The Complainant is Sandals Resorts International 2000 Inc., Panama, represented by Dechert, United Kingdom.
The Respondent is Withheld for Privacy ehf, Privacy service provided by Withheld for Privacy ehf; Iceland / Kenichi Sasaki, Netsolutions, United States of America (“United States”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2021. On October 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 6, 2021, 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 the Complainant on October 13, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 18, 2021.
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 the Respondent of the Complaint, and the proceedings commenced on October 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2021. The Respondent did not submit a formal Response, but sent several informal emails before the commencement of the proceeding and after the Response deadline.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on December 10, 2021. 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 BackgroundThe Complainant operates a holiday and vacation business, which includes all-inclusive holidays and related services in various resorts located in Turks & Caicos and Jamaica. Per the Complaint, since 1997, the Complainant operates under the BEACHES brand, which has been awarded as the World’s Leading Family All-Inclusive Resort brand at the World Travel Awards for 23 consecutive years, and has been honored on various occasions by the World Travel Awards.
The Complainant owns numerous trademark registrations for BEACHES and BEACHES-formative marks in the United States as well as in other countries around the world, including:
United States Trademark Registration No. 2951577, BEACHES, word, registered on May 17, 2005, in Classes 39 and 43;
United States Trademark Registration No. 5362277, BEACHES RESORT BY SANDALS, figurative, registered on December 26, 2017, in Classes 16, 25, 35, 36, 39, 41, 43, 44, and 45;
United States Trademark Registration No. 5304502, BEACHES RESORTS FOR EVERYONE BY SANDALS, figurative, registered on October 10, 2017, in Classes 16, 25, 35, 39, 41, 43, 44, and 45;
European Union Trade Mark Registration No. 009401357, BEACHES, word, registered on March 22, 2012, in Classes 35, 39, 41, 43, and 44; and
Turkish Trademark Registration No. 2019/03686, BEACHES RESORTS FOR EVERYONE BY SANDALS, figurative, registered on August 22, 2019, in Classes 35, 39, 41, 43, 44, and 45, (collectively the “BEACHES mark”).
The Complainant further owns and operates a website related to its business and services at “www.beaches.com”.1
The disputed domain name was registered on August 11, 2021 and it is linked to a website in English and Turkish languages,2 which apparently offers “resort social networking” services under subscription. This website does not allow entering into any of its sections requiring registration, apparently including various sections, displaying icons with various titles such as “like posts”, “follow users”, or “share history”, which are not possible to consult, as well as an indication in its browser tab that states “Resort Social Networking”. The favicon used in the browser tab for this website is a stylized capital letter B. The “About Us” and “Privacy Policies” sections of this site, at its footage, do not include any information about the owner of the website or the owner of the disputed domain name, providing only instructions for completing each of the different paragraphs included in these sections, as it where only templates for these sections.
5. Parties’ Contentions A. ComplainantKey contentions of the Complaint may be summarized as follows:
The Complainant’s trademarks are well-known internationally. Various evidences provided by the Complainant as well as prior decisions under the Policy prove the reputation of the BEACHES mark internationally.
The disputed domain name consists of the BEACHES mark in its entirety (without alteration) being identical to this trademark, and confusingly similar to the BEACHES RESORTS marks. The generic Top-Level-Domain (“gTLD”) “.international” is generally irrelevant in the confusing similarity test, and, particularly in this case, the generic word “international” will be perceived by the average consumer as being applicable to the Complainant (given that the Complainant operates an international resort business).
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise authorized the Respondent to use its trademarks and the Respondent is not commonly known by the disputed domain name. The disputed domain name hosts an incomplete, non-operational website, which purportedly will offer “resort social networking” services. The browser tab for the disputed domain name states “Resort Social Networking” using a favicon similar to the one used for many years in the browser tab of the Complainant’s website (a stylized and capitalized letter “B”), generating and amplifying a risk of association. As “resort” is synonymous of the Complainant and its business, the inclusion of this term in the browser tab of the disputed domain name creates an association, in an effort to take advantage of the Complainant’s goodwill and reputation to increase the traffic of the Respondent’s website for commercial gain. The Respondent’s efforts to attract Internet users to its website for commercial gain through confusion prevent any possibility that the disputed domain name is being used in connection with either the good faith offering of goods or services or the good faith operation of a business.
