WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gorstew Limited v. Media Insight
Case No. D2006-1467
1. The Parties
The Complainant is Gorstew Limited, of Kingston, Jamaica, represented by Pitney Hardin LLP, United States of America.
The Respondent is Media Insight, of Coral Gables, Florida, United States of America.
2. The Domain Names and Registrar
The disputed domain names <beachesclubresort.com> and <sandalsresortsspa.com> are registered with Melbourne, IT, LTD. d/b/a Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2006 by e-mail and on November 16, 2006 in hardcopy. On November 16, 2006, the Center transmitted by email to Melbourne, IT LTD. a request for registrar verification in connection with the domain name at issue. On November 16, 2006, Melbourne, IT, LTD. 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, and technical contact. The Center verified that the Complaint as amended 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. On November 22, 2006, due to a procedural problem with notification of the Complaint, the Center formally renotified the Respondent of the Complaint, and the proceedings commenced on December 5, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2007.
The Center appointed Manoel J. Pereira dos Santos as the Sole Panelist in this matter on January 17, 2007. 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 trademarks on which the Complaint is based are SANDALS and BEACHES. According to documentary evidence and contentions submitted by Complainant, Complainant is the owner of the U.S. Trademark Registrations for SANDALS Nos. 1,614,295 issued September 18, 1990 duly renewed and 2,054,532 issued April 22, 1997, for hotel reservation services and various types of goods, and owns registrations for the SANDALS mark in other countries. Reference is made to Exhibits C and D of the Complaint.
The trademark SANDALS has been used since at least as early as 1981, in connection with hotel and hotel reservation services for the “SANDALS Resorts” hotel chain. As noted by a previous WIPO UDRP panel, Complainant owns a number of SANDALS resorts (currently 12 pursuant to Complainant’s contentions) in Jamaica, Antigua, St. Lucia and the Bahamas. See Gorstew Limited v. Pat Cavanaugh, WIPO Case No. D2004-0503. SANDALS is a relatively well-known trademark and service mark in the field of hotel and hotel reservation services. See Gorstew Limited v. Alexander Superman, WIPO Case No. D2001-1103.
According to documentary evidence and contentions submitted by Complainant, Complainant is the owner of the U.S. Trademark Registrations for BEACHES Nos. 2,951,577 issued May 17, 2005 and 3,070,140 issued March 21, 2006 for hotel-related services and various types of goods, and owns registrations for the BEACHES mark in other countries. Reference is made to Exhibits E and F of the Complaint.
The trademark BEACHES has been used since at least as early as 1997 in connection with hotel and hotel reservation services and Complainant has authorized the use thereof in connection with the “BEACHES Resorts” hotel chain throughout the Caribbean. The extracts from the U.S. Patent and Trademark Office database produced by Complainant show as prior registration for BEACHES trademark the U.S. Registration 2,651,105 issued November 19, 2002 for BEACHES.COM (with a distinctiveness limitation statement as to the word “BEACHES”), first use in 1995, pursuant to the US PTO database searched by the Panel.
As noted in a WIPO UDRP decision, Complainant registered in the United States of America a number of trademarks containing the word “BEACHES” in association with other words, among which the trademark BEACHES A PART OF THE SANDALS FAMILY under U.S. Registration 2,098,025 issued September 16, 1997 but cancelled in June 2004 (pursuant to the US PTO database searched by the Panel). See Gorstew Limited v. Worldwidewebsales.com, WIPO Case No. D2002-0744.
According to the contentions submitted by Complainant, Complainant licenses its SANDALS and BEACHES trademarks to Unique Vacations, Inc., which provides marketing and reservation services for SANDALS and BEACHES Resorts and which operates two websites: “www.sandals.com”, which is the official home page for SANDALS Resorts, and “www.beaches.com”, which is the official home page for BEACHES Resorts. Reference is made to Exhibit G of the Complaint.
The disputed domain name <beachesclubresort.com> was registered on November 13, 2001, and the disputed domain name <sandalsresortsspa.com> was registered on November 8, 2002. Reference is made to Exhibit A of the Complaint and to the Registrar’s verification response.
Both disputed domain names point to a website that provides links to Complainant’s “Sandals All-Inclusive Resorts” in Jamaica, St. Lucia, Antigua and Bahamas, and allows users to “Check Hotel Rates” and “Check Hotel and Air Packages” by clicking on the respective links. The website’s home page displays the SANDALS mark on a banner on the top of the page in a very prominent manner. Visitors are given telephone numbers and an email address to check for rates and availability. Reference is made to Exhibits H, I and J of the Complaint.
Cease and desist letters were sent to Respondent by Complainant on October 6, 2006 and October 27, 2006. One of the letters was returned to Complainant and no response from Respondent was ever received by Complainant. Reference is made to Exhibits K, L and M of the Complaint.
5. Parties’ Contentions
Complainant contends that SANDALS and BEACHES are well-known and famous brands for hotel and resort services, and the disputed domain names are virtually identical or confusingly similar to Complainant’s marks except that they add the generic terms “club”, “resort” and “spa”. Complainant argues that Internet users are likely to believe at least initially that the domain names are related to, associated with, or authorized by Complainant.
Complainant further contends that Respondent is not commonly known by the disputed domain names, has not been authorized by Complainant to use Complainant’s marks, and has registered the disputed domain names long after Complainant established rights in its SANDALS and BEACHES marks. Complainant relies on previous UDRP decisions recognizing the fame and distinctiveness of Complainant’s marks.
