WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gorstew Limited v. Alexander Superman
Case No. D2001-1103
1. The Parties
The Complainant is Gorstew Limited (Complainant), a company whose civic address is in Kingston, Jamaica. The Respondent is Alexander Superman, a person whose civic address is in Fort Lauderdale, Florida, USA. It is evident from the Respondent's email correspondence with the Complainant contained in the file, and in particular in the official Response, that Superman's real name is Alexander Seirafi (Respondent).
2. The Domain Name and Registrar
The domain name at issue is <sandalsdot.com>. The Registrar is Go Daddy Software, Inc.
3. Procedural History
The Complaint was received in hardcopy on September 6, 2001. Payment was received on the same date.
Upon receiving all the required information, the WIPO Center took all necessary steps to confirm the identity of the Registrar for the contested domain name, verify the Registrar’s Whois Database and confirm all the essential contact information for Respondent.
An email was sent to the Registrar by the WIPO Center on September 10, 2001, to obtain confirmation of the Registration Agreement and other information required under the Policy. The Verification Response from Go Daddy Software Inc. was received on the same day.
On Tuesday September 11, 2001, the WIPO Center, having ascertained the identity of the Respondent asked the Complainant to amend the Complaint Form to include the name. On September 12, 2001, the WIPO Center asked the Complainant to make a Formal Amendment pertaining to the choice of Mutual Jurisdiction in accordance with the Policy. The Complainant submitted amendments in order to comply with the Policy.
The WIPO Center then proceeded to send a copy of the Complaint Form in accordance with paragraph 2(a) of the ICANN Rules. The WIPO Center fulfilled all its responsibilities under this paragraph in forwarding the Complaint to the Respondent, and in notifying the Complainant, the concerned Registrar and ICANN on September 13, 2001. This date is the original official commencement date of the administrative proceeding. All the communications were successfully received.
A Response was received from the Respondent on October 2, 2001, and it was communicated to the Complainant by the WIPO Center on the same day.
On October 16, 2001, the WIPO Center contacted me, David Lametti, and requested that I act as a single Panelist in this case. On October 18, 2001, I accepted to act as Panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On October 22, 2001, the parties were notified that I had been appointed and that a decision was to be, save exceptional circumstances, handed down on November 5, 2001.
4. Factual Background
Complainant is the owner of the relatively well-known SANDALS trademarks and service marks, and similar marks incorporating the term SANDALS, registered in the US, UK, European Union, and other countries world-wide. These marks pertain to travel and the provision of holiday services, and related services and products. Some of the registered marks include clothing, sporting gear and accessories, and at least one registration in the UK pertains to footwear [Complaint Annex C, SANDALS ULTRA ALL-INCLUSIVE, September 30, 1998]. Complainant is also the registered holder of a number of domain names, including <sandals.com>, <sandals.net>, and <sandals.co.uk>.
The Respondent registered the disputed domain name on March 31, 2001.
The Complainant's representative, sent an email letter to the Respondent on May 14, 2001, requesting inter alia an undertaking to transfer the disputed domain name. Respondent responded to the request by email on May 28, 2001, but made no such undertaking. Instead, he mentioned an "on-line sandal business" and declared himself willing to provide further information. Complainant’s representative requested this information on May 29, 2001, and the Respondent provided some further information by email on June 5, 2001. The Respondent also offered to sell the disputed domain name for the sum of $2500.
The Complainant initiated proceedings under the Policy with WIPO on September 7, 2001, as set out above.
5. Parties’ Contentions
The Complainant alleges:
(1) That the domain name <sandalsdot.com> is identical or confusingly similar to a trademark in which it has rights, as per Policy paragraph 4(a)(i).
The Complainant provides evidence of the registration of its SANDALS and SANDALS ULTRA ALL-INCLUSIVE trademarks and service marks in the US, UK and Canada, and asserts confusing similarity.
The Complainant also provides evidence of the Registration of similar domain names: <sandals.com>, <sandals.net>, and <sandals.co.uk>, and asserts confusing similarity.
(2) That the Respondent has no rights or legitimate interests in the domain name, as per Policy paragraph 4(a)(ii).
The Complainant asserts that the Respondent has no license, permission or authorization to use the SANDALS marks in any way, or to register a domain name using such marks.
The Complainant also asserts that the Respondent has not previously conducted a commercial or non-commercial activity under the name, nor is commonly known by the domain name.
