WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gorstew Limited v. Worldwidewebsales.com
Case No. D2002-0744
1. The Parties
TThe Complainant is Gorstew Limited, a limited company incorporated in Jamaica and having its registered office in Kingston, Jamaica. The Complainantís representative in this Administrative Proceeding is Dechert, Solicitors, of London, United Kingdom of Great Britain and Northern Ireland.
The Respondent is <worldwidewebsales.com>, of Manchester, Connecticut, United United States of America. The Respondent has represented itself in this proceeding.
2. The Domain Names and the Registrar
There are a total of 9 domain names at issue in this proceeding. They are <anguillabeaches.com>, <antiguabeaches.com>, <antillesbeaches.com>, <barbadosbeaches.com>, <bermudabeaches.net>, <costaricabeaches.org>, <grenadabeaches.com>, <stcroixbeaches.com>, and <stthomasbeaches.com> (collectively referred to as "the domain names").
The domain names are registered with BulkRegister.com, Inc., of Baltimore, Maryland, United States of America ("the Registrar").
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the InternetInternet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, in accordance with the Rules for the Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center on August 8, 2002, (email copy) and August 9, 2002, (hard copy).
Following receipt of an inquiry from the Center, on August 8, 2002, the Registrar confirmed that the domain names are registered with it, and that the Respondent is the current registrant of the domain names. In each case, the WHOIS database records for the domain names show the administrative contact as Mike Jameson, of the same address as the Respondent.
The Registrar confirmed that the Policy applies to the domain names, and that the status of the domain names is "locked". The Registrar also confirmed that the language of the Registration Agreement for the domain names is English.
Having satisfied itself that the Complaint met the formal requirements of the Rules and the Supplemental Rules, on August 14, 2002, the Center issued a Notification of Complaint and Commencement of Administrative Proceeding. This document advised that the formal date of the commencement of the Administrative Proceeding was August 14, 2002, and that the last day for the Respondent to submit a Response was September 3, 2002.
Following receipt of an emailed request from the Respondent, on August 29, 2002, the Center extended the time for filing a Response to September 10, 2002.
When no Response had been received by that date, on September 11, 2002, the Center issued a formal Notice of Default.
One day later, on September 12, 2002, the Respondent submitted a form of Response, with a request that it be received and considered by the Administrative Panel when appointed.
On September 25, 2002, the Center invited Warwick Alexander Smith, of Auckland, New Zealand, to serve as sole Panelist in the Administrative Proceeding. Warwick Warwick Alexander Smith having duly completed a form of acceptance and a Declaration of Impartiality and Independence, the Center on September 26, 2002, appointed him as the Administrative Panel in the proceeding.
On October 8, 2002, the Panel issued its Procedural Order No. 1, in which, for the reasons set out in that order, the Panel held that the Respondentís late-filed Response should be received and considered. The Response contained allegations of reverse domain name hijacking against the Complainant, and the Panel called for a statement from the Complainant in response to the Respondentís principal allegation, namely that the Complainant had not disclosed to the Center all that it knew about the Respondentís business activities.
The time for the Panel to give its decision in the proceeding, was extended to October 23, 2002.
The Complainant has submitted a statement in reply, and the Panel has had due regard to it.
By emails dated October 17 and October 21, 2002, the Respondent sought leave to respond to the Complainantís statement in reply. The Panelís ruling on that application is set out below at Section 6 of this decision.
The Panel agrees with the assessment of the Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
No other proceedings relating to the domain names have been notified to the Panel.
In terms of paragraph 15(b) of the Rules, and the extension of time referred to above, the Panel is to give its decision by October 23, 2002.
4. Factual Background
According to the Complaint, the Complainant has operated a holiday business for a number of years under the name "Beaches". It says that it has established goodwill and reputation in the name BEACHES in the United States, the United Kingdom, the European Union, and worldwide, particularly in relation to the provision of luxury family "resort"-type holidays, and related services, in the Caribbean. It operates fiveoperates five resorts in Jamaica, and one in the Turks and Caicos Islands. It opened its first BEACHES resort in Negril, Jamaica, in 1997.
The Complainant says that it markets these resorts under the BEACHES brand very heavily in the United States and Canada, and that, in the 18 months immediately prior to June 2002, it had spent over $12 million advertising and marketing the BEACHES name in the United States and Canada, in national newspapers and magazines, and on national television.
