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 BSJ Marketing of Jacksonville, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2010. On December 20, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On December 21, 2011, GoD, Inc. 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 December 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2011.
Following a communication from the Respondent of January 13, 2011, the Complainant requested the Center on January 14, 2011, to suspend the proceedings to try to reach an amicable settlement. On January 14, 2011, the Center suspended the proceedings until February 13, 2011. Parties not having reached a settlement, the Center, as per the Complainant’s request, reinstituted proceedings on February 11, 2011.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on February 14, 2011. 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 a resort operator, operating resorts under the name, inter alia, Beaches Resorts in Jamaica and the Turks and Caicos Islands. It is the owner, by assignment from Gorstew Ltd, of registrations of the trademark BEACHES in the United States of America, the European Union and the United Kingdom. It operates a website at .
From February 2007 to June 2010, the Respondent was a member of an affiliate programme operated on behalf of the Complainant under which affiliates were able to earn commissions on bookings made with the Complainant through the affiliate. Under the programme, affiliates were prohibited from registering domain names incorporating any of the Complainant’s trademarks, including the trademark BEACHES, or any of the names of the Complainant’s resort properties. Affiliates were required to generate their own website content and were prohibited from direct linking to the Complainant’s website and from using the Complainant’s trademarks as keywords. In April 2010 the administrators of the Complainant’s affiliate programme, Commission Junction, became aware that the Respondent had acted in breach of these conditions and the Complainant’s solicitors, acting on behalf of Gorstew Ltd sent a letter of demand to the Respondent demanding immediate transfer of the disputed domain name to Gorstew. On May 28, 2010 the administrator of the Complainant's affiliate programme, Commission Junction, also sent a demand to the Respondent notifying it that it was in breach of the affiliates’ agreement. A further letter of demand was sent by the Complainant’s solicitors in June 2010. According to the Complainant, no reply was received to any of these communications. As at the date of the Complaint the disputed domain name continued to link to and reflect the Complainant’s homepage. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the names and trademarks in which the Complainant has rights and that the addition of the descriptive word “resort” does not make the disputed domain name distinctive. It contends that whilst the word “beach” is commonly used in connection with holidays and resorts, the plural form of the word does not make grammatical sense in front of the word “resort”.
The Complainant asserts that it has not licensed or otherwise permitted or authorized the Respondent to use its trademark or to incorporate it into a domain name and that such action was prohibited under the terms of its affiliate programme. The Complainant therefore contends the Respondent’s use was not in connection with a bona fide offering of goods or services as the Respondent has no connection with the Complainant. The Complainant says that the Respondent’s use of the disputed domain name in the expectation of booking commissions was commercial and was not legitimate or fair and that the Respondent was not previously known by the disputed domain name.
The Complainant submits that the disputed domain name was registered in bad faith because at the time of registration the Respondent was fully aware of the Complainant’s trademark rights and registered the disputed domain name in breach of the terms of its affiliate programme agreement. The Complainant contends that the Respondent’s use of the domain name has been in bad faith because, whilst the Respondent was a member of the affiliate programme, such use was in breach of the terms of the programme, and since the termination of the Respondent’s affiliate status, there was no connection between the Complainant and the Respondent. In the alternative, the Complainant submits that the Respondent’s continued holding of the disputed domain name after termination of the Respondent’s connection with the Complainant amounts to a passive holding which is in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has documented registration rights in the trademark BEACHES. The disputed domain name consists of the combination of the Complainant’s trademark with the word “resort” which, in the context in which the trademark is used can only serve to reinforce the likelihood of confusion between the Complainant’s trademark and the disputed domain name.
The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Clearly the Respondent was not authorized to register or use the disputed domain name nor was it commonly known by it.
The Respondent’s use of the disputed domain name was in bad faith for the reasons set out in paragraph 6C below. As such it cannot be said to be use in connection with the bona fide offering of goods or services.
There is no other apparent basis upon which the Respondent could have claimed a right or legitimate interest in the disputed domain name. It had the opportunity to attempt to do so but did not. The Complainant’s prima facie case is therefore established and accordingly the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds on the aforementioned uncontested facts that the disputed domain name was registered in full knowledge of the Complainant’s trademark rights and in direct contravention of the terms of the affiliate programme for which it subscribed. Likewise the Respondent’s use of the disputed domain name whilst it was a member of the affiliate programme was also in direct breach of the terms of that programme. Its continued use after its membership of the programme had been terminated was not legitimate nor was it fair. Whether or not the use was for commercial gain after the termination of the Respondent’s participation in the affiliate programme may be open to question since presumably it then ceased earning commissions from bookings made through the website. Nevertheless, the Respondent continued holding the domain name and maintaining the website despite requests from the Complainant for its transfer. This must inevitably lead to confusion of that website with the Complainant and the services which it provides. As has been recognized in a number of prior panel decisions the categories of bad faith are not foreclosed by the examples given in paragraph 4(b) of the Policy, see for example Pharmacia & Upjohn AB v. Dario H. Romero,WIPO Case No. D2000-1273.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith. 7. Decision
For all 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 be transferred to the Complainant.
Desmond J. Ryan AM
Sole Panelist
Dated: February 24, 2011
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