Generic Top Level Domain Name (gTLD) Decisions

Complainant is Gorstew Limited ("Gorstew") & Unique Vacations, Inc. ("Unique"), ("Complainant"). Respondent is Berkshire Trust, Palm Springs, CA, USA ("Respondent").

The domain name at issue is "1800beaches.com" registered with Names4ever.

The Panelist certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as the panelist in this proceeding.

Honorable Carolyn Marks Johnson sits as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on August 17, 2000; The Forum received a hard copy of the Complaint on August 14, 2000.

On September 06, 2000, Names4ever confirmed by e-mail to the Forum that the domain name "1800beaches.com" is registered with Names4ever and that the Respondent is the current registrant of the name. Names4ever has verified that Respondent is bou nd by the Names4ever registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On September 11, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 31, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@1800beaches.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 6, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Honorable Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notic e to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, withou t the benefit of any Response from the Respondent.

Complainant requests that the domain name be transferred from Respondent to Complainant.

A. Complainant

B. Respondent

Complainant Gorstew is the owner of the trademark BEACHES (No. 2098026) for use in connection with hotel reservation services, sightseeing tours, and motor vehicle transportation. Gorstew allows its trademarks to be associated with a chain of all-i nclusive hotels that do business under the name "Beaches Resorts." Each hotel has a separate "Beaches" name (ex: Beaches Negril, Beaches Turks and Beaches Caicos, etc.) and they are advertised throughout the world.

Complainant Gorstew authorized Unique, a Florida corporation, to serve as the worldwide representative for Beaches Resorts and to provide marketing and reservation services. In connection with its marketing services, Unique registered the following dom ain names: <beaches.com>. Unique also owns the telephone number, "1-800-Beaches", which is used in attracting customers to purchase vacation packages at Beaches Resorts.

Based on Complainant Gorstew’s registered mark, Complainant has rights in the "BEACHES" mark.

Respondent is not a travel agent. Respondent is in the business of buying domain names and reselling them to those who have an interest in the names.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Respondent’s domain name is confusingly similar to Complainant’s mark. The domain name in question incorporates the Complainant’s BEACHES mark, adding the generic prefix (1800). The Panel concludes that the domain name is confusingly similar to Com plainant’s mark. See America Online v. iDomainNames.com, FA 93766 (Nat. Arb. Forum) (holding that the Respondent’s domain name <go2aol.com> was confusingly similar to AOL’s marks and domain name).

Complainant also has a common law trademark in the mark "1-800-BEACHES." The Complainant uses this mark as its telephone number for customer service, vacation sales, and general information about the Complainant. The telephone number is not a generic n umber, but rather it is stylized to include the name of the Complainant’s business. Thus, the Panel concludes that sufficient secondary association exists between Complainant’s services and the telephone number that comprises Respondent’s domain name. See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name "Julia Roberts" has sufficient secondary association with the Complainant that common law trademark rights exist).

The Panel finds that Respondent has no rights or legitimate interests in the domain name. See David G. Cook v. This Domain is For Sale, FA 94957 (July 12, 2000) (finding that the name does not reflect a name by which the Respondent is common ly known, nor is the Respondent using the site in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use).

Respondent is not using the domain name in connection with a bona fide offering of goods and services nor is Respondent making a legitimate noncommercial or fair use of the site. Policy ¶ 4(c)(i), (iii). Instead, Respondent se eks to profit from its registration and resale of said domain name.

Further, the name does not reflect a name by which Respondent is commonly known. Policy ¶ 4(c)(ii). Respondent’s business name does not incorporate the word "beaches" or the "1-800" prefix. Respondent registered the domain name under the name Berkshire Trust.

Policy ¶ 4.a.(iii) requires that Complainant prove that Respondent registered and used the domain name in bad faith in order to comply with ICANN Policy. See World Wrestling Fed. Entertainment, Inc. v. Bosman, D0099 -0001 (WIPO Jan. 14, 2000).

Given the similarity between the domain name and Complainant’s telephone number, Respondent was obviously aware of the existence of Complainant and its marks at the time it registered the domain name. Similarly, Respondent must have known that registra tion of the domain name would prevent Complainant from reflecting its telephone number, which includes Complainant’s registered mark, on the Internet. See The Board of Governors of the University of Alberta v. Michael Katz d.b.a. Domain Names for Sale , D2000-0378 (WIPO June 22, 2000). When Respondent purchased the said domain name, he knew or should have known that it would attract people searching for Complainant’s official site. Thus, the Panel concludes that Respondent registered the domain name in bad faith.

Respondent registered the domain name to prevent Complainant from utilizing its mark in a corresponding domain name. Respondent is in the business of buying domain names and selling them to parties that have interests in the domain name. This is eviden ce of a pattern of conduct that constitutes bad faith. Based on these undisputed facts, the Panel concludes that Respondent violated Policy ¶ 4.b.(ii), registering a domain name in order to prevent the mark owner from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct. Policy ¶ 4.b.(ii) is evidence of registration and use in bad faith. See America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Fo rum) (finding a pattern of conduct where Respondent has registered many domain names unrelated to Respondent’s business which infringe on famous marks and websites). Thus, the Panel concludes that Respondent registered and used the domain name in bad fait h.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name "1800BEACHES.COM" be transferred from Respondent to Complainant.

Honorable Carolyn Marks Johnson, Panelist
Dated: October 20, 2000