The Complainantís Trademarks
The Complainant says that it owns and has owned for a considerable number of years, a large portfolio of trademark registrations world-wide for BEACHES. It has produced extracts from the various online databases of the trademark registries in the United United Kingdom, the European Union, the United States of America, Canada, Australia, and New Zealand. None of the extracts produced by the Complainant shows that it is the registered proprietor of the simple wordmark BEACHES.
The extracts produced from the United States Patent & Trademark Office database show that the Complainant is the proprietor of the service mark BEACHES BEACHES HOLIDAYS in Classes 39 and 42 (arranging air transportation, and hotel accommodations respectively), and that it is the proprietor of <beaches.com> in international Class 42 (but with a distinctiveness limitation statement as to the word "BEACHES").
There are a number of other extracts from the US PTO database produced by the Complainant. Many of these marks consist of three digits followed by the word "BEACHES", and some of those are followed by ".com". In all instances where the mark consists only of a three digit number followed by the word "BEACHES" (eg "800 BEACHES"), there is a distinctiveness limitation statement as to the word "BEACHES".
The Complainant has also registered the wordmark "BEACHES HIDEWAY in the United States, in international Class 42, for hotel resort services. There is a disclaimer in this application reading "no claim is made to the exclusive right to use ĎBEACHESí apart from the mark as shown".
Another United States mark of which the Complainant produced evidence, is "BEACHES A PART OF THE SANDALS FAMILY" (Classes 16, 25, and 42).
In the United Kingdom, the Complainant has registered a stylized form of the word "Beaches", in Classes 16, 25, 28 and 42. The mark was registered in these classes in the United Kingdom on April 1, 1996.
In Canada, the Complainant has registered "BEACHES A PART OF THE SANDALS FAMILY", with an accompanying design, for various printed materials and other goods, and hotel catering and restaurant services and reservation services, and the operations of resorts and hotels. The Canadian mark was filed on October 11, 1996, and formally registered on April 20, 1998.
The Complainant has also produced evidence of Australian and New Zealand registrations. The Australian registrations are in Classes 16, 28, and 42, and all consist of a script, or stylized version of the word "Beaches", with a wavy line underneath. The Class 16 Australian registration is for "paper, cardboard and goods made from those materials Ö printed matter; stationery; playing cards; but none of the aforesaid goods relating to beaches" (emphasis added).
Similarly, the New Zealand registrations all appear to be device marks, some featuring the word "Beaches" in the stylized, script form, over the wavy line. New Zealand registered trademarks 240970 and 240971 also appear to be device marks, but the device itself has not been shown in the material presented by the Complainant.
The Complainantís Domain Names
The Complainant says that it trades from various websites, including a website at "www.beaches.com". A copy of that website, downloaded on August 2, 2002, has been produced by the Complainant. The website refers specifically to individual "Beaches" resorts, and in each case the word "Beaches" appears before the geographical location Ė e.g. "Beaches, Turks & Caicos Resport & Spa", "Beaches Sandy Bay", "Beaches in Negril", "Beaches Grande Sport at Ciboney", "Beaches Boscobel".
The Respondent and the Domain Names
At the time the Complainantís representative first wrote to the Respondent (February 5, 2002), it appears that there was no active website linked to the domain names. The Complainant says that traffic to the domain names was redirected to the site at "www.worldwidewebsales.com". The Respondent does not deny that that was the position.
The Complainant has produced a copy of the website, downloaded on February 11, 2002, to which the domain name <perubeaches.com> was then linked. The home page is headed:
"The E-Commerce People
Beneath that heading, is the Respondentís address and telephone number, and below that, some photographs depicting mountains and other "outdoors" scenery. Beneath the photographs, appear the words:
"International Resort & Beach Networks
! Full Travel Services --- ! Global Mall Network"
There are a number of services advertised below that, including web design, hosting, linking, web advertising, full internetInternet services, custom graphic arts, broad band services, and domain names.
Immediately below those listed services, are the headings: "Beaches", "Malls", and "Casinoís", and below each of these headings are listed numerous domain names. Over 100 domain names are listed under the word "Beaches", including such names as <brazilbeaches.net>, <balibeaches.net>, <dubaibeaches.net>, <carolinabeaches.org>, and so on. All of the domain names are included in this list of "Beaches" domain names.
