The Complainant is Sandals Resorts International 2000 Inc., Panama, represented by Dechert, United Kingdom.
The Respondent is Agostino Reali, United States of America (“United States” or “U.S.”). 2. The Domain Name and Registrar
The disputed domain names and were registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2019. On May 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 24, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. However, The Center sent an email communication to the Complainant on May 29, 2019 regarding the Complaint exceeding the 5,000 word limit specified in WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”), paragraph 11(a) and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 6, 2019.
The Center verified that the Complaint together with the amended 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 Supplemental Rules.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2019. The Respondent did not submit a formal response. The Center received various communications from the Respondent on June 7, 2019. Accordingly, the Center notified the Respondent about the Commencement of Panel Appointment Process on June 28, 2019.
The Center appointed Luiz Montaury Pimenta as the sole panelist in this matter on July 10, 2019. 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 Jamaican chain of all-inclusive resorts, established in the early 1980s.
The Complainant operates in 24 locations across the Caribbean, under two different brands and operations: the SANDALS and SANDALS RESORTS brands are used in respect of the Complainant’s chain of luxury adults only resorts and the BEACHES and BEACHES RESORTS brands are used in respect of the Complainant’s family-friendly resorts.
The first Sandals Resort was launched in 1981 and the first Beaches Resorts was opened in 1997.
The Complainant owns several trademark registrations for the SANDALS mark, such as United States registration no. 1614295, registered since 1990, and for the SANDALS RESORTS mark, such as United States registration no. 4047770, registered since 2011.
In addition, the Complainant is also the owner of several trademark registrations for the BEACHES mark, such as Australian registration no. 639741, since 1994, and for BEACHES RESORTS mark, since 1998, such as Canadian registration no. 825732.
The Complainant owns other several related trademark registrations in several jurisdictions around the world, including United States, Canada, European Union, among others, as indicated in Annex F of the complaint.
Moreover, the Complainant is also the registrant of the domain names and , since July 5, 1995 and April 15, 1995, respectively.
The Respondent did not submit a formal Response, and, therefore, very little information is known about the Respondent.
The disputed domain names were both registered on September 17, 2018 and do not resolve to active websites. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain names are confusingly similar to the Complainant’s registered trademarks. The Complainant affirms that the disputed domain name is comprised of a misspelling of the Complainant’s SANDALS RESORTS registered mark, added by the word “direct” and the generic Top-Level Domain (“gTLD”) “.com”. Likewise, the Complainant affirms that the disputed domain name is comprised of the Complainant’s BEACHES RESORTS mark together with the word “direct” and the gTLD “.com”.
The Complainant highlights that the addition of the term “direct” in both of the disputed domain names even increases the likelihood of confusion among the public, considering that internet users would interpret the word “direct” as of lack of middleman in order to purchase the Complainant’s services and products, which is not true.
The Complainant also claims that the Respondent has no rights and lacks legitimate interests in relation to the disputed domain names.
That is mostly based on the exchanged correspondence of the Complainant’s solicitors with the Respondent, as indicated by Annex J of the Complaint. The Complainant alleges that the mentioned correspondence attests that the Respondent was definitely aware of the Complainant’s trademark rights over the SANDALS RESORTS and BEACHES RESORTS marks and that’s why it registered the disputed domain names.
In addition, in regard to the Respondent’s knowledge of the Complainant’s marks, the Complainant highlights that the disputed domain names were registered in September 2018, many years after the Complainant first conducted business under the SANDALS RESORTS and BEACHES RESORTS, as well as it is many years after the Complainant filed its first trademark registration for the mentioned marks.
Thus, the Complainant argues that there is no reasonable alternative explanation for the Respondent to register the disputed domain names, on the same date, each coinciding with one of the Complainant’s primary marks.
The Complainant also argues that, considering that the disputed domain names are composed by an identical reproduction of the Complainant’s marks or misspellings thereof, with the mere addition of the term “direct”, is that no legitimate noncommercial or fair use can be inferred from the registration of the disputed domain names by the Respondent, in spite of the fact that the disputed domain names do not resolve to any websites.
The Complainant affirms that nothing suggests that the Respondent, or any business or other organization in which the Respondent is involved, has been or is commonly known by the registered marks owned by the Complainant and the Respondent has not made any suggestion to that effect in correspondence with the Complainant’s representatives.
