meara is the owner of Meara Travel Agency, which trades from a website at “www.mearatravelgroup.com” and is also the registrant of this domain name <mearatravelgroup.com> and in this case asserted that Pat Cavanaugh, the Respondent, was his father in law. The address of John Meara in Alexandria, Virginia, United States of America is in the latter part identical to the address given for the alleged Registrant of the domain name in dispute, Pat Cavanaugh. In addition, the telephone number provided for John Meara, according to the Who Is search, is identical to the telephone number given for the alleged Registrant of the domain name in dispute.

John Meara owns Meara Travel Agency, which carries the business of providing holidays and holiday-related services, a business similar to and competitive with that of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is the owner of goodwill and reputation and extensive rights in the Trademark and names SANDALS and BEACHES.

The Complainant submits that domain name in dispute is identical and/or confusingly similar to the names and Trademarks because it incorporates the Complainant’s Trademarks BEACHES and SANDALS together with the prefix “book,” a word merely descriptive which indicate that this domain name in dispute relates to Sandals and Beaches. It is, in effect, an invitation to an Internet user to acquire goods or services related to BEACHES and/or SANDALS via the website at the domain name in dispute. Considering the Complainant’s business, the prefix “book” merely increases the likelihood of confusion with the Complainant’s Trademarks as to the source, sponsorship, affiliation, or endorsement of the website at the domain name in dispute.

The Complainant relies on analogous UDRP decisions, including National Westminster Bank PLC v. Purge I.T. and Purge I.T. Ltd, WIPO Case No. D2000-0636, wherein the panel noted that the “first and immediately striking element in the domain name is the Complainant’s name” and that this would be “inherently likely to lead some people to believe that the Complainant is connected with it.” and furthermore on Bayerische Motoren Werke AG v. Quality Services, WIPO Case No. D2003-0077, wherein the panel stated, in respect of a merely descriptive word added to the trademark BMW, that this was “more likely to create rather than alleviate confusion among users of the Internet.” and finally on a similar holding in Walmart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477.

The Complainant submits that it has not licensed or otherwise permitted or authorised the Respondent to use its Trademarks or to apply for a domain name incorporating any such marks.

According to the Complainant there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services. There is currently no active website operated by the Respondent at the domain name but only a holding page on behalf of the Registrar. The Complainant relies again on the same case of Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477 in which it was highlighted by the panel that under paragraph 4(c)(iii) of the Policy a respondent may argue only that it is “‘making’ a legitimate non-commercial or fair use of the domain name.” Therefore the Respondent is not making any use of the domain name in dispute.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name in dispute and that the real owner of the domain name in dispute is not the Registrant but rather John Meara, and that “Pat Cavanaugh” is simply a pseudonym of or front for John Meara.

The Complainant submits firstly that this false provision of Registrant details by John Meara is a breach of paragraph 4 of his Registration Agreement with Network Solutions and secondly that the registration of the domain name in dispute by John Meara was therefore in breach of the representations made by John Meara in paragraph 11 of his said Registration Agreement.

The Complainant further alleges that as an operator of a travel agency and a provider of holiday related services, John Meara would have undoubtedly known that the registration of the domain name in dispute would infringe the rights of the Complainant.

John Meara alleges that the domain name in dispute was sold to “Pat Cavanaugh” for US$10,000. If this is true, then the domain name was registered by a person whose business is the same as that of the Complainant and was transferred by this registrant for a considerable sum of money. If such a purchase was made as alleged, the domain name in dispute would only have been valuable (particularly for this alleged sum of money) to a competitor of the Complainant or the Complainant itself.

In addition, if the transfer fee was genuinely US $10,000, this sum is far in excess of any out-of-pocket expenses directly related to the domain name in dispute. At the present date, there is no website created by the Respondent operating at the domain name in dispute and the original registrant’s request for this fee far exceeds any costs of registration and maintenance of the domain name in dispute itself.

According to the Complainant, contrary to Rule 4(b)(ii) of the Policy, John Meara/Pat Cavanaugh registered the domain name in dispute to prevent the Complainant from reflecting it marks SANDALS and BEACHES in a corresponding domain name and has engaged in a pattern of such conduct. Such conduct can be inferred from the WIPO decision in Case No. D2003-0690 in which the three domain names the subject of that dispute were transferred from John Meara to the Complainant in that dispute.

Contrary to Rule 4(b)(iii) of the Policy, John Meara/Pat Cavangaugh has registered the domain name in dispute primarily to disrupt the business of a competitor, namely the Complainant. John Meara/Pat Cavanaugh owns a business, which sells competing holidays and holiday-related services to those of the Complainant and is therefore not authorised to accept bookings for the Complainant’s holidays. Therefore, the only intention of John Meara/Pat Cavanaugh in registering the domain name in dispute can have been to divert the Complainant’s customers or potential customers away from any websites offering the Complainant’s services and instead towards a website at a domain name owned by John Meara/Pat Cavanaugh.