On the same page of the website, there are listed over 50 "malls" domain names. Examples from this list are: <"arizonamalls.net">, <"coloradamalls.com">, <"delawaremalls.com">, <"ohiomalls.net">, and so on. With one or two exceptions (e.g. <"carouselmalls.com">, each of the domains in this list consists of the name of a State of the United States, followed by the word "malls" and the relevant gTLD.
There are also shorter lists of "casinotours" and "tours" domain names. There are 29 "casinotours" domain names. Examples include <casinotours.org>, <illinoiscasinotours.com>, <onlinecasinotours.com>, and <uscasinotours.com>. There are also 29 "tours" domain names. Examples include <dinnershowtours.com>, <floridatours.net>, <holidaytraveltours.com> and <virginiacitytours.com>.
While the web page copies produced by the Complainant were taken from the website at "www.perubeaches.com", the Complainant says that the domain names all resolved to the same website at that time. That assertion is not challenged by the Respondent.
Since the Complainantís representatives wrote to the Respondent in February 2002, the website at "www.worldwidewebsales.com" has been changed. The Complainant has produced a copy of the site at "www.worldwidewebsales.com", downloaded on July 31, 2002, and it now consists of nothing but a holding page with no further information.
Communications Between the Parties Prior to Commencement of this Proceeding
The Complainantís solicitors wrote to the Respondent on February 5, 2002, requesting that the Respondent give undertakings to transfer to the Complainant the domain names (and all of the other "Beaches" domain names owned by the Respondent or by an entity associated with Mr. Jameson of the Respondent called Manchester Trading). The dates on a number of email responses from the Respondent are confusing. The emails from Mr. Jameson of the Respondent which have been produced by the Complainant bear 1999 dates. For example, an apparent initial response to the Complainantís representativeís February 5, 2002, letter to Mr. Jameson, is a short email bearing the date "25 January 1999". This email asserts, "Everything you are talking about is wrong", and invites Mr. Goldberg to call Mr. Jameson with the Complainantís concerns. The date does not make sense, but it appears that this email was a response to the Complainantís representativeís letter of February 5, 2002. (The Respondent does not suggest otherwise.)
In its Complaint, the Complainant describes a voicemail message said to have been left by Mr. Jameson for Mr. Stuart Goldberg of the Complainantís representatives, on February 5, 2002. The Complainant says that Mr. Jameson did not give the undertakings which had been requested in the February 5, 2002, letter, but advised that his sites were on-line beach guides to each particular beach area according to the geographical location that formed part of each of the domain names. The Complainant says that Mr. Jameson specifically said in his voicemail message that he had no intention of selling the sites to any third parties.
The Complainantís representatives wrote to Mr. Jameson again on February 27, 2002. After referring to the voicemail message of February 5, the letter went on to say, "Our client understands the intended nature of your business Ö. Our client also appreciates that the Domain Names registered by you may not have been registered with a view to any of the purposes indicated in our previous letter and may have been for the purposes of a bona fide business. Nevertheless, the use of most, if not all, of these Domain Names will, intentionally or not, prevent our client from reflecting its rights in corresponding domain names and/or disrupt our clientís business."
The Complainantís representativeís letter of February 27 went on to note that the Complainant currently operates principally in the Caribbean, and indicated that the Complainant would be prepared to accept a compromise based on the Respondent giving the Complainant an undertaking to transfer immediately to the Complainant, the domain names contained in a (very much shorter) list of domain names attached to the February 27 letter. The schedule of domain names attached to the February 27 letter included the domain names. It also included a number of other "Beaches" domain names, including <"americabeaches.com">, <"arubabeaches.net">, <"bahamabeaches.com">, <"canadabeaches.net">, <"europebeaches.net">, and several other "beaches" domain names.
What appears to be an emailed response from Mr. Jameson to the February 27, 2002, letter, bears the date "18 February 1999". This email made it clear that the Respondent would not give any of its names over to the Complainant for nothing. The email asserted that the Respondent had been building its plan since 1996, and that it has owned some of the names on and off during that time. Mr. Jameson said that the WHOIS database at INTERNIC may not reflect that, because the Respondent has "changed its name hosting holder registers many times". The "18 February 1999" email went on to indicate that the Respondent would be open to friendly talks on a level where the Complainant had stopped demanding the Respondentís sites as its own. Mr. Jameson said:
"We are open to sponsorship or selling off a region or sites, but we have already been refusing several offers from travel and casino businesses in that part of the world for 75,000 to 275,000. You are asking for some of the best sites in that area, and could generate millions in revenue.