(3) That the Respondent registered the domain name in bad faith, as per Policy paragraph 4(a)(iii).
The Complainant infers bad faith registration and use from the following facts, not in dispute:
the Respondent, after the first request form the Complainant's solicitors, did not give any undertakings to voluntarily transfer the domain name, nor did he claim a comprehensible legitimate interest at that time;
the Respondent, after the Complainant's email request for more information on the on-line shoe business, admitted that he did not plan to use the domain name as a distinct web site;
the Respondent at that point offered to sell the domain name for $2500, well above his out-of-pocket expenses; and
the Respondent was aware that the value of the domain name might rise in the future.
The Complainant also argues that the Respondent is preventing the Complainant from registering its trademark in corresponding gTLDs.
The Respondent’s Response was a summary of the email to Northey of June 5, 2001. He maintains that he has never had any intent to violate the Complainant's service or trademarks. He claims that if he continues as registrant of the domain name that he will not go "anywhere near [Sandals resorts'] business interests". Second, Respondent asserts that he registered the domain name in dispute for the purpose of developing an "on-line sandal [shoe] business". He had also registered <shoeshark.com> for the same purpose before coming into contact with the Complainant. Third, the Respondent notes that the SANDALS mark does not extend to footwear. Fourth, the Respondent does admit to having made the offer of transferring the name for the price of $2500, and that the value of the name might increase over time. However, the Respondent also offers to notify the Complainant if he ever decides to divest himself of the domain name.
The Respondent does not contest any of the facts alleged by the Complainant, but clearly disagrees on their interpretation and the Complainant's assertions under the Policy.
Identical or Confusingly Similar
First, is the domain name <sandalsdot.com> identical or confusingly similar to the various trademarks incorporating SANDALS?
In this matter, the question turns on the addition of the word "dot" to the word "sandals": is the addition sufficient to distinguish the domain name "sandalsdot" from the registered "sandals" trademarks and service marks? It is now well established under the Policy that one is to ignore the gTLD in comparing a trademark to a domain name. It is equally well established that a minor spelling mistake is not enough to differentiate a mark from a domain name for the purposes of determining confusingly similarity. Other cases under the Policy have held that adding a minor word to the trademark, such as "my" or "sucks", does not differentiate the mark from the domain name. What of the word "dot"?
Visually there is a distinct difference between the disputed name and the marks in question. The part of the domain name before the "dot" is different by virtue of the word "dot". Aurally, however, the distinction is mitigated if not eradicated by the fact that the average person would likely read the disputed name as "sandals dot com", and not as "sandals dot dot com", thus making it effectively identical to the trademark when spoken.
In addition, it is my view that the average internet user would read the word "dot" and immediately understand that it was not a substantive component of the domain name, in the same way that "my" or "sucks" is not an important, identifying element in a domain name. That is, the average user would appreciate almost instantly that the site was about "sandals" in some way and might therefore assume that the "sandals" in question were related to the beaches and holidays of the famous resort chain.
Can a domain name be confusingly similar to another domain name? The Policy does not explicitly include confusion with other domain names as a basis for a confusing registration in paragraph 4. Moreover, there is no evidence that any of the domain names held by the Complainants such as <sandals.com> and <sandals.net> have been registered as trademarks. I would be inclined to hold, however, that if a domain name has accumulated a great deal of goodwill via a popular website, and is used to sell products or services and identify their source or advertise these products and services, then the domain name would at least have achieved the status of a common law trademark. Under such circumstances a domain name ought to benefit from the protection of the Policy in the same way that rights of publicity effectively have been brought under the Policy. In this case, the various domain names registered by the Complainant have easily achieved this degree of business notoriety, and ought to be considered as a protectable right. For the reasons set out above regarding the SANDALS marks, there is a sufficient degree of similarity between the domain names for the disputed domain name to be considered confusing.
On balance, then, I would hold that there is a sufficient degree of similarity between the domain name in dispute and the marks and domain names in which the Complainant has rights. With respect, then, to <sandalsdot.com>, the Panel concludes on balance that the Complainant has met the requirements of Policy paragraph 4(a)(i).