The disputed domain name was registered and is being used in bad faith. The disputed domain name was registered almost 25 years after the first use of the Complainant’s trademarks in respect of, inter alia, an international resort business. Due to the international reputation and presence of the Complainant and its trademarks at the time the disputed domain name was registered, it is reasonable to assume that the Respondent was aware of the Complainant’s prior rights and reputation. Alternatively, the Respondent had constructive knowledge or should have known of the Complainant’s rights in the BEACHES brand, which would have been revealed by any basic trademark search in the United States, the European Union, or many other jurisdictions, or by simply searching for the words “beaches” and “resort” in any Internet search engine. The Respondent targeted the Complainant’s trademark using a similar favicon and the indication “Resort Social Networking” in the browser if the disputed domain name, to trade off the Complainant’s use of its mark and to attract for commercial gain Internet traffic by creating a likelihood of confusion. Given the international reputation of the Complainant’s business, Internet users will be confused into believing that any website at the disputed domain name associated with resort related services is registered to, operated by, or authorized by the Complainant. These facts would give rise to trademark infringement actions under, among others, United States and European Union trademark infringement law, which is further evidence of bad faith.
The Complainant has cited previous decisions under the Policy and various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that it considers supportive of its position, and requests the transfer of the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
In various unsigned email communications addressed to the Center, the Respondent (or any person using its email address) requested information about this proceeding and indicated that the Complainant’s company name is quite different to the disputed domain name. One of these communications apparently indicated that the Complainant should compensate the Respondent for the disputed domain name, indicating, “[…] if he complain about the use of my domain name (intellectual property) for my use he should just pay btc or money or something for […].”
None of the Respondent’s communications indicates any information or contains any evidence related to the Respondent’s business or any rights or legitimate interests in respect of the disputed domain name.
The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
A. Identical or Confusingly SimilarThe Complainant indisputably has rights in the BEACHES mark, both by virtue of its trademark registrations and as a result of its extensive and continuous use of this mark for over 24 years.
The disputed domain name incorporates the BEACHES mark in its entirety, adding the gTLD “.international” which is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, this Panel finds that the disputed domain name is identical to the Complainant’s BEACHES mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.3
B. Rights or Legitimate InterestsAlthough the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests.
The Complainant’s above-noted assertions and evidence in this case effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, in order to rebut the Complainant’s prima facie case.
The Respondent has not replied to the Complainant’s contentions, not providing any explanation or evidence of rights or legitimate interests in the disputed domain name, apart from indicating (in various informal emails) that the disputed domain name is not similar to the Complainant’s company name and that the Complainant should compensate financially the Respondent for the disputed domain name.
The Panel notes that the disputed domain name is comprised of a dictionary word, namely, the English term “beaches”. This term may be the plural form of the word “beach”, equivalent to an area of sand or stones beside the sea, or the third person singular present tense of the verb “to beach”, equivalent to be pulled or forced out of the water and onto land.
Panels have recognized that registering a domain name comprised of a dictionary word or phrase may confer rights or legitimate interests on the respondent, when the domain name is genuinely used or demonstrably intended for use in connection with the its dictionary meaning and not to trade off third-party trademark rights. See section 2.10 of the WIPO Overview 3.0.
In the present case, the disputed domain name resolves to an incomplete website that apparently aims to offer “resort social networking” services under subscription. The Panel notes that the dictionary meaning of the term “beaches” is unrelated as such to the apparent services of the Respondent’s website. Therefore, on the Panel’s view, the Respondent may not have rights or legitimate interests in the disputed domain name based on the dictionary meaning of the disputed domain name.
The Panel further notes that the Complainant’s business comprise a wide spectrum of entertainment services commonly considered included in the type of vacation services provided by the Complainant under the BEACHES mark. Some of these services may include, inter alia, entertainment and social networking services for its guests, which coincide and compete with the services that the Respondent is apparently willing to provide through the website linked to the disputed domain name. The Panel therefore considers that the use of the disputed domain name collides with the Complainant’s business and trades off its trademark rights, not being possible to consider such use as a bona fide offering of goods or services under the Policy.
It is further to be noted that a core factor in assessing fair use of a domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name incorporates the BEACHES mark in its entirety, adding the gTLD “.international”. The Panel notes that the international character of the Complainant’s business is underlined in the own Complainant’s company name, which includes the same term (“international”).
The Panel further notes that the reference in the browser tab of the disputed domain name to services related to “resort social networking” contributes to generate an affiliation to the Complainant’s trademarks, as many of the Complainant’s registered trademarks include the term “resorts” and these services are part of the Complainant’s business and corporate name.