Just by our plans we are in the built out stage of 800 plus sites for local guides on all activities, to include travel, boating, fishing, resorts, malls, emergency numbers and info, news, pictures, etc."
The "18 February 1999" email went on to refer to millions of "beach" sites or listings, country listings, chamber sites, state beaches, country beaches, and so on.
The final item in the exchanges between the parties prior to the commencement of this Administrative Proceeding, was a file note prepared by the Complainantís solicitor, Mr. Goldberg, dated March 1, 2002. Again, the Respondent does not challenge this note as an accurate record of the call. The note records that "Loretta" had left a voicemail message on behalf of Mr. Jameson, acknowledging receipt of Mr. Goldbergís letter. The file note records that Loretta said in the voicemail message that the Respondent had previously been offered $250,000 for their names, and that they would be prepared to consider something in the region of $300,000. A telephone number was given by Loretta and recorded in the file note.
5. The Partiesí Contentions
The Complainant Ė In Support of the Complaint
1. The domain names are confusingly similar to the names and trademarks in which the Complainant has rights, because they incorporate the Complainantís trademark together with the name of a geographical location in the same region in which the Complainant is operating (i.e. the Caribbean).
2. The domain names are also confusingly similar to the Complainantís domain names. All of the domain names were registered several years after the Complainant commenced trading using the BEACHES name, and after the BEACHES trademark was first registered.
3. The Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademarks or to apply for any of the domain names.
4. The Respondent does not appear to have previously conducted any commercial enterprise or non-commercial activity under the name BEACHES, and is not commonly known by the name BEACHES.
5. There has been no indication on the Respondentís website that any of the domain names would be used to host sites as the Respondent has claimed (apart from the brief mention of "International resort and beach networks"). There was no indication on the Respondentís website as to what the Respondent was claiming to offer, nor any way for potential users to find out more about the alleged "resort and beach networks" that the Respondent claimed to be setting up. There is accordingly no evidence of the Respondentís use of the domain names in connection with a bona fide offering of goods or services prior to the Respondent being notified of the present dispute.
6. Nowhere on the Respondentís website was there any indication of any specific geographical areas in which the Respondent purports to be offering services Ė for example, there was nothing on the Respondentís website to indicate in respect of the domain name <stcroixbeaches.com> that the Respondent would be providing information on and looking for interested parties from St Croix. The list of domain names was in fact an enticement to internetInternetInternet browsers to inquire about the availability for purchase of the domain names.
7. There were many other alternative combinations involving the word "beach" which could have reflected the Respondentís intended business activities, without infringing the Complainantís trademarks.
8. Mr. Jamesonís indication that he was happy to talk to the Complainant about selling off a region of sites, coupled with his email references to having received offers of up to $250,000 for some of his domain names, and the voicemail message from Loretta, together indicate that the Respondent has acquired the domain names primarily for the purpose of selling the domain names for a consideration in excess of the Respondentís documented out-of-pocket expenses.
9. The Respondentís actions in changing the site at "www.worldwidewebsales.com" to a holding page only (after it had become aware of the Complainantís claims), was an attempt to "cover his tracks".
10. Mr. Jameson of the Respondent was the contact for a company called Manchester Manchester Trading, which has engaged in a breach of the Policy on one other occasion (National Arbitration Forum Case FA93634, relating to the domain name <cnnheadlinenews.com>). The Respondentís Mr. Jameson is in the business of registering domain names in bad faith, and that the present Complaint is another example of this behavior.
11. The Respondent must have known of the Complainantís BEACHES brand at the time of registration of the domain names. (Although the Respondent claims that some of the domain names were registered earlier, all the evidence available to the Complainant shows that most of the domain names were registered between June 2001, and the time of the Complaint.)
Complainantís Contentions in Answer to Reverse Domain Name Hijacking Allegations
12. When the Complainantís representative wrote the letter of February 27, 2002, there was only a possibility that the Respondent was being honest in its earlier email Ė that was a very remote possibility, in view of the widespread public awareness in the United States of the BEACHES brand and trademark.