Moreover, in regard to bad faith, the Complainant sustains that the Respondent registered and is using the disputed domain names in bad-faith, considering that the Respondent registered the disputed domain names (i) with actual knowledge of the Complainant’s trademark rights over the SANDALS RESORTS and BEACHES RESORTS marks, (ii) knowing that the disputed domain names were confusingly similar to the mentioned trademarks, (iii) intending to take advantage of such confusing similarity to attract Internet users to the disputed domain names for the Respondent’s commercial gain, and (iv) with the purpose of disrupting the Complainant’s business.
The Complainant based these arguments on the similarity of the disputed domain names with its SANDALS RESORTS and BEACHES RESORTS marks as well as for the correspondence exchanged with the Respondent prior to this administrative proceeding. B. Respondent
The Center received various informal communications from the Respondent on June 7, 2019, in which the Respondent stated that it did not own the disputed domain names anywhere and it returned them to the Registrar. 6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:
(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) the respondent has no rights or legitimate interest in respect of the disputed domain name;
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the required rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. As disclosed through Annex F of the Complaint, the Complainant owns several trademark registrations for the SANDALS RESORTS and BEACHES RESORTS marks, all around the world, in several classes, since at least 1990 for the SANDALS marks and 1994 for the BEACHES marks.
The disputed domain name is clearly a misspelled reproduction of the Complainant’s SANDALS RESORTS marks, with the mere addition of the word “direct”, insufficient to prevent the confusing similarity with the Complainant’s SANDALS RESORTS marks.
The disputed domain name is a reproduction of the Complainant’s BEACHES RESORTS marks, with the mere addition of the word “direct”, which does not prevent the similarity with the Complainant’s BEACHES RESORTS marks.
Moreover, the Complainant has proven that it is the owner of the and domain names since July 05, 1995 and April 15, 1995, respectively, having legitimate rights in relation to these domain names.
The Panel, thus, concludes that the Complainant has established the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant has alleged that the Respondent has no rights or legitimate interests with respect to the disputed domain names.
There is no evidence that the Respondent has, before any notice of the dispute, ever been commonly known by the disputed domain names nor has made or is making a legitimate noncommercial or fair use of the disputed domain names.
The Complainant has never authorized, licensed or permitted, in any way, the Respondent to register or use the disputed domain names.
Considering the evidence on the file and that the Respondent did not submit a formal Response to the Complaint, this Panel finds that there are no elements suggesting that the Respondent has or might have had rights or legitimate interests in respect of the disputed domain name.
Moreover, the Panel finds that the disputed domain names carry a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
Therefore, the Panel concludes that the Complainant has succeeded to establish the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
In order to facilitate the assessment of whether the bad faith element is established, paragraph 4(b) of the Policy provides the following non-exclusive scenarios:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is 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) the respondent has 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted 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 the respondent’s website or location.
The Panel finds that the circumstance described in paragraph 4(b)(iv) of the Policy fit those of the current proceeding.
From the correspondence attached in Annex J to the Complaint, it is evident that the Respondent, at the time of the registration of the disputed domain names, was aware of the Complainant’s trademark rights and registered the disputed domain names with the intention of later becoming an authorized travel agent for the Complainant’s services and products, associating himself with the Complainant’s services.
It is clear that the Respondent was aware of the services provided by the Complainant for decades under the SANDALS RESORTS and BEACHES RESORTS marks, reason why it intended on becoming an authorized travel agent for the Complainant’s hotels/resorts. The Respondent even acknowledges that it should be authorized by the Complainant in order to start operating as an authorized travel agent.
However, from the documents attached to the Complaint it is clear that, the Complainant never had any interest for the Respondent to become its travel agent, never authorizing the use of the Complainant’s registered trademarks.
Considering that the Respondent registered the disputed domain names knowing of the Complainant’s trademark rights demonstrates the Respondent’s bad faith. Depending on the circumstances, bad faith exists where there can be no question that the Respondent knew or should have known about the Complainant’s trademark rights before registering the disputed domain names (see Travellers Exchange Corporation Limited v. WhoisGuard, Inc. / Lord Oxford,WIPO Case No. D2018-2231).
Finally, previous UDRP panels have ruled that a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site. To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
In this sense, the Panel finds that the Respondent registered the disputed domain names with the intention 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, considering the reproduction, in its entirety, even with misspellings, of the Complainant’s trademarks for the SANDALS RESORTS and BEACHES RESORTS marks.
This conclusion is supported by the fact that the Respondent failed to submit a formal Response in this case or to provide any evidence of the good faith registration and use of the disputed domain names.
Therefore, the Panel finds that the Complainant has established the third element of paragraph 4(a) 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 names and be transferred to the Complainant.
Luiz Edgard Montaury Pimenta
Sole Panelist
Date: July 22, 2019.
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