WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gorstew Limited v. Global Access/ Moniker Priacy Services
Case No. D2008-0546
1. The Parties
The Complainant is Gorstew Limited, Kingston, Jamaica, represented by Dechert, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Global Access/ Moniker Privacy Services, Dublin, Ireland.
2. The Domain Name and Registrar
The disputed domain name <wwwsandals.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2008. On April 10, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On April 17, 2008, Moniker Online Services transmitted a verification response which however related to the wrong domain name. The Center transmitted a further request for the correct verification response to Moniker Online Services, LLC by email on April 17, 2008. On April 22, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing underlying registrant and contact information for the disputed domain name which differed from the to the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 28, 2008 providing the underlying registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 30, 2008. The Center verified that the Complaint together with the amendment to 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2008.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on June 9, 2008. 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 Complainant is the owner of trade mark registrations worldwide for the mark SANDALS. The Complainant attaches to its complaint copies of a number of such trade mark registrations:
- OHIM Registration No 000169946 (11/06/1998) for a figurative mark representing SANDALS in a cursive script, for goods and services in Nice classes 16, 25, 28 and 42 (without exclusion of footwear);
- United Kingdom IPO Registrations No 1310680 (19/03/1993); 1582805 (15/12/1995); and 1582806 (24/05/1996) for the mark SANDALS in cursive script, for goods and services in class 43; class16 but not including such goods relating to footwear; and class 25 but not including footwear respectively;
- USPTO Registrations No 1614295 (18/09/1990) and 2054532 ((22/04/1997) for SANDALS as Typed drawing for Goods and Services within IC 039 & 042; and IC 016, 018, and IC 025.
The Complainant trades from various websites including <sandals.com>.
5. Parties’ Contentions
The Complainant operates 12 Sandals Resorts in Jamaica, Antigua, St Lucia and the Bahamas in the Caribbean. It was voted the Caribbean’s Leading Hotel Brand at the World Travel Awards for 14 years in a row. The Complainant markets these resorts and the SANDALS name extensively in the United States of America and elsewhere around the world. The Complainant attaches printouts from its Sandals branded website at “www.sandals.com” illustrating and providing information about its various Caribbean resorts. The Complainant asserts that it has established goodwill in the United States of America, the United Kingdom of Great Britain and Northern Ireland, the European Union and worldwide particularly in relation to the provision of holidays and related services.
The contested domain name was registered on July 14, 2006 and the Complainant asserts that it believes it came into the ownership of the Respondent in or about July 2007. The Complainant’s letters to the Respondent of August 20, 2007 and October15, 2007 requesting transfer of the contested domain name to the Complainant did not elicit a response.
The Complainant asserts that the contested domain name is identical and/or confusingly similar to the names and trade marks in which the Complainant has extensive rights. The prefix ‘www’ is not distinctive but merely a commonly used prefix before all domain names to gain access to the web. Ignoring the www prefix the contested domain name is identical to the Complainant’s SANDALS trade marks. The Complainant’s trade mark may not be sequentially the first element of the domain name but it is the immediately striking element and likely to lead Internet users to think the Complainant is connected with it. The addition of a common or generic term to a trade mark does not create a new or different mark in which the Respondent has rights.
The Complainant has not licensed or otherwise authorized the Respondent to use its trade mark or apply for a domain name incorporating it, nor was it previously known by the domain name. The domain name was first registered a considerable period after first registration of the SANDALS trade mark by the Complainant.
There is no evidence of use or preparation for use for the offering of bona fide goods or services. The website as accessed by the Complainant is a portal site with a series of links, including links to sites offering competing products. This is no use of a domain name in connection with a bona fide offering of goods, as has been held by past panels (see e.g. Steelcase Development Corporation v. Manila Industries, Inc, WIPO Case No. D2006-1378). For the same reason, the Complainant asserts that the Respondent is not making a legitimate non-commercial or fair use of the domain name as described in paragraph 4(c)(iii) of the Policy. The portal with links clearly constitutes a commercial use as the Respondent is relying on the strength of the Complainant’s mark to attract Internet users to the website and earn pay-per-click royalties.
