WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gorstew Limited v. Domain Manager, Domain Escrow
Case No. D2007-0815
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 Domain Manager, Domain Escrow of Escrow, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <beachess.com> is registered with Communigal Communications Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2007. On June 5, 2007, the Center transmitted by email to Communigal Communications Ltd. a request for registrar verification in connection with the domain name at issue. On June 6, 2007, Communigal Communications Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 7, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 27, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2007.
The Center appointed Brigitte Joppich as the sole panelist in this matter on July 3, 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 four “Beaches” resorts in Jamaica and Turks & Caicos. The Complainant markets these resorts and the name “Beaches” extensively in the United States of America.
The Complainant is the registered owner of numerous BEACHES trademark registrations worldwide, inter alia United States trademark registration No. 2951577, European Community trademark registration No. 000169995 and United Kingdom trademark registration No. 1584601 (the BEACHES marks). The Complainant trades from various websites (including “www.beaches.com”), using its BEACHES marks.
The disputed domain name was registered on August 16, 2006.
The Complainant sent letters of warning to the Respondent on November 27, 2006, and January 22, 2007, asking for the transfer of the domain name. The postal copies of both letters were returned undelivered. The Respondent did not reply to the electronic copies of the letters sent to him.
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 <beachess.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 BEACHES Marks with a second letter “s” after the word “Beaches”, which might easily be added by Internet users to the Complainant’s domain name <beaches.com>.
(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 name “Beaches” world-wide, in particular in the United States, 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 BEACHES marks, being marketed heavily in the United States. 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 trademarks as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location by providing links to direct competitors of the Complainant. In particular the website under the disputed domain name contains links to a series of vacation and travel packages including in the United States and the Caribbean.
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 fact that the disputed domain name fully incorporates the Complainant’s BEACHES marks serves as a prima facie argument in favor of confusing similarity. The question to be decided is whether the additional letter “s” changes this impression.
The Complainant notes that internet users could easily inadvertently add the second letter “s” to the Complainant’s domain name <beaches.com>. The Complainant’s argument is implying an assertion of typo-squatting. The Panel notes in this regard that the Complainant’s BEACHES marks contain the generic term “beaches”, while the disputed second level domain name “beachess” is not descriptive or generic. The Panel believes that the average person will readily identify the term “beaches” in this domain name, which term corresponds to the Complainant’s trademark. The resulting conclusion of confusing similarity is further reinforced (even if not required) by the Complainant’s assertion that its BEACHES marks enjoy a significant reputation, that its resorts are well-known across the world and given the large portfolio of BEACHES marks owned by the Complainant that Complainant’s marks have achieved a certain degree of distinctiveness
Furthermore, it is 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; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
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 names 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 trademark 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 and 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 names and is neither commonly known by the domain names nor contends to make a legitimate non-commercial or fair use of the domain names. Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraph 4(a)(ii) and (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 names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including
(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 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 a generic term as a second level domain name often prevents a finding of bad faith registration if in a trademark such term would be considered descriptive of certain goods or services (cf. Zeitverlag Gerd Bucerius GmbH & Co. KG v. The Web Group, WIPO Case No. D2005-0725; LIBRO AG v. NA Global Link Limited, WIPO Case No. D2000-0186; Robert Chestnutt v. Jennifer Tumminelli, WIPO Case No. D2000-1758; John Fairfax Publications Pty Ltd v. Domain Names 4U and Fred Gray, WIPO Case No. D2000-1403). These principles are also applicable to domain names consisting of misspellings of such generic words (cf. Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624). The question in such cases is whether the registrant had the third party trademark in mind when registering and using the domain name. In the present case, the Panel is not convinced either that the Respondent knew about the Complainant’s BEACHES Marks when it registered the disputed domain name. More specifically, the Panel is not satisfied that the Respondent had in mind the Complainant then – the Respondent is domiciled in Canada, where the Complainant claims neither business activities nor trademark rights. The Panel is well aware that the Respondent has foregone the opportunity to explain its motives in the present case, and the Panel believes that generally such behavior may give rise to inferences in this regard. Even so, in the absence of more specific indications in favor of the Complainant’s assertions, the Panel, on balance, finds it more likely than not that the Respondent registered the generic term “beaches” including a typing error in order to attract traffic looking for websites in relation to beach holidays and thus to generate revenue by providing sponsored links. In the present circumstances, insufficient evidence is before the Panel that the Respondent registered the disputed domain name in bad faith. Arguably, the situation may be different if the Respondent’s use would go beyond the generic meaning of the term.
Therefore, the Complainant has not satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Complaint is denied.
Dated: July 17, 2007