Finally, Complainant contends that Respondent’s actions evidence both bad faith use and registration of the domain names at issue because (i) Respondent is using the domain names to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation or endorsement of its website, and (ii) Respondent knew of the fame of Complainant’s marks when it registered the domain names.
Complainant argues that this is a classic case of initial-interest confusion and the fact that Respondent is using Complainant’s marks to redirect traffic to websites offering Respondent’s competitor products and services is evidence of bad faith. According to Complainant, registration of multiple domain names has been found to constitute bad faith.
In accordance with paragraph 4(b)(i) of the Policy, Complainant requests that the disputed domain names be transferred to Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the Policy (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response. As a result, the Panel infers that the Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contac. WIPO Case No. D2003-0994. Therefore, asserted facts that are not implausible will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; RX America, LLC v. Matthew Smith. WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
A. Identical or Confusingly Similar
Complainant’s contention that the domain names <beachesclubresort.com> and <sandalsresortsspa.com> are virtually identical to or confusingly similar to Complainant’s marks SANDALS and BEACHES is warranted.
The marks in which Complainant has rights have acquired substantial recognition and goodwill as a result of their long use by Complainant in connection with hotel and resort services. See Gorstew Limited v. Pat Cavanaugh and Gorstew Limited v. Alexander Superman, supra. The words “club”, “resort” and “spa” are descriptive of the activities to which Complainant’s marks SANDALS and BEACHES relate.
This type of combination (“clubresort” and “resortspa” in conjunction with “beaches” and “sandals”) creates a clear association with Complainant’s marks and activities, especially because there are SANDALS and BEACHES hotels using the terms “resort” and “spa” in their names. See Gorstew Limited & Unique Vacations, Inc. v. Twinsburg Travel, NAF/FA0008000095424 (finding that the domain name <beachesresort.com> forms the tradename that Complainant uses to sell vacation packages).
The addition of the “.com” portion of the domain names does not affect a finding that the disputed domain names are confusingly similar to Complainant’s marks. This Panel concurs with UDRP previous decisions holding that the “.com” suffix is to be disregarded. Microsoft Corp. v. Whois Privacy Protection Service/Lee Xongwey, WIPO Case No. D2005-0642; Accor v. Howell Edwin, WIPO Case No. D2005-0980.
Therefore, the Panel finds that the disputed domain names are clearly confusingly similar to Complainants’ marks and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The consensus view in the WIPO URDP Panel decisions has been that a complainant is required to make out an initial prima facie case, thereby shifting the burden of demonstrating rights or legitimate interests in the domain name to the respondent. If the respondent fails to carry this evidentiary burden, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.1).
The Panel accepts as reasonable Complainant’s contentions that Respondent is not commonly known by the disputed domain names, that Respondent has not been authorized to use Complainant’s marks, and that Respondent registered the domain names long after Complainant established rights in its marks. By defaulting, Respondent failed to rebut such contentions, and such facts as asserted by Complainant will be taken as true.
The Panel finds that the use of the disputed domain names infringes on Complainant’s legitimate rights and is not a legitimate, non-commercial or fair use of the disputed domain names to the extent that Respondent’s websites point to an unauthorized website that provides links to Complainant’s “Sandals All-Inclusive Resorts” and displays SANDALS mark on a banner on the top of the page in a very prominent manner.
The question of bad faith use will be further discussed below, but the foregoing finding is sufficient to dispose of the matter at this point. The Panel is of the opinion that the Complainant has done enough to establish a prima facie case.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
(i) Actual or constructive knowledge of Complainant’s mark rights
Complainant’s contention of bad faith registration is based on the argument that Respondent knew of the fame of Complainant’s marks when it registered the disputed domain names, and that the under United States trademark law Respondent is deemed to have been on constructive, if not actual, notice of Complainant’s rights in its marks before it registered the domain names.
The Panel is aware that WIPO panels are reluctant to introduce the concept of constructive notice into the UDRP but that, where a complainant had a United States registered mark and respondent was located in the United States of America, this concept has been used in a few cases to support a finding of registration and/or use in bad faith. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 3.4).
In this case Respondent is located in the United States and Complainant’s marks are registered in the United States. There are other factors that lead to the conclusion that Respondent had actual or constructive knowledge of the Complainant’s marks. Complainant’s reputation in the hotel and reservation services business and the presence of the registered marks in the Internet indicate that Respondent was or should have been aware of the SANDALS and BEACHES marks before registering the disputed domain names. Moreover, the fact that the disputed domain names are confusingly similar to Complainants trademarks as discussed above, indicates that Respondent registered the domain names in bad faith.
(ii) Attempt to attract Internet users to Respondent’s website
One of Complainant’s contentions of bad faith is based on the argument that Respondent is using the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to source, sponsorship, affiliation or endorsement of its website.
The Panel finds that Respondent is misleadingly using the disputed domain names in order to attract Internet users and consumers to its website for commercial gain. As evidenced by Exhibits G and H, Respondent is using the SANDALS mark in its website in the very same way both graphically and topographically that Complaint’s mark is displayed in the official home page for SANDALS resorts “www.sandals.com”.
A compelling factor in this case is that the disputed domain names are linked to a website that provides identical services, i.e., hotel reservations. Therefore, Respondent’s website leads Internet users to believe that Respondent’s website is affiliated with or endorsed by Complainant. Accordingly, the Panel finds that the disputed domain names are used in bad faith by Respondent.
Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <beachesclubresort.com> and <sandalsresortsspa.com> be transferred to the Complainant.
Manoel J. Pereira dos Santos
Dated: January 31, 2007