13. The letter of February 27, 2002, was a conciliatory letter, designed to achieve the transfer of the domain names referred to in that letter without further disagreement and the costs of litigation between the parties.
14. While the Complainant was prepared to give the Respondent the benefit of the doubt in the February 27, 2002, letter, the voicemail message from Loretta on March 1, 2002, in which the Respondent sought something in the region of $300,000 for the domain names, left the Complainant with no option but to conclude that the registration and use of the domain names was in bad faith.
15. After the letter dated February 27, 2002, was sent, the Complainant became aware of the National Arbitration Forum decision in the <cnnheadlinenews.com> case referred to above. By the time the Complaint had been filed, the Respondent had also altered the website at the domain name addresses, so that it no longer listed the domain names for which the Respondent claimed to be preparing sites. As the Complainant put it in its Reply Statement: "What business registers domain names for 6 years, claims to invest thousands of dollars into the websites for those addresses, lists all the domain names which it claims will be doing business from and, while at no time during those 6 years offering any services from those domain names, then reverts to the holding page exhibited at the last page of Annex F of the Complaint which fails even to advertise or promote the Respondent?"
16. The Respondentís claim that it told the Complainant it would "consider sale of sponsorship or advertising on the sites" is not substantiated with other evidence.
17. In spite of having global rights in the mark BEACHES, the Complainant has not sought the transfer of all of the Respondentís "beaches" domain names. It has confined itself to those which reflected the geographical area (the Caribbean) in which the Complainant operates its resorts under the BEACHES mark. That is clear evidence that the Complainant has not engaged in reverse domain name hijacking but is simply seeking to protect its registered and legitimate intellectual property.
18. The Respondent, as a travel agent, must have been well aware of the trademark BEACHES. In those circumstances, it could not claim a legitimate interest in the domain names.
1. The Respondent says that it has been engaged in the business of operating a worldwide internetInternet portal of product, resort, information, mall, history, casino and leisure sites offering one-stop shopping in virtually all areas of commerce to the general public. Interested businesses are given the opportunity to advertise, promote, sponsor, or offer otherwise their goods and/or services for sale locally, regionally, nationally, or globally. The Respondent says that its total domain/website exposure exceeds 800 internetInternetInternet locations. It says that it is not now, and has not at any other time, been in the business of trading, selling, or otherwise proffering domain names.
2. The Respondent was in a defensive posture in the pre-commencement communications between it and the Complainantís representatives. It says that that is why it responded that it would possibly consider the sale of sponsorship or advertising on the sites, after the Complainant contacted it. As the Respondent puts it in its Response "cyber squatting is precluded behavior, cyber speculating clearly is not and the Claimant fails to show the Respondent participated in either. The Respondent denies both".
3. Since 1996, the Respondent has developed a broad commerce portal and a travel and leisure and business as well. It says it is a member of the National Association of Commissioned Travel Agents, and a number of other bodies or associations involved in travel bookings or reservations. It says that it has been solicited as a provider of business to the Complainant, and is not a competitor of the Complainant.
4. Generally, the Respondent says that it has made actual use of and/or preparations to use the domain names in a bona fide offering of goods or services, and has not sought to divert or confuse customers of the Complainant. It emphasizes that it is a potential provider of business to the Complainant by its position as a travel booker "by and for the Claimantís own solicitation, above and beyond the siteís additional business use to sell other goods, services and advertising."
5. The domain names are not identical or confusingly similar to any trademark or service mark of the Complainant. The domain names comprise large geographical areas in the world in which similar other businesses far larger than the Complainant conduct commerce daily without confusion.
6. Advertising, sponsorship, product sales, business sales, banner ads, affiliate programs, and the full spectrum of business activity is well within the right of the Respondent, and within the concept of legitimate rights and usage.
7. The Respondent does conduct commercial enterprise including the use of domain names Ė specifically <hamptonbeach.com> (New Hampshire, United States), and <capecodbeaches.com> (Massachusetts, USA).
8. The Complainant offers no proof of its allegation that the list of domain names was an enticement to inquire about their availability for sale.
9. Despite the previously held WIPO decision (WIPO Case No. D2002-0140) that lack of use does not establish lack of legitimate interest, the Respondent clearly has long and wide prior use and legitimate interest.