Contrary to Rule 4(b)(iv) of the Policy, John Meara/Pat Cavanaugh is using the domain name in dispute intentionally to attract for commercial gain internet users to his website or other on-line location by creating a likelihood of confusion with the complainant’s marks as to the source, sponsorship, affiliation or endorsement of his website or location or of a product or service on his website or location. The present website at the domain name in dispute is a page created by the Registrar, Network Solutions, which appears to offer a portal to a range of websites dedicated to sandals (footwear), can only be an attempt by the Respondent to create a false impression that the domain name in dispute is not related to the Complainant’s products for the purpose of any legal proceedings initiated by the Complainant, no more than a ‘ruse’. A consumer would not “book” sandals (footwear). Therefore, it is submitted, the genuine inevitable use of the domain name in dispute will be to create the impression that the Respondent is somehow sponsored by or authorised by the Complainant to sell the Complainant’s products when this is a false representation. Anyone accessing the domain name in dispute would reasonably expect the company offering services at the website to be either the Complainant itself or at the very least a commercially connected undertaking.

Paragraph 4(b) of the Policy provides that the grounds set out at 4(b)(i) to (iv) of the Policy are not exclusively the only examples of registration and use in “bad faith.” The Complainant submits that the Respondent’s breach of the terms of his Registration Agreement in providing false registrant details and in claiming falsely that the domain name in dispute has been sold to a third party (with the impression that this third party is not connected to the Registrant) is further evidence of the Respondent’s bad faith registration and use.

Contrary to Rule 4(b)(i) of the Policy, the facts provided above prove that John Meara and/or the Registrant registered the domain name in dispute/acquired the domain name in dispute primarily for the purpose of selling or otherwise transferring it to a competitor of the Complainant for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name in dispute.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Panel finds that the domain name in dispute is confusingly similar with the Trademark BEACHES and SANDALS.

Paragraph 4(a) of the Policy requires that the Complainants prove each of the following three elements in order for a domain name to be cancelled or transferred:

(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interest with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has amply demonstrated that it has over more than a decade carried various holiday reservations activities as well as sale of related products under the Trademarks SANDALS and BEACHES as described in the finding of facts herein and has applied for and obtained many registrations in several countries in what the Panel considers and finds to be a family of well known Trademarks.

The Panel finds that the Complainant has rights and substantial goodwill in the Trademarks SANDALS and BEACHES arising out of both the long use and the registrations thereof.

The Panel has no difficulty in finding that domain name in dispute is confusingly similar to Trademarks because it incorporates the Complainant’s distinctive elements BEACHES and SANDALS of the Trademarks and that the addition of the prefix “book,” a word being merely descriptive, does not change that conclusion. The Panel agrees with the Complainant that the domain name in dispute invites an internet user to acquire goods or services related to those of Complainant under the Trademarks BEACHES and/or SANDALS via any website at the domain name in dispute and that the prefix “book” merely increases the likelihood of confusion with the Complainant’s Trademarks as to the source, sponsorship, affiliation, or endorsement of the website at the domain name in dispute.

The domain name in dispute is confusingly similar to the Trademarks of the Complainant. The conditions of the first criteria have been met.

B. Rights or Legitimate Interests

Respondent has not submitted a response in this proceeding. Therefore, the Panel may accept all reasonable inferences and allegations included in the complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interest in the domain name in dispute by stating that the Respondent has never been known by the names SANDALS and/or BEACHES or the domain name in dispute and is not making legitimate non commercial or fair use of the domain name in dispute.

Pursuant to verification by Complainant and corroborated by the Panel’s own verification, there is no evidence of the Respondent’s use of, or demonstrable preparations to use the domain name in dispute in connection with a bona fide offering of goods or services and there is currently no active website operated by the Respondent at the domain name in dispute but only a holding page on behalf of the Registrar. The mention under Network Solutions of “Site under construction”, not in any way associated with the Respondent, does not constitute a demonstration by the Respondent of preparations to use the domain name in dispute.

The Complainant relies on the case of Wal-Mart Stores, Inc v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477, in which it was highlighted that Respondent may argue only that it is “‘making’ a legitimate non-commercial or fair use of the domain name.” According to the evidence in this case the Respondent is not making any use of the domain name in dispute in connection with any bona fide offering of goods or services.

The Complainant has presented convincing evidence, which raise a serious doubt as to the true owner or operator of the domain name in dispute since March 2004. It is Mr. Meara, the first registrant, who has stated in his correspondence with Complainant that after one month of negotiation he had sold the domain name in dispute to the current registrant Pat Cavanaugh, his father in law according to the facts of an earlier decision, WIPO Case No. D2003-0690. If it is true, it is surprising that Mr. Cavanaugh would have paid that substantial sum of money and yet after so many months would not have been in a position to indicate or demonstrate any preparation to use the domain name in dispute. The page that one could observe in verifying the website under the domain name in dispute, as the Panel did, simply outlining various types of shoes, many specified as “sandals,” interestingly none with “beaches” and no mention whatsoever of the Registrant. This situation and relationship of Mr. Meara and his father in law, the Respondent, in the present context is suspicious as to their good faith considering the fact that Mr. Meara through his own business concern operates a business competitive to that of Complainant. It is not surprising that this situation advanced by Mr. Meara in his correspondence with the Complainant was not put in evidence in a response to the Complaint herein.

