The Complainant is Sandals Resorts International 2000 Inc., Panama, represented by Dechert, United Kingdom (“UK”).
The Respondent is Super Privacy Service LTD, United States of America (“United States”) / Niuxin Xin, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2021. On November 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 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 December 2, 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 December 3, 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 December 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2022.
The Center appointed William F. Hamilton as the sole panelist in this matter on February 14, 2022. 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 has operated a holiday business under the mark SANDALS (the “Mark”) since the mid-1980s. The Complainant has 24 properties across the Caribbean, including 16 luxury hotels.
The Complainant owns the domain name
The Complainant owns various registrations incorporating the Mark SANDALS, the earliest of which is Registration No. 1,614,295 with the United States Patent and Trademark Office filed on December 18, 1989, and registered on September 18, 1990.
The disputed domain name was registered on October 25, 2021. The disputed domain does not resolve to an active website.
5. Parties’ Contentions A. ComplainantThe Complainant asserts the disputed domain name is confusingly similar to the Mark because the disputed domain name is composed by merely dropping the letter “s” from the Mark and adding a hyphen followed by the dictionary word “hotels”.
The Complainant asserts that the Complainant never authorized the Respondent to use the disputed domain name, that the Respondent is not generally known by the disputed domain name, and that the Respondent has never engaged in any bona fide commercial activity in connection with the disputed domain name.
The Complainant asserts that the Respondent registered and used the disputed domain name in bad faith because it is implausible the that the Respondent was unaware of the Complainant’s Mark and the Complainant’s presence in the holiday industry.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark.
The disputed domain name is composed by dropping the character “s” from the Mark and the adding the dictionary term “hotels” following a hyphen. A domain name which wholly incorporates a complainant’s registered mark is sufficient to establish confusingly similarity for the purposes of the Policy when, as here, the Mark is a clearly recognizable within the disputed domain name notwithstanding the addition of a descriptive term as a suffix or minor character changes. Here the visual impact of the Mark in the disputed domain name is apparent and obvious. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”); Regeneron Pharmaceuticals, Inc. v. Registration Private, Domains by Proxy, LLC / Regeneron Careers,WIPO Case No. D2017-0013; Bombas LLC v. Domain Administrator, See PrivacyGuardian.org / Maryellen J Dillard, Maryellen Dillard,WIPO Case No. D2021-0609.
The generic Top-Level Domain (“gTLD”) of the disputed domain name, in this case “.com”, is disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1; Monster Energy Company, a Delaware Corporation v. J.H.M. den Ouden,WIPO Case No. D2016-1759; International Business Machines Corporation v. Sledge, Inc. / Frank Sledge,WIPO Case No. D2014-0581.
The Complainant has met its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. The Respondent is not affiliated with the Complainant in any way and does not have any business relationship with the Complainant. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name or is commonly known by the disputed domain name. Compagnie de Saint Gobain v. Com-Union Corp.,WIPO Case No. D2000-0020.
The Complainant has thus established a prima facie case in its favor, which shifts the burden of production on this point to the Respondent. The Respondent, however, has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name.
Furthermore, the nature of the disputed domain name, which highly resembles the Mark carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1. The insignificant change in the Mark created by dropping the letter “s” combined with the addition of the word “hotels” strongly suggests that the disputed domain name will resolve to a website offering holiday resort services provided by the Complainant.
The facts and circumstances presented to the Panel demonstrate that the Respondent does not have any rights or legitimate interests in the disputed domain.
C. Registered and Used in Bad FaithUnder paragraph 4(b) of the Policy, bad faith may be established by any one of the following 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 on-line 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 the disputed domain name was registered and is being used in bad faith.
A simple Internet search, normally undertaken before registering a domain name, would have disclosed the Complainant’s Mark. Common sense compels the conclusion that the Respondent was quite aware of the Complainant’s Mark when registering the disputed domain name. The addition of the dictionary word “hotels” is compelling evidence that the Respondent was aware of the Complainant’s rights and interests when registering the disputed domain name. Even if one were to accept the unbelievable proposition that the Respondent was unaware of the Mark, willful blindness is no excuse and does not avoid a finding of bad faith registration and use. Instagram LLC v. Contact Privacy Inc. / Sercan Lider,WIPO Case No. D2019-0419.
Noting the composition of the disputed domain name, it is difficult to conceive of any use that the Respondent might make of the disputed domain name without the Complainant’s consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmellows,WIPO Case No. D2000-0003; Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909 (where the reputation of a complainant in a given mark is significant and the mark bears strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred); DPDgroup International Services GmbH & Co. KG v. Wise One, Wilson TECH,WIPO Case No. D2021-0109; Monster Energy Company v. PrivacyDotLink Customer 116709 / Ferdinand Nikolaus Kronschnabl,WIPO Case No. D2016-1335.
It appears that the disputed domain name has never resolved to an active website. The current passive holding of the disputed domain name does not absolve the Respondent of bad faith registration and use, and, in fact, under the circumstances of this case is further evidence of bad faith registration and use. A finding of bad faith registration cannot be avoided by the Respondent merely because the Respondent has not yet deployed the disputed domain name. See WIPO Overview 3.0, section 3.3. Medtronic, Inc. v. Roohi B Rasheed, Roohi B Rasheed Rasheed,WIPO Case No. D2020-1161.
The Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
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
William F. Hamilton
Sole Panelist
Date: February 27, 2022