10. The National Arbitration Forum decision in the case relating to the domain name <cnnheadlinenews.com> does not provide any evidence of bad faith registration and use. Manchester Trading, the Respondent in that case, was operating before the Policy came into force, and in any event the oversight and Board review of Manchester Trading is different from that of the Respondent. In any event, Manchester Trading decided, in light of the Policy, to adopt no actual defence in the <cnnheadlinenews.com> case. It effectively abandoned to the Claimant in that case any right to the use of the domain name.
11. Apart from the <cnnheadlinenews.com> case, the Complainant has produced nothing else which might constitute evidence of bad faith registration and use.
12. (In support of the allegation of reverse domain name hijacking), the Complainant has been guilty of reverse domain name hijacking. It has threatened to attack 100, or hundreds of domains if they are not transferred to it. It has also deliberately failed to disclose to WIPO its full knowledge of the actual facts surrounding the claim.
13. The Complainant knew of the Respondentís legitimate business interests, and withheld that knowledge from the Center. Its knowledge of the Respondentís legitimate business interests is demonstrated in the wording of the February 27, 2002, letter from the Complainantís representative.
6. Respondentís Requests to File Reply to Complainantís Statement in Answer to Reverse Domain Name Hijacking Allegations
In the Panelís view, procedural fairness does not require that the Respondent be permitted to file any further documents. In its Statement in Answer, the Complainant has really not referred to any significant facts which had not already been alleged in its Complaint. The only exception is the list of worldwide trademark registrations which the Complainant annexed to its Statement in Answer, but the Complainant had already made it clear in its Complaint that it claimed world-wide rights in various marks incorporating the word "Beaches". Beyond the list of trademark registrations, the Complainant has generally done little more than re-emphasize submissions made in its Complaint. In those circumstances, the Respondent has already had sufficient opportunity to place before the Panel whatever evidence and submissions it wanted to produce or make in support of its allegation of reverse domain name hijacking. The Respondentís request to make further submissions is therefore refused.
7. Discussion and Findings
General Principles under the Policy and the Rules
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) That the Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or 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 that complainant, for valuable consideration in excess of [the respondentís] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, InternetInternet users to [the respondentís] web sitewebsite or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [the respondentís] web sitewebsite or location or of a product or service on [the respondentís] web sitewebsite or location.
Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Paragraph 15(a) of the Rules requires the Panel to:
"Ö 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)(i) of the Policy Ė domain name identical or confusingly similar to trademark or service mark in which Complainant has rights
The question under this part of the Policy is whether the domain names or any of them are confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainantís case under this paragraph of the Policy is marginal. Is there any real likelihood of confusion between the Complainantís marks and any of the domain names? In the end it is not necessary to decide the point, because the Complaint fails on the ground that, in the Panelís view, the Complainant has failed to prove that the domain names were registered and have been used in bad faith. However the marginal nature of the Complainantís case under this paragraph of the Policy is relevant to the Panelís findings on the question of "registration and use in bad faith", so it is appropriate to note the following matters.
The Panel is not satisfied that the Complainant has any rights in the word "beaches" on its own. All of the Complainantís evidence suggests that its only rights are in marks consisting of that word plus either (i) some digits or other word or words or (ii) some design (or in some cases, a stylized script, with a wavy line underneath the word).
The word "beaches" is itself a common descriptor of a geographical feature, and adding the name of a geographical location in front of the word "beaches" is an obviously convenientobviously convenient way of referring to the beaches in that particular location. In those circumstances, it is hardly surprising that many of the Complainantís registered marks contain specific disclaimers as to the use of the word "beaches".
It is true that a number of WIPO decisions have held that the mere addition of the name of a geographical location to some other partyísí trademark, is not normally sufficient to distinguish the domain name from that trademark for the purposes of the "confusing similarity" test. See for example the following WIPO Cases: WIPO Case No. D2000-1463 (<ebayamerica.com>, <ebaygreece.com>, etc), WIPO Case No. D2000-1201 (<quaifeusa.com>), WIPO Case No. D2000-1471 (<nikeeurope.com>), WIPO Case No. D2001-0032 (various "Lexus" domain names), and WIPO Case No. D2001-1057 (<sandsofthecaribbean.com>). In all of those cases, the relevant domain names were ordered to be transferred to the Complainant, and the addition of the geographical descriptor to the Complainantís trademark was insufficient to avoid the "confusing similarity" requirement of paragraph 4(a)(i) of the Policy.