This panel infers from this absence of evidence from the Respondent and the above noted facts that this is simply a waiting and observation period by the Respondent and Mr. Meara in the expectation of a successful conclusion of outcome of this proceeding for Meara Travel Group Inc. to recover title from the Respondent and or simply resume its holiday business activities under the domain name in dispute.

The Panel concludes that the Respondent has not made use of the domain name in dispute in connection with a bona fide offering of goods and services.

Accordingly there is no evidence that the Respondent has any rights or legitimate interest in the domain name in dispute and the conditions for the second criteria have been fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood or confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

The Complainant contends that the domain name in dispute was registered and is used in bad faith.

It appears from the facts herein above that the domain name in dispute was registered by Meara Travel Group Inc. with John Meara designated as administrative contact and that pursuant to a sale the current registrant of the domain name in dispute is Pat Cavanaugh, the Respondent.

The Panel has determined from the evidence that the domain name in dispute was registered in December 2003, more than ten years after the continuous extensive use and promotion of the Complainant’s services under the Trademarks, as acknowledged by the various registrations and the use of the Trademarks in several countries, some as early as 1981 for the Trademark SANDALS and 1994 for the Trademark BEACHES.

The fact that these Trademarks are registered in the United States wherein the Respondent as well as the first registrant of the domain name in dispute are located, gives to the Complainant a presumption of validity as well the benefit of constructive notice to both Mr. Meara and the Respondent of the existence of these Trademarks. Furthermore considering the evidence that John Meara operates Meara Travel Group Inc., also in the business of holiday tours, resorts and like activities, it is inconceivable to this Panel that the latter was not aware of the existence of the activities of the Complainant under the Trademarks SANDALS and BEACHES. According to UDRP decisions a registrant’s actual or constructive knowledge of a Complainant’s rights in a domain name at the time of registration has been found to reinforce a finding of bad faith registration; see Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 and Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.

While the Respondent did not file any evidence, it appears from the exchange of correspondence of the Complainant with Meara Travel Group Inc. and John Meara that on March 2004, according to John Meara own statement, Meara Travel Group Inc sold the domain name in dispute to the Respondent for US $10,000 pursuant to negotiations for this name over a month. Considering this period of negotiation this Panel cannot conceive nor accept that John Meara would not have asked for a substantial sum, in excess of the out-of pocket cost of registering a domain name, and reached an agreement at the disclosed sum. This would indicate that the domain name would have been owned and under the control of Meara Travel Group Inc. and/or John Meara until sometime in February 2004, presumably for a period of two months. There is no evidence of any use or preparation of use of this domain name by the first registrant and/or Mr. Meara.

It has been decided in many UDRP cases that extensive and mere passive holding of a registered domain name could be viewed as evidence of bad faith use, see Ceyx Technologies v. Ceyx.com, WIPO Case No. D2001-0681; Deutsche Telecom AG v. Ronan Bailread, WIPO Case No. D2003-0893 wherein there was observed non use for over two years and The Body Shop International plc v. David Sweeton, WIPO Case No. D2003-0991.

Was the domain name in dispute registered to be eventually sold for profit or to disrupt the business activities of Complainant, a competitor of Meara Travel Group Inc. and John Meara, and divert its customers away from websites offering Complainant’s services, as Complainant contends? The evidence, uncontradicted nor challenged, is convincing this Panel. Had there been another plausible explanation, it should have come from the Respondent directly or through his spokes person, Mr. Meara.

It is not necessary that a disputed domain name be associated with an active website for a finding to be made under subparagraph 4(b)(iv). Panels have held that this bad faith requirement is met by a domain name that, if ever put to use, would ultimately result in consumer confusion; see CBS Broadcasting, Inc. v. LA-Twilight-Zone, WIPO Case No. D2000-0397; Garrison Keillor, Minnesota Public Radio, Inc. v. Paul Santon, NAF Case No. FA0107000098422; SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Hewlett-Packard Company v. Marcel Wieland, NAF Case No. FA0010000095852 and Bloomberg L.P. v. Indidom, NAF Case No. FA0101000096479.

All these activities by the Respondent and his predecessor in title are activities carried in bad faith under paragraph 4(b) of the Policy.

This Panel finds that the domain name in dispute was registered in bad faith by the predecessor of Respondent and was used in bad faith by both the said predecessor and the Respondent.

7. Decision

The Panel concludes that:

(a) the domain name <booksandalsbeaches.com > is confusingly similar to the Complainant’s Trademarks “SANDALS” and “BEACHES”;

(b) the Respondent has no rights or legitimate interest in the domain name in dispute;

(c) the domain name in dispute has been registered and is being used in bad faith.

Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <booksandalsbeaches.com> be transferred to the Complainant Gorstew Limited.

J. Nelson Landry
Sole Panelist

Dated: August 25, 2004