The Complainant asserts that the contested domain name was registered and used in bad faith, as the Respondent registered it primarily to disrupt the business of a competitor, namely the Complainant. The Respondent’s intention in registering the domain name was to divert the Complainant’s customers or potential customers away from the Complainant’s websites and to the website to which the domain name resolves. There numerous links appear to websites offering competing services.
The Complainant further asserts that the Respondent is using the domain name intentionally 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 its web site or location or of a product or service on his web site or location. It is inconceivable that at the time of registration the Respondent did not have prior knowledge of the Complainant or its trade marks. The Respondent has also not responded to the Complainant’s letters. Both amount to evidence of bad faith.
Anyone accessing the domain name would reasonably expect to find a website sponsored or authorized by the Complainant, which is not the case. Some users may access some of the links presented on the website, and it can be reasonably assumed that revenue for the Respondent would result, but even if a user leaves the website immediately the Respondent would already have succeeded in its purpose of using the Complainant’s trade mark to attract users for commercial gain. The website creates the false impression of some sponsorship or legitimate connection with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The contested domain name is not identical to the Complainant’s SANDALS trade mark, as it includes the prefix ‘www’. However, the prefix ‘www’ is generic and commonly found at the beginning of most website URLS; therefore Internet users ignore the ‘www’ as a matter of course. The first element of the contested domain name to which an Internet user will take note of is ‘sandals’, which is identical to the Complainant’s trade mark at issue. Therefore the addition does not have the capacity to distinguish the domain name from the Complainant’s trade mark SANDALS.
The Panel finds that the contested domain name is confusingly similar to the Complainant’s trade mark.
B. Rights or Legitimate Interests
The Respondent is not known by the domain name or the relevant part of the domain name (“sandals”). The Respondent has also not been authorized by the Complainant to use the trade mark SANDALS or register a domain name incorporating it.
There is nothing in evidence concerning any right or legitimate interest in the contested domain name. The Respondent has not filed a response. The Complainant asserts that the website to which the domain name resolves offers a list of links which an Internet user can click on. When the Panel accessed the relevant website on June 23, 2008, a high proportion of those links consisted of or incorporated terms relating holidays, cruises, the Caribbean and the like, which appears consistent with what occurred when the Complainant accessed the website. Links including such terms are representative of the kind or material or information an Internet user arriving at the website to which the contested domain name resolves might typically be looking for. They are apt to divert the Internet user away from the Complainant’s goods and services to others in the holiday business. Such use is not in any way indicative of or consistent with a legitimate use of the word “sandals”. The use made has no connection with the normal or generic English language meaning of the word ‘sandals’ as footwear.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the contested domain name.
C. Registered and Used in Bad Faith
The Complainant establishes that, by reference to its SANDALS trade mark, it has been well known for a long period in a number of jurisdictions, in connection with resort and travel services in the Caribbean. It can be inferred that the Respondent at the time of registration would have been aware of the Complainant’s trade mark and goodwill in relation to travel and resort goods and services, and thus registered the contested domain name in bad faith. The deliberate inclusion of ‘www’ within the body of the domain name adds further substance to that conclusion. Furthermore, as indicated above, the website to which the domain name resolves presents Internet users with a list of links, some of which are for goods and services which are in competition with the Complainant, such as cruises, resorts, holidays and travel. This further reinforces the conclusion that the domain name was registered with knowledge of the Complainant’s mark and business, and therefore in bad faith.
Panels have repeatedly decided that unauthorized use of a domain name incorporating a well known mark, to attract Internet users to a website unconnected to a Complainant, where lists of hyperlinks can be found, may amount to use in bad faith. The respondent in such cases relies on the impression that there is some legitimate connection with the complainant to attract Internet users to a website, and by those means derive some commercial gain from what is a misleading suggestion. In the circumstances, it is legitimate to infer that the Respondent stands to gain commercially in some way from the use of the trade mark in this manner, either by way of advertising revenue or by click through royalties or by some other means.
The Respondent in this case also did not respond to the Complainant’s letters. There is also some evidence of changes of registrant details with a continuation of the underlying activity at the website to which the contested domain name resolves.
The Panel finds that the contested domain name was registered and used in bad faith.
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 <wwwsandals.com> be transferred to the Complainant.
William A. Van Caenegem
Dated: June 23, 2008