The Complainant is Sandals Resorts International 2000 Inc., Panama, represented by Dechert, United Kingdom.
The Respondent is Super Privacy Service LTD, United States of America / Milen Radumilo, Romania.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2021. On November 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 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 November 17, 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 November 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 November 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2021.
The Center appointed Assen Alexiev as the sole panelist in this matter on December 16, 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 business under the brand “Sandals”. It has 16 luxury hotels across the Caribbean. The official website of the Complainant is located at “www.sandals.com”. It has been named the World’s Leading All-Inclusive Company for the last 25 years by the World Travel Awards and the Best All-Inclusive Holiday Company at the British Travel Awards 2018.
The Complainant is the owner of, inter alia, the following trademarks for the brand SANDALS (the “SANDALS trademark”):
- the United States trademark SANDALS with registration No. 1,614,295, registered on September 18, 1990 for services in International Classes 39 and 42;
- the United Kingdom trademark SANDALS with registration No. UK00001310680, registered on March 19, 1993 for services in International Class 43; and
- the European Union trademark SANDALS with registration No. 000169946, registered on June 11, 1998 for goods and services in International Classes 16, 25, 28, and 42.
The disputed domain name was registered on September 14, 2021. It currently resolves to a pay-per-click (“PPC”) parking webpage containing commercial links related to various hotels, resorts, and vacations in the Caribbean. The PPC site to which the disputed domain name resolves to also contains a banner offering the disputed domain name for sale.
5. Parties’ Contentions A. ComplainantThe Complainant submits that the disputed domain name is confusingly similar to the SANDALS trademark of the Complainant, as it reproduces this trademark in its entirety.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name. As of October 12, 2021, it hosted a website consisting of a directory of pay-per-click links which use the SANDALS trademark and refer to Antigua and Jamaica where the Complainant operates. The Respondent presumably generates monetary revenue through such links using the disputed domain name which is confusingly similar to the Complainant’s trademark and uses its goodwill. The Complainant points out that the disputed domain name was registered over two decades after the Complainant first conducted business under the SANDALS brand, and when the disputed domain name was registered, the Complainant had already achieved significant success around the world. Due to the reputation and international presence of the Complainant, it is reasonable to assume that the Respondent did not independently conceive of the name SANDALS and was aware of the Complainant and its rights and reputation in the SANDALS trademark at the time the disputed domain name was registered. The Complainant’s primary submission is that the Respondent chose the disputed domain name because it knew that the SANDALS trademark was well-known and associated with the Complainant, that use of the disputed domain name would create an association with the Complainant’s business as a result of its similarity to the SANDALS trademark, and that the disputed domain name would as a result draw traffic to the associated website.
The Complainant adds that it has not authorized the Respondent to use the SANDALS trademark or to apply for a domain name incorporating it, and the Respondent is not commonly known by this trademark.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent has registered it primarily for the purpose of disrupting the Complainant’s business, being aware of the SANDALS trademark and the Complainant’s rights in it at the time. The Respondent uses the SANDALS trademark in the disputed domain name to confuse and redirect online users to third party websites which is an indication of bad faith, particularly since the Respondent presumably attracts commercial gain through redirecting traffic to these third-party websites purportedly offering competing goods or services. The Complainant also submits that the Respondent has engaged in a pattern of trademark-abusive domain name registrations and has been the subject of sixteen adverse UDRP decisions in 2021.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsPursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […].”
A. Identical or Confusingly SimilarThe Complainant has provided evidence that it is the owner of the SANDALS trademark. In view of this, the Panel accepts that the Complainant has established its rights in this trademark for the purposes of the present proceeding.
The Panel notes that a common practice has emerged under the Policy to disregard in most circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.asia” gTLD of the disputed domain name.
The relevant element of the disputed domain name is therefore “sandals”. This element reproduces the SANDALS trademark in its entirety without the addition of any other elements. The Panel therefore finds that the disputed domain name is identical to the SANDALS trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsWhile the overall burden of proof in UDRP proceedings is on the complainant, 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 often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name, with the burden of proof always remaining on the complainant. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, because the Complainant has not authorized it to use the SANDALS trademark, and the Respondent is not commonly known by the disputed domain name. According to the Complainant, the Respondent has registered it to exploit the Complainant’s goodwill in the SANDALS trademark by associating the disputed domain name to a website containing pay-per-click links that refer to hotels and resorts in Antigua and Jamaica where the Complainant operates. According to the Complainant, the Respondent chose the disputed domain name targeting the SANDALS trademark to create an association with the Complainant’s business and draw traffic to the associated website for financial gain. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not submitted a Response and has not denied the statements of the Complainant.
As discussed in section 6.A. above, the disputed domain name is identical to the SANDALS trademark, and the evidence in the case file shows that it resolves to a PPC parking webpage containing links to third party offerings of hotels and resorts in the Caribbean that are likely to be in competition with the Complainant. Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation (see WIPO Overview 3.0, section 2.5.1).
In view of the above, the Panel concludes that it is more likely than not that the Respondent has targeted the SANDALS trademark with the registration of the disputed domain name in an attempt to improperly capitalize on the reputation and goodwill associated with this trademark by confusing and attracting to the disputed domain name Internet users looking for the Complainant’s services and expose them to third party offerings of competing services. This conduct does not appear as legitimate and does not give rise to rights or legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights and or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
As discussed in the previous sections, the disputed domain name is identical to the SANDALS trademark which was first registered more than thirty years earlier, and the evidence in the case file shows that the associated PPC webpage contains commercial offerings of competing tourist services. The Respondent has not submitted any plausible explanation of its choice of the disputed domain name and of its use. Prior UDRP panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see WIPO Overview 3.0, section 2.9).
In view of the above, the Panel concludes that it is more than likely the Respondent was aware of the goodwill of the Complainant’s SANDALS trademark when it registered the disputed domain name, and that it registered and used it in an intentional attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s SANDALS trademark as to the affiliation of the Respondent’s website and of the third party offerings to which the Respondent’s website redirects. Moreover, pursuant to paragraph 4b(i) of the Policy, the PPC site to which the disputed domain name resolves to also contains a banner offering the disputed domain name for sale, further supporting an inference of bad faith (see WIPO Overview 3.0, section 3.1.1).
In view of all the above, the Panel finds 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
Assen Alexiev
Sole Panelist
Date: December 30, 2021