Complainant is Sandals Resorts International 2000 Inc., Panama, represented by Dechert LLP, United Kingdom.
Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States”) / Haziran Akbas, Turkey. 2. The Domain Name And Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2020. On June 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 5, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 9, 2020. 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 1, 2020. The Center appointed Roberto Bianchi as the sole panelist in this matter on July 8, 2020. 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 According to the Complaint, Complainant has operated a holiday business under the SANDALS brand since the mid-1980s. Presently, Complainant has 24 properties across the Caribbean, including 16 luxury SANDALS hotels. Complainant also operates a business under the brand BEACHES offering holidays to the Caribbean. Complainant opened its first holiday resort in 1997 and now has three BEACHES resorts. BEACHES has been named the World’s Leading Family All-Inclusive Resort brand at the World Travel Awards for 20 years in succession. Complainant owns, inter alia, the following trademark registrations: TRADEMARK JURISDICTION REGISTRATION No. REGISTRATION DATE FILING DATE CLASSES BEACHES United States 3070140 March 21, 2006 March 19, 2004 16, 18, and 25 (first use in commerce 1998) BEACHES RESORTS BY SANDALS European Union 014605513 February 8, 2016 September 28, 2015 16, 25, 35, 36, 39, 41, 43, 44, and 45 BEACHES RESORTS BY SANDALS United States 5362277 December 26, 2017 October 6, 2015 16, 25, 35, 36, 39, 41, 44, and 45 SANDALS (and design) Turkey 2019/06574 April 7, 2020 January 23, 2019 35, 39, 41, 43, 44, and 45 The disputed domain name was registered on January 31, 2020. At the time of rendering the Decision, the disputed domain name resolved to a website displaying an initial page, stating that a private seller is offering the disputed domain name for sale for USD 990. 5. Parties’ Contentions A. Complainant Complainant contends as follows: Complainant is the owner of goodwill and reputation internationally in the BEACHES, BEACHES RESORTS, SANDALS, SANDALS RESORTS, and BEACHES RESORTS BY SANDALS trademarks. The disputed domain name is identical or confusingly similar to Complainant´s BEACHES RESORTS BY SANDALS trademark. The disputed domain name consists of this mark in its entirety, and incorporates Complainant’s SANDALS, BEACHES, and BEACHES RESORTS trademarks. Respondent does not have any rights or legitimate interests in the disputed domain name. The disputed domain name was registered in January 2020, over two decades after Complainant began conducting business under the BEACHES and SANDALS brands and filed its first trademark registration. Respondent chose the disputed domain name because he knew: (i) that the BEACHES RESORTS BY SANDALS trademark was well known and associated with Complainant; (ii) that use of the disputed domain name would create an association with Complainant’s business as a result of its similarity to its trademarks; and (iii) that the disputed domain name would as a result draw traffic to his website. Alternatively, Respondent had constructive knowledge or should have known of Complainant’s rights in the trademarks, which would have been revealed by a basic trademark search of the Turkish trademark registry or by searching the words “Beaches resorts by sandals” using an Internet search engine, which suggests that the disputed domain name was selected to trade off the reputation of Complainant´s BEACHES RESORTS BY SANDALS trademark. Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademarks. Given that the disputed domain name includes Complainant’s BEACHES RESORTS BY SANDALS trademark, no use of the disputed domain name by Respondent constitutes legitimate or fair use unless it was authorized by Complainant. Any use of the disputed domain name would take unfair advantage of Complainant’s rights and misleadingly divert users to Respondent’s website instead of Complainant’s website. Such use is neither a legitimate nor a fair use of the disputed domain name. Complainant has not licensed or otherwise permitted or authorized Respondent to use its BEACHES RESORTS BY SANDALS trademark or to apply for a domain name incorporating this trademark. Respondent’s name does not include Complainant´s trademark or anything similar and he is not commonly known by Complainant´s trademark. The disputed domain name was registered and is being used in bad faith. Respondent has registered the disputed domain name primarily for the purpose of disrupting Complainant’s business. Respondent must have been aware of Complainant’s rights in its trademarks when he registered the disputed domain name. Respondent’s use of the disputed domain name is intended to lead consumers to believe that they have reached (or have not been able to reach, as the case may be) Complainant’s website and so divert Internet traffic from Complainant thereby interfering with Complainant’s business. Respondent is using the disputed domain name to trade on Complainant’s rights and to confuse Internet users. That is, in itself, evidence of bad faith within the meaning of paragraph 4(b)(iii) of the Policy. Given that Complainant is internationally renowned and has significant goodwill, reputation and registered trademark protection it is inevitable that Internet users will be confused into believing that any website at the disputed domain name is registered to, operated by or authorized by Complainant It is not possible to conceive of any plausible use of the disputed domain name by Respondent that would not be illegitimate, such as by passing off or an infringement of Complainant’s rights. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar By submitting printouts from the corresponding official trademark databases, Complainant has shown that it owns the BEACHES RESORTS BY SANDALS trademark in, inter alia, the European Union and the United States. Complainant also owns registrations for the SANDALS trademark in, inter alia, Turkey. See section 4 above. The Panel notes that the disputed domain name incorporates the BEACHES RESORTS BY SANDALS trademark in its entirety, without the spaces between the terms and adding the generic Top-Level Domain “.com”. Therefore, the Panel finds that the disputed domain name is identical to a mark in which Complainant has rights. B. Rights or Legitimate Interests Complainant says it has not licensed or otherwise permitted or authorized Respondent to use its trademark or to apply for a domain name incorporating this trademark. Respondent, adds Complainant, chose the disputed domain name because he knew that the BEACHES RESORTS BY SANDALS trademark was well known and associated with Complainant. That use of the disputed domain name would create an association with Complainant’s business, which would draw traffic to Respondent’s website. The Panel notes that according to the WhoIs data disclosed by the Registrar, the registrant of record of the disputed domain name, i.e., Respondent, is Haziran Akbas. Since there is no allegation or evidence that this person is commonly known by the disputed domain name, Policy paragraph 4(c)(ii) does not apply. The Panel also notes that although each of the terms composing the BEACHES RESORTS BY SANDALS mark is a dictionary term by itself , the resulting compound was considered to be sufficiently distinctive by the trademark offices that granted registration for this mark (inter alia, the United States Patent and Trademark Office (“USPTO”) and European Union Intellectual Property Office). See section 4 above. In any case, Respondent appears to have registered the disputed domain name with Complainant, its mark BEACHES RESORTS BY SANDALS, and its hotel and resort services in mind. Generally speaking, domain names identical to a complainant’s trademark carry a high risk of implied affiliation. In addition, the disputed domain name resolves to a website on which it only is stated that a private seller is offering the disputed domain name for sale for USD 990. There is no evidence that Respondent has ever used the disputed domain name other than for seeking some gain from its sale, by profiting from the confusion with Complainant’s renowned mark. In the view of the Panel, this use is neither a bona fide use pursuant to Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use according to Policy paragraph 4(c)(iii). Thus, Complainant has succeeded in raising a prima facie case of Respondent´s lack of rights or legitimate interests in the disputed domain name. Since Respondent failed to submit any explanation or evidence for having registered the disputed domain name or for using it as shown, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Complainant’s BEACHES RESORTS BY SANDALS trademark was registered over four years before Respondent registered the disputed domain name. See section 4 above. Complainant also has shown that it operates a Sandals holiday business since the mid-1980s and that it opened its first holiday resort in 1997. In addition, Complainant owns 16 Sandals hotels in the Caribbean. It also operates a holiday business under the brand BEACHES. Annex E to the Complaint. Further, under the BEACHES brand, Complainant is offering holidays in the Caribbean. The Beaches family all-inclusive resort has received multiple awards as a leading brand. Annex D to the Complaint. Finally, Complainant’s application for its mark SANDALS in Turkey, the country of domicile of Respondent, was filed before the registration of the disputed domain name. See section 4 above. Together, these facts indicate that at the time of registering the disputed domain name, Respondent had Complainant’s BEACHES RESORTS BY SANDALS trademark in mind, and that he targeted it. Complainant’s BEACHES RESORTS BY SANDALS trademark, as a composite mark, is sufficiently distinctive for the products and services it covers. In addition, nothing suggests that Respondent registered this particular combination of terms as a domain name because of the common, dictionary or descriptive meaning of the components in isolation, and the nature of the disputed domain name creates a presumption of bad faith. Moreover, the fact that the disputed domain name is being offered for sale for USD 990 strongly suggests that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling or otherwise transferring the disputed domain name registration to Complainant or to a competitor of Complainant, for valuable consideration in excess of the costs directly related to the disputed domain name registration. According to Policy paragraph 4(b)(i), this is a circumstance of registration and use in bad faith of the disputed domain name. The Panel concludes that the disputed domain name was registered and is being used in bad faith. 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 Roberto Bianchi 1 The record on the USPTO’s TESS database for United States trademark registration No. 5362277 shows that no claim was made to the exclusive right to use “resorts” apart from the mark as shown, and that a distinctiveness limitation statement as to "beaches" was also made.
The disputed domain name has also been used in a way that is likely to dilute the reputation of Complainant´s trademarks and as such is evidence of bad faith. The mere registration alone of the disputed domain name by Respondent and not Complainant has meant that the trademarks are diluted. The disputed domain name was registered over 20 years after Complainant was founded and started trading under the trademarks, in which Complainant has substantial goodwill and reputation. In the absence of any legitimate interests, the registration of the disputed domain name cannot have been in good faith. Trademark searches on the date of the registration of the disputed domain name would have revealed Complainant’s trademark registrations, a further evidence of bad faith. It is reasonable to infer that Respondent had at least constructive, if not actual, knowledge of Complainant’s rights in the Trademarks when Respondent registered the disputed domain name.
Sole Panelist
Date: July 22, 2020
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