WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sandals Resorts International (2000) Limited v. Fundacion Private WhoIs, Domain Administrator

Case No. D2012-1400

1. The Parties

The Complainant is Sandals Resorts International (2000) Limited of Nassau, Bahamas, represented by Dechert LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Fundacion Private WhoIs, Domain Administrator of Panama, Panama.

2. The Domain Name and Registrar

The disputed domain name <beachesresortturksandcaicos.net> is registered with Internet.bs Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2012. On July 10, 2012, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On July 13, 2012, Internet.bs Corp. 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” or “UDRP”), 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 July 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2012.

The Center appointed Williams R. Towns as the sole panelist in this matter on August 13, 2012. 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 has operated a holiday and vacation business, which includes all-inclusive holidays and related services, under the BEACHES brand for many years. The Complainant owns numerous trademark registrations for BEACHES and BEACHES-formative marks in the United States of America as well as a number of other countries around the world. The Complainant further operates a website related to its business and services at “www.beaches.com”.

The disputed domain name was registered on or about September 2, 2011. Since then the disputed domain name has been used with a website entitled “Beach Resorts Turks and Caicos” that provides information concerning or otherwise promotes various resorts on Turks and Caicos, including the Complainant’s Beaches resort located there.

The Complainant, acting though its legal counsel, issued a cease and desist letter to the Respondent on or about January 17, 2012, seeking inter alia the transfer of the disputed domain name. After receiving no reply to the notice letter, the Complainant commenced the proceedings herein.¹

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it has operated a holiday business under the BEACHES brand as since the mid-1980s, in addition to holding trademark registrations for marks consisting of or incorporating BEACHES in the United States, the European Union, and worldwide. According to the Complainant, the BEACHES mark is well-known in the United States, where considerable sums have been spent advertising the BEACHES brand on television, in magazines and through other media and sponsorship opportunities. The Complainant submits that it has won numerous awards for its BEACHES holidays and vacations over recent years.

The Complainant submits that the disputed domain name is confusingly similar to its BEACHES mark, given that the disputed domain name incorporates the Complainant’s mark in its entirety, with the additional descriptive words “resorts” and “Turks and Caicos”. The Complainant argues that because it operates a BEACHES resort on Turks and Caicos Internet users are likely to be confused whether the website with the disputed domain name is associated is owned, sponsored or otherwise affiliated with the Complainant.

According to the Complainant, it is clear that the Respondent was aware of the Complainant and had the Complainant’s BEACHES mark in mind when registering the disputed domain name, as evidenced by references to the Complainant’s BEACHES resort on Turks and Caicos. The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent has not been commonly known by the disputed domain name, and has not been authorized to use the Complainant’s mark.

Further, the Complainant submits that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or otherwise making a legitimate noncommercial or fair use of the disputed domain name, but that the Respondent instead is intentionally trading on the initial interest confusion resulting from the incorporation of the Complainant’s BEACHES mark in the disputed domain name, in order to attract Internet visitors to a website promoting the services of other parties, including direct competitors of the Complainant. In view of the foregoing, the Complainant also submits that the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 -177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The disputed domain name registered is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests with respect to the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that for purposes of paragraph 4(a)(i) of the Policy the disputed domain name is confusingly similar to the Complainant’s BEACHES mark, in which the Complainant has established rights through registration and long and extensive use. In considering the question of identity or confusing similarity, the first element of the Policy stands essentially as a standing requirement.² The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.

There are differing views as to what is meant by “confusingly similar” in this context. In Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 the panel applied a test which expressly disavowed any call for a likelihood of Internet user confusion; by contrast in SANOFI-AVENTIS v. Jason Trevenio, WIPO Case No. D2007-0648, the panel took a diametrically opposed view. The range of views is discussed in Apple Inc. v. Fred Bergstrom, LottaCarlsson, Georges Chaloux and Marina Bianchi, WIPO Case No. D2011-1388.

In this instance, the disputed domain name incorporates the Complainant’s mark in its entirety, and the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, whichever test is applied. In the Panel’s view, the confusing similarity of the disputed domain name to the Complainant’s mark is not overcome merely by the addition dictionary or descriptive terms such as “resorts” and “Turks and Caicos”, which in this instance is likely to call to mind the Complainant and its services. See Sandals Resorts International (2000) Limited v. BSJ Marketing, WIPO Case No. D2010-2218; See also National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain name is confusingly similar to the Complainant’s BEACHES mark. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark. The Respondent notwithstanding has used the disputed domain name with a website promoting various holiday and vacation resorts, including both the Complainant’s and those of competitors of the Complainant.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not submitted a formal Response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.

Based on the record in this proceeding, the Panel is persuaded that the Respondent was aware of the Complainant and had the Complainant’s BEACHES mark in mind when registering the disputed domain name. The Panel finds that the Respondent most likely registered the disputed domain name in order exploit and profit from the Complainant’s rights in the BEACHES mark through the creation of Internet user confusion. Internet users diverted to the Respondent’s website could easily be confused whether they have arrived at the Complainant’s website, or another website that is affiliated with or has the endorsement or sponsorship of the Complainant. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.

In short, the record does not reflect the Respondent’s use of the disputed domain name in connection with a bona fide offering of goods or services, or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or that the Respondent has been commonly known by the disputed domain name, or authorized to use the Complainant’s mark. To the contrary, and in the absence of any reply by the Respondent, the record reflects that the Respondent has no rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. It is reasonably clear from the relevant circumstances that the Respondent was aware of the Complainant and had the Complainant’s mark in mind when registering the disputed domain name. In the absence of any reply by the Respondent, the record evinces that the Respondents’ primary motive in relation to the registration and use of the disputed domain name was to capitalize on or otherwise take advantage of the Complainant’s trademark rights, through the deliberate creation of Internet user confusion. The record on balance reflects that the Respondent registered and has used the disputed domain name in bad faith to intentionally attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <beachesresortturksandcaicos.net> be transferred to the Complainant.

William R. Towns
Sole Panelist
Dated: August 27, 2012

¹ The panel notes that the named Respondent is the registrant of the disputed domain name identified in the Registrar’s WhoIs records. To the extent that the Respondent may be a privacy protection service, in the absence of any disclosure of an underlying registrant, the Panel considers the Respondent properly named in the Complaint.

² See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.2.