Rights or Legitimate Interest
The criterion of illegitimacy – or framed in terms of the Respondent, of the determination of the Respondent’s legitimate right or interest – focuses in my view on the objective or relatively objective links that the Respondent has to the domain name in question. These connections might arise either at the outset through a natural or visible connection of the Respondent’s business name, trademark, bona fide offering of goods and services, or bona fide non-commercial use, to the domain name. These connections might also develop over time through the nature of the Respondent’s bona fide activities as they relate to the domain name. These connections might be obvious given current uses or practices in the instances just mentioned, or they might be demonstrable, as in the case of planned connections to a domain name for these various bona fide activities in the future.
The question is whether the Respondent, on the evidence, can be shown to have no such connection to – and hence no such legitimate interest or right in – the domain name. Paragraph 4(c) of the Policy gives three examples of circumstances where the Respondent has a legitimate interest: use or planned use in connection with a bona fide offering of goods and services; being commonly known by the domain name; and legitimate non-commercial or fair use, without intent to tarnish the mark or for commercial gain by misleadingly diverting consumers.
In this instance, it has not been shown that the Respondent has no legitimate interest in the contested domain name. Respondent's email assertion, claiming that he planned to begin an on-line shoe business, which included the sale of sandals, has gone unchallenged. His registration of a related domain name <shoeshark.com> before this matter arose is further evidence of some interest in developing a bona fide offering of good and services. While the Respondent admits in email correspondence that the actual use of the domain name had not been determined, he reserved all rights in its potential use. This potential enterprise does not appear either to compete with the Complainant, or to divert its customers to its site or to tarnish the goodwill embodied in its mark. Thus the Respondent's activities brings him at least within the parameters of paragraph 4(c)(i), and perhaps within the meaning of fair use in paragraph 4(c)(ii).
In some instances, a mark might be so unique or so strong in a particular geographic region that a legitimate (as well as good faith) use of a domain name would be virtually inconceivable, hence reducing the burden on the part of the Complainant when proving a lack of legitimate interest. This is particularly true where the mark had become emblematic of a high degree of goodwill, either through longstanding use and popularity in relation to a product, or due to its fanciful and unique nature [Cf. Videotron v. Savelyev, AF-0451, November 1, 2000; Via Rail Canada Inc. v. Mean Old Man Productions Inc., AF-0759, April 23, 2001]. This is not the case here. While Sandals Resorts are popular, it is impossible to accord them this benefit in this case because, quite simply, the word "sandals" also describes a generic piece of footwear which others may wish to sell. The Policy cannot possibly be interpreted to prevent a seller (or potential seller) of merchandise from having a legitimate interest in a domain name which describes the very merchandise he wishes to sell, simply because someone else has trademark rights in that term for a different product. It is difficult to hold that anyone registering the name of a generic product, with some evidence of intention to sell those products in the future, could possibly not have a legitimate interest. A domain name incorporating "sandals" seems quite logical to someone wanting to sell sandals.
Indeed, the various trademark statutes under which the Complainant has registered SANDALS would not allow for the single word "sandals" to be registered in relation to shoes precisely because this would amount to the registration of a word merely descriptive of the product sold. This in turn would prevent anyone else selling sandals from adequately and accurately describing their own products. It is therefore difficult to envision the Policy protecting a trademark in a way that ordinary trademark legislation would not. Conversely, while it is true that the Policy allows generic terms to be registered as domain names, it is infrequent that such domain name registrations would conflict with registered trademarks in most cases, simply because most generic terms would not be registerable as trademarks. The only exception would occur in cases where the descriptive term had acquired a great deal of secondary meaning over time and through advertising for the very product in question, and might thus be registerable. That is not the case here, as the SANDALS marks did not refer to sandals.
With respect to the domain name <sandalsdot.com>, the Panel concludes that the Complainant has not met the requirements of Policy paragraph 4(a)(ii). As the Complainant must prove all components of paragraph 4(a), failure to show no legitimate right or interest is sufficient to defeat the Complainant's entire claim with respect to this domain name.
Given the previous analysis on legitimate interest, it is unnecessary to pronounce on the question of bad faith. However, it is still important in my view to draw several conclusions in this matter regarding bad faith.
Unlike illegitimacy, the criterion of bad faith goes to the circumstances surrounding the registration or use of the domain name by the Respondent, and focuses on the Respondent’s intentions, either as they are stated explicitly or as can be inferred from the Respondent’s actions and the facts of the matter. A list of partial criteria is articulated at paragraph 4(b) of the Policy, and the burden of proving bad faith falls on the Complainant.
