Generic Top Level Domain Name (gTLD) Decisions

Gorstew Limited, (Complainant Gorstew) Jamaica, and Unique Vacations, Inc., (Complainant Unique) Miami, FL, USA
COMPLAINANT,

vs.

Carpe Diem, (Respondent) San Diego, CA, USA
RESPONDENT.

DECISION
Claim Number: FA0005000094928

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain name at issue is “SANDALS-VACATION.COM”, registered with Network Solutions, Inc. (“NSI”).

PANELIST

Judge Ralph Yachnin, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“The Forum”) electronically on 05/30/2000; The Forum received a hard copy of the Complaint on 06/01/2000. 

On 06/05/2000, NSI confirmed by e-mail to The Forum that the domain name “SANDALS-VACATION.COM” is registered with NSI and that the Respondent is the current registrant of the name.  NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 06/07/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of 06/27/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.

On June 25, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Judge Ralph Yachnin as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant Gorstew is the owner of a trademark “Sandals” for use in connection with hotel and reservation services, sightseeing tours and motor vehicle transportation.  The Sandals trademark was first used in 1981 and was registered in International Classes 39 and 42 in 1990 under Registration Number 1614295.  On April 27, 1997, the “Sandals” trademark was registered under number 205432 in International Classes 16,18, and 25, to be used for merchandise associated with hotel services such as luggage, clothing, etc. 

Heretofore, the Complainant Gorstew permitted the “Sandals” trademark to be associated with a chain of tropical hotels which do business under the name “Sandals Resorts.”  It is the largest chain of tropical couples-only hotels in the Caribbean and the Bahamas.  Each of the hotels has a separate “Sandals” name followed by another word, e.g., “Sandals Royal Jamaican,” “Sandals Antigua.”  There are no other hotels which do business under the name “Sandals.” Sandals Resorts have spent millions of advertising dollars extensively throughout the world promoting their product.

Complainant Unique a Florida corporation, and the worldwide representative for Sandals Resort has registered the domain names “SANDALSRESORTS.COM” and “SANDALS.COM” with Network Solutions, which advertise Sandals Resorts. Neither of the Complainants has given any other person or entity permission to use the “Sandals” trademark as part of its domain name.

Respondent, a travel agent, sells vacation packages to Sandals Resorts, has registered domain name “SANDALS-VACATION.COM..” This leads the public to falsely believe that Respondent is the official home page of the Sandals Resorts.  Hence Respondent is luring the public into believing that Sandals Resorts is sponsoring the Respondent’s website.

B. Respondents

Complainants are acting irresponsibly.  A year ago Respondent signed over a domain to Complainants’.  Respondent never posted anything on the domain site. Complainant Unique has more money that the travel agents, and will keep spending until they give up.

FINDINGS

1. Complainant Gorstew is the owner of a trademark “Sandals” for use in connection with hotel and reservation services.

2. The Sandals trademark was first used in 1981 and registered in International Classes 39 and 42 in 1990 under Registration Number 1614295.  On April 27, 1997, the “Sandals” trademark was registered under number 205432 in International Classes 16,18, and 25, to be used for merchandise associated with hotel services. 

3.   Heretofore, the Complainant Gorstew permitted the “Sandals” trademark to be used by a chain of hotels doing business under the name “Sandals Resorts,” Each of the hotels has a separate “Sandals” name followed by another word, e.g., “Sandals Royal Jamaican,” “Sandals Antigua.” 

4.   Complainant Unique, a Florida corporation, and representative for Sandals

Resort and has registered the domain names “SANDALSRESORTS.COM” and “SANDALS.COM” with Network Solutions. Neither Complainants has given any other person or entity permission to use the “Sandals” trademark as part of its domain name.

5.      Respondent, a travel agent, sells vacation packages to Sandals Resorts, has registered domain name “SANDALS-VACATION.COM.,” This leads the public to falsely believe that Respondent is the official home page of the Sandals Resorts.   

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (“Policy”) directs that the complainant must prove each of the following three elements in order to demonstrate claims that a domain name should be canceled 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;

and

(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.

Identical and/or Confusingly Similar

The domain name SANDALS-VACATIONS.COM  registered by the Respondent is almost

identical and confusingly similar to the domain names of the Complainant

Unique, which is SANDALSRESORTS.COM and SANDALS.COM.

Rights or Legitimate Interests

The respondent has no right or legitimate interests in respect to the domain

name in issue and the fact that the Respondent is a travel agent and sells

Sandals Resorts, does give it any interest in or right to register the

"Sandals"name.

Bad Faith

The domain names SANDALSRESORTS.COM was registered and is being used in bad

faith as it is being used to confuse customers for its commercial gain and

disrupt the Complaints' business by preventing them from being able to use

the domain names.  In addition, even if the Respondent, as it claims, has not

posted anything on the domain site, the fact that a potential customer of the

Complaints' could log on to it and fail to find anything posted there, could

readily assume that Complainant is out of business and go elsewhere.

DECISION

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "SANDALS-VACATION.COM"

REGISTERED BY RESPONDENT BE TRANSFERRED TO COMPLAINANT UNIQUE.

Ralph Yachnin

Justice, Supreme Court (Ret.)

Arbitrator

June  29, 2000