However, those cases were generally concerned with the combination of a geographical descriptor and a strong trademark. In this case, we are concerned with the use of a geographical descriptor with a word which is itself an ordinary descriptor of a particular kind of sea-front (or lake-front) terrain.
The comparison between the domain names and the Complainantís marks must be based on the overall impressions given by the marks and the domain names, bearing in mind any particular distinctive or dominant components, and having regard to visual, phonetic, and conceptual similarities. The Complainant might argue that there are visual and phonetic similaritiesphonetic similarities between its (stylized) BEACHES marks in particular, and the domain names. However, the Panelís overall impression is that the more dominant component of the domain names is the country or territory name, and not the generic word "beaches". The "idea" created by the domain names has far more to do with a particular geographical feature in the named countries or territories, than with any commercial enterprises that might be carried on under the mark BEACHES. A different impression might have been created if the order of the words in the domain names had been reversed Ė e.g. <beachesanguilla.com>, <beachesantigua.com>, etc. The Complainant has adopted that order itself to describe (on its website) its five "Beaches" Caribbean resorts. It is also the order which the Panel had to consider in WIPO Case No. D2001-1057 Ė <sandsofthecaribbean.com> (where the Complainant was the owner of the famous Las Vegas "SANDS" Hotel and Casino mark, and the Respondent was operating a gambling website at the domain name and had no apparent connection with sand or beaches).
Paragraph 4(a) (iii) of the Policy Ė Domain names have been registered and are being used in bad faith
The Panel is not satisfied the Complainant has proved this part of the Complaint.
In the Panelís view, the domain names are generic, in the sense that they consist of no more than descriptions of particular geographical features (beaches) in particular named locations. The evidence is clear that the Respondent has registered over 100 of these descriptive "beaches" domain names, and has also registered a similar number of domain names which feature the word "malls" in combination with a geographical descriptor. It has registered a lesser number of descriptive domain names of a similar style, featuring the expressions "casinotours" and "tours".
The Respondent says that interested businesses are given the opportunity to advertise, promote, sponsor, or offer otherwise their goods and/or services for sale locally, regionally, nationally, or globally. It says that it does conduct commercial enterprises using the domain names <hamptonbeach.com> and <capecodbeaches.com>.
It is true that the Respondent has not produced any evidence of its plans to use the domain names for "local guides on all activities" in the relevant locations (the intended use referred to in Mr. Jamesonís "18 February, 1999" email). The Panel suspects that the reality may be that the Respondent has registered most of the numerous domain names it has registered, including the majority of the various "malls", "casinotours", and "tours" domain names, with a view to sale to third parties who may become interested in acquiring those domain names at some future time. However, (as the Respondent put it in its Response) while "cyber squatting is precluded behavior, cyber speculating clearly is not". The Panel agrees that there is nothing in the Policy which prevents the registration of generic domain names with intent to resell to third parties.
Circumstances indicating that the domain name has been registered or acquired primarily for the purpose of transfer to the Complainant or to a competitor of the Complainant, are in a completely different category. If the purpose was to sell to the Complainant (or the Complainantís competitor) for a consideration in excess of the documented out-of-pocket costs directly related to the domain name, that is expressly defined as an instance of bad faith registration and use under paragraph 4(b)(i) of the Policy.
In this case, the Panel is not satisfied that the Respondent had in mind the Complainant (or a competitor of the Complainant) when it registered the domain names. It appears that the Respondent has simply registered numerous domain names in four specific categories ("beaches", "malls", "casinotours" and "tours"), with a (usually) geographical indicator in front of the particular generic term. At the end of the day, the combination of the generic, descriptive, nature of the domain names, and the sheer number of similarly-styled domain names registered by the Respondent (or Manchester Trading), leaves the Panel unable to conclude that the domain names (only nine out of over a hundred "beaches" domain names) were registered for the specific purpose of sale to the Complainant or one of its competitors.
Certainly the Respondent was willing to negotiate the sale of the domain names to the Complainant after it received the letters from the Complainantís representative in February 2002. However, that does not prove that, at the time the domain names were registered by the Respondent, it then had the purpose of selling to the Complainant or to a competitor of the Complainant.