In this case, the Respondent failed to respond to a request to voluntarily transfer a domain name. The Respondent also admitted that the web site was never intended to be a distinct web site; rather it would be used in all likelihood as a sub-directory of a larger site, or might not be used at all. More interestingly, the Respondent did offer to sell the domain name for $2500, an amount well above his out-of-pocket expenses, and admitted that the value of the domain name might rise as a result of his holding it for a longer period of time.
Each of these matters should be dealt with in turn. First, it is difficult to accept -- absent other circumstances -- that the mere failure to respond to a solicitor's demand to transfer voluntarily a domain name, especially when one believes that one has a legitimate right to that domain name, could be construed as an act of bad faith. Failure to respond to a potential trademark holder's demands or requests in some cases might be evidence of actions in bad faith, for example where there is deliberate or tactical evasion or some other indicia of ill will, or a pattern of bad faith generally on the part of the Respondent. However, in this case the Respondent responded by asserting his right to the name. This refusal cannot in any way be considered tantamount to bad faith as defined in paragraph 4(b).
Second, the uncertainty over the ultimate use of the domain name is also not evidence of bad faith in this case. I have already noted that this lack of certainty did not undermine what appears to be a legitimate potential use of the domain name as part of a bona fide commercial activity. Indeed, there is nothing in the evidence submitted that tends to support the assertion that incomplete planning was equivalent to bad faith as defined in paragraph 4(b). Rather, Respondent's email assertion that he was keeping his options open for using the domain name with respect to his ultimate plan to sell shoes on-line has gone unchallenged. In addition, the Complainant has failed to show that the Respondent acted to prevent the Complainant from reflecting its marks -- indeed, Gorstew already had registered and used numerous domain names utilizing the SANDALS marks.
Third, an offer to sell a domain name for a large sum of money might very well be evidence of an intent to register merely to transfer the name to the Complainant for an unreasonable profit, and thus be evidence of bad faith as described in paragraph 4(b)(i). In this case, however, the Respondent did not seek out the Complainant in the first place. And while Respondent did offer to sell the domain name to the Complainant, the context of the email exchanges indicates that Respondent made the offer as a Response to pressure from the Complainant to transfer. In fact, the offer was made in the second email response to the Complainant, after having elaborated upon his planned use of the domain name, and almost by way of afterthought. Moreover, it appears to be a half-hearted offer, in the sense that the Respondent appears to be just as happy to keep the domain name. It is not clear to me, therefore, that the Respondent primarily registered the domain name for the purpose of transferring the name to the Complainant or its competitors, and therefore is not bad faith under paragraph 4(b)(i). Nor it is fair to conclude that the mere understanding and admission that the domain name might increase in value over time is ipso facto evidence of bad faith: cyber-speculating is not prohibited by the Policy, cyber-squatting is. The Complainant needs to show that the Respondent intended to profit directly from the Complainant or indirectly through one of its competitors by cyber-squatting, and that claim has not been met in this case.
The Complainant has also failed to show that the Respondent met any of the other indicia of bad faith in the Policy: that Respondent engaged in a pattern of conduct of cyber-squatting, or that the registration was meant to disrupt the Complainant's business, confuse internet users or divert internet traffic. It is true that some of Respondent's emails might be considered arrogant, and even patronizing, but this is not a criterion of bad faith under the Policy.
Finally, as discussed above under legitimate use, it is difficult to hold that anyone registering the name of a generic product, with some evidence of intention to sell these products in the future, could possibly be doing so in bad faith. A domain name incorporating "sandals" seems quite logical to someone wanting to sell sandals. Other evidence of bad faith is needed, and this is not present in this case.
The Panel thus concludes that the Complainant also has failed to meet the criteria enunciated in Policy paragraph 4(b), and thus the requirements of Policy paragraph 4(a)(iii). The Respondent's registration and use of <sandalsdot.com> has not been shown to have been done in bad faith.
The Panel concludes on the evidence presented:
1. That the domain name <sandalsdot.com> is confusingly similar to the SANDALS marks of the Complainant, and in which the Complainant has rights protected by the Policy.
However, the Panel concludes that the Complainant has failed to show:
2. That the Respondent has no rights or legitimate interests in the domain name; or
3. That the Respondent has registered or used the domain name in bad faith.
Therefore, the Complainant has failed to make its case regarding this domain name, and pursuant to paragraphs 4(i) of the Policy, the Panel orders that the domain name <sandalsdot.com> remain with the Respondent.
Dated: November 5, 2001