It is further remarkable that the Respondent, although sending various emails to the Center in connection with this proceeding, has chosen not to reply to the Complaint, not providing any information or evidence in connection to its business or to any possible rights or legitimate interests in the disputed domain name.
The Panel, therefore, finds the only evidence in this case of any potential rights or legitimate interests in respect of the disputed domain name in favor of the Respondent is an inaccessible website that does not allow the consultation of any of its announced sections (and could have been created as a pretext to avoid the consequences of this proceeding).
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not rebutted that the Complainant’s prima facie case. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
C. Registered and Used in Bad FaithThe Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel notes the continuous and extensive use of the BEACHES mark and its presence over the Internet since at least January 1998,4 being the Complainant’s business promoted in many jurisdictions, and particularly in United States, as the Caribbean Islands (where the Complainant’s resorts are located) are a common vacation destiny.
The Panel under its general powers, articulated, inter alia, in paragraph 10 of the Rules, has consulted the Complainant’s website, where various vacation packages (including flights and stays in its resorts) are offered, including more than 100 locations in the United States for possible departing flights for these packages where the Complainant’s vacation services are available.
The Panel further notes that the Complainant’s trademarks and its business has been awarded within the tourism industry for many years. Therefore, the Panel finds that the BEACHES mark and the Complainant’s resorts are notorious in this sector internationally and particularly in the United States.
The Panel considers that many circumstances of this case point to bad faith registration and use of the disputed domain name:
(i) the disputed domain name incorporates the Complainant’s trademark in its entirety using a gTLD that may refer to the international character of the Complainant’s business and corporate name, which enhances the intrinsic likelihood of confusion and affiliation;
(ii) the Complainant’s trademark is notorious in its sector, and the Complainant operates internationally for more than 24 years, being its business particularly promoted and addressed to the market where the Respondent is located according to the Registrar verification;
(iii) the Complainant has been promoting its business and resorts online for over 24 years5 at a website that uses a domain name identical to the disputed domain name (“www.beaches.com”);
(iv) the disputed domain name is not used in connection to a dictionary meaning;
(v) the disputed domain name resolves to an incomplete website that does not allow the consultation of any of its sections and do not include any information about its owner or that of the disputed domain name, allegedly providing or aiming to provide “resort social networking” services and the Respondent did not provide any screenshots or explanation of this;
(vi) the Respondent’s business such as it appears to be (apparently related to resort social networking services) partly collides and competes with the Complainant’s business, providing services related to entertainment in resorts, which are also provided by the Complainant in its resorts, for which the BEACHES mark is notorious in its sector;
(vii) the Respondent used a privacy service to register the disputed domain name;
(viii) the Respondent has forwarded to the Center various email communications, not providing any information about its business or about its identity, not signing any of its emails and not including any contact details;
(ix) the Respondent, although contacting the Center in various occasions with reference to this proceeding, sending various unsigned email communications, has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint; and
(x) in one of the Respondent’s communications to the Center, it requests financial compensation for the disputed domain name.
A compelling factor in this case is that the disputed domain name is linked to an incomplete website unrelated to the meaning of the disputed domain name that allegedly will provide services related and partly identical to the services provided by the Complainant under the BEACHES mark. Therefore, the Respondent’s website leads Internet users to believe that it is affiliated with or endorsed by the Complainant.
In light of the above, taking into consideration all cumulative circumstances of this case, on the balance of probabilities, the Panel considers that the disputed domain name was registered and is being used targeting the BEACHES mark, in bad faith, with the intention of obtaining a free ride on the established reputation of the Complainant and its trademark in the entertainment and vacation resorts’ services. The Panel further finds that, as the disputed domain name is used in a website undersubscription, which implies collecting sensible data from its potential users, the disputed domain name is capable of being used in any type of phishing, online scam, or other fraudulent schemes targeting the Complainant’s customers.
Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the disputed domain name has been registered and is being used in bad faith.
7. DecisionFor 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
Reyes Campello Estebaranz
Sole Panelist
Date: December 24, 2021
1 The domain name
2 The website linked to the disputed domain name mentions three languages, namely English, Turkish, and Japanese; however, it only includes the English and Turkish versions, being the Japanese version in blank.
3 See sections 1.7, 1.8, and 1.11 of the WIPO Overview 3.0.
4 See footnote No. 1, supra.
5 See footnote No. 1, supra.