Nor does the Panel derive any assistance from the decision of the Panelist in the National Arbitration Forum case relating to <cnnheadlinenews.com>. The Panelís task is to decide this case on the facts and submissions presented to it; decisions in other cases, on different facts and submissions, do not assist.
The Panel is prepared to accept the Complainantís submission that the Respondentís lengthy list of "beaches", "malls", "casinotours", and "tours" domain names was, at least in part, an enticement to inquire about the availability for purchase of those domain names. However, the "enticement" was to the general public, and that is not sufficient (at least with descriptive names such as the domain names) to establish bad faith registration and use.
Nor is the removal of the list of domain names from the Respondentís website sufficient to demonstrate that the domain names had been registered in bad faith.
There is no evidence of any of the other examples of bad faith registration and use described in paragraph 4(b) of the Policy. First, it is not proven that the domain names were registered in order to prevent the Complainant from reflecting its marks in corresponding domain names. The Complainant does not have "Beaches" resorts in any of the countries or territories the names of which form parts of the domain names, and there is no evidence that the Respondent was or should have been aware that the Complainant might want to reflect its trademarks or service marks in domain names commencing with the names of those countries or territories. As noted above, it seems more probable that the Respondent did not have the Complainant in mind at all when it registered its "stable" of over 100 "Beaches" domain names.
Secondly, there is no evidence that the Respondent is a competitor of the Complainant within the meaning of paragraph 4(b)(iii) of the Policy, nor (for the reasons already mentioned) any proof that the domain names were registered in order to attract internetInternet users to the Respondentís website by creating a likelihood of confusion with the Complainantís marks.
The Complainant appears to be relying primarily on paragraph 4(b)(i) of the Policy, but that argument fails because there is no proof that the Respondent registered the domain names for the purpose of selling to the Complainant or to a competitor of the Complainant.
There is no other basis on which the Panel could find that the domain names have been registered, and are being used, in bad faith. As the Complainant must prove all of the three grounds set out in paragraph 4(a) of the Policy, the Complaint must therefore fail.
In those circumstances, there is no need for the Panel to consider paragraph 4(a)(ii) of the Policy.
8. Reverse Domain Name Hijacking
While the complaint fails, the Panel is not prepared to find that the Complainant has acted in bad faith. This is a situation where the Complainant (eventually) confined its Complaint to those domain names which contained names of places in the general locality of the Complainantís commercial operations (ie the Caribbean). There is no basis for the Panel to find that the Complainant did not genuinely believe that domain names incorporating the word "beaches" in conjunction with the names of countries or territories in the Caribbean would not result in some degree of confusion, having regard to the existence of the Complainantís "Beaches" resorts in Jamaica and the Turks & Caicos Islands. The Complainant did not seek to pursue its original claims relating to domain names incorporating names of countries or territories beyond the general Caribbean region.
The issue of reverse domain name hijacking is to be judged at the time the Complainant invokes the Policy by filing a Complaint, and at that time the Complainant was not seeking the transfer of over 100 of the Respondentís domain names (one of the Respondentís specific complaints of reverse domain name hijacking). The Complaint fails largely because of the purely descriptive nature of the domain names, the structure of the Respondentís domain name acquisitions (divided into "beaches", "malls", "casinotours", and "tours" domain names), and the Complainantís inability in light of those factors to satisfy the Panel that it must have been the Respondentís intention, when the domain names were registered, to sell them to the Complainant (or to a competitor of the Complainant).
The wording of the letter dated February 27, 2002, from the Complainantís representatives did cause the Panel some concern about the Complainantís belief in the merits of its Complaint. The voicemail message from Loretta on March 1, 2002, did not really add much to the earlier email from Mr. Jameson, in which he had indicated an openness to the possibility of sponsorship or selling off a region of sites, and mentioned previously quoted prices in the range between $75,000 and $275,000. However, the Panel is prepared to accept the Complainantís explanation that it believed that its subsequent knowledge of the decision in the <cnnheadlinenews.com> case, and the changes made to the Respondentís website, were sufficient to tip the scales in favor of pursuing a complaint under the Policy. That that Complaint has failed is not sufficient to establish bad faith against the Complainant.
The allegations of reverse domain name hijacking are accordingly dismissed.
For the foregoing reasons, the Panel declines to order the transfer of the domain names to the Complainant, and the Complaint is dismissed.
Warwick Alexander Smith
Dated: October 23, 2002