WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gorstew Limited v. Manila Industries
Case No. D2007-0495
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 Manila Industries of Santa Ana, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <beachesbysandals.com> is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2007. On April 3, 2007, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On April 24, 2007, Compana LLC transmitted by email to the Center its verification response confirming only that the Respondent is listed as the registrant and providing the contact details, but leaving out all other points raised in the registrar verification. Numerous reminders were subsequently sent by the Center to Compana LLC. Finally, on May 31, 2007, the Center informed Compana LLC that it would now proceed on the assumption that the information relevant to the registrar verification gathered by the Center from the Complaint and the public WhoIs database was correct. No further communication was received by the Center from Compana LLC. 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 6, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 26, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2007.
The Center appointed Brigitte Joppich as the sole panelist in this matter on July 4, 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is operating holiday resorts, amongst them twelve “Sandals” resorts in Jamaica, Antigua, St Lucia and the Bahamas and four “Beaches” resorts in Jamaica and Turks & Caicos. The Complainant markets these resorts and the names “Sandals” and “Beaches” extensively in the United Stated of America.
The Complainant is the registered owner of numerous SANDALS and BEACHES trademark registrations worldwide, inter alia US trademark registrations No. 1614295 (SANDALS) and No. 2951577 (BEACHES), European Community trademark registrations No. 000169946 (SANDALS) and No. 000169995 (BEACHES), and UK trademark registrations No. 1310680 (SANDALS) and No. 1584601 (BEACHES), the “SANDALS and BEACHES Marks”. The Complainant trades from various websites (including <sandals.com> and <beaches.com>), using its SANDALS and BEACHES Marks.
The disputed domain name was registered on June 27, 2006.
The Complainant sent letters of warning to the Respondent on September 29, 2006, and December 20, 2006, asking for the transfer of the domain name. The Respondent did not reply.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(i) The domain name <beachesbysandals.com> is identical and/or confusingly similar to the names and trademarks in which the Complainant enjoys exclusive rights as the domain name fully incorporates the Complainant’s SANDALS and BEACHES Marks, together with the merely descriptive word “by”.
(ii) The Complainant further contends that it has not licensed or otherwise permitted nor authorised the Respondent to use its trademarks or to apply for a domain name incorporating such marks and that the Respondent is not commonly known by the domain name either. Furthermore, the Complainant contends that 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, nor is there evidence of a non-commercial or fair use of the domain name by the Respondent, as the disputed domain name is used to provide a website containing commercial links to external websites.
(iii) The Complainant finally contends that the domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant contends that it has operated a holiday business for a number of years, establishing goodwill and reputation in the names “Sandals” and “Beaches” world-wide, in particular in the United States of America, the United Kingdom, and in the European Union, mostly in relation to the provision of holidays and related services and that it is inconceivable that the Respondent registered the domain name without any knowledge of the Complainant or the Complainant’s SANDALS and BEACHES Marks, being marketed heavily in the US, where the Respondent is domiciled. With regard to bad faith use, the Complainant contends that the domain name has been registered in order to create the false impression that the website at the domain name is somehow sponsored by or authorized by the Complainant. The Complainant further contends that the domain name was registered in bad faith in order to prevent the Complainant from reflecting its trademarks in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct. The Complainant finally contents that the domain name was registered and is used in order to disrupt the Complainant’s business and to attract for commercial gain Internet users to its website or other on-line location by creating a likelihood of confusion with the Complainant’s trade 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 by providing links to direct competitors of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s SANDALS and BEACHES Marks. The mere addition of the generic word “by” between the two trademarks does not eliminate the similarity between the Complainant’s marks and the domain name, as “by” is a generic word, lacking any distinctiveness. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Dr. Grandel GmbH v. Drg Randel Inc., WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493; Quixtar Investments, Inc. V. Dennis Hoffman, WIPO Case No. D2000-0253; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242).
Furthermore, it is also well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374; Teradyne, Inc v. 4Tel Technology, WIPO Case No. D2000-0026).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the 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) 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) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or service mark at issue.
The Respondent did not file a response in this proceeding. Therefore, the Complainant’s assertions that the Respondent lacks rights or legitimate interests stand unrefuted. Based on the evidence before the Panel, the Respondent apparently did not make any bona fide offering of goods or services in connection with the domain name and is neither commonly known by the domain name nor contends to make a legitimate non-commercial or fair use of the domain name. Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including
(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
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.
In the absence of any additional circumstances, the choice of generic terms as a second level domain name often prevents a finding of bad faith registration if in a trademark such terms would be considered descriptive of certain goods or services (cf. Zeitverlag Gerd Bucerius GmbH & Co. KG ./. The Web Group, WIPO Case No. D2005-0725 – <zeit.com>; LIBRO AG v. NA Global Link Limited, WIPO Case No. D2000-0186 – <libro.com>; Robert Chestnutt v. Jennifer Tumminelli, WIPO Case No. D2000-1758 - <racegirl.com>; John Fairfax Publications Pty Ltd v. Domain Names 4U and Fred Gray, WIPO Case No. D2000-1403 – <financialreview.com>). However, the situation is different in this case: The Complainant has been running an established business for many years and has heavily marketed its resorts under their respective names “Beaches” and “Sandals” in the United States of America, where the Respondent is domiciled. Although the Complainant’s SANDALS and BEACHES Marks per se consist of generic terms which could be used by third parties descriptively nearly without limitation, the Panel is convinced that the Respondent knew of the SANDALS and BEACHES Marks at the time of the registration of the disputed domain name, as it fully incorporated both of the Complainant’s marks into the disputed domain name and as the combination of the two generic words “beaches” and “sandals” has no independent meaning. In fact, it doesn’t make any sense unless seen as a reference to the Complainant’s trademarks.
The Panel is therefore satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant’s marks and therefore in bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant provided evidence that the Respondent was involved in ten UDRP proceedings in 2006, all resulting in the transfer of the respective domain name to the complainant concerned. The Panel is therefore convinced that the Respondent is acting in a pattern of preventing owners of trademarks from reflecting their marks in corresponding domain names and therefore in bad faith under paragraph 4(b)(ii) of the Policy.
Furthermore, by fully incorporating the SANDALS and BEACHES Marks into the domain name and by using the website under such domain name as a parking website providing links to direct competitors of the Complainant, the Respondent is in all likelihood trying to divert traffic intended for the Complainant’s website to its own for the purpose of earning click-through-revenues from Internet users searching for the Complainant’s website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (cf. L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, with further references).
Therefore the Complainant has been using the disputed domain name in bad faith and thus satisfied the requirements of paragraph 4(a)(iii) of the Policy as well.
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 name <beachesbysandals.com> be transferred to the Complainant.
Dated: July 18, 2007