ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sandals Resorts International 2000 Inc. v. Geno Roefaro, GRI Holdings Case No. D2024-1422 1. The Parties The Complainant is Sandals Resorts International 2000 Inc., Panama, represented by Dechert, United Kingdom. The Respondent is Geno Roefaro, GRI Holdings, United States of America (US). 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2024. On April 4, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2024, 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 (Domains By Proxy, LLC DomainsByProxy.com) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 5, 2024, 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 April 9, 2024 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 April 11, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2024.
page 2 The Center appointed Oleksiy Stolyarenko as the sole panelist in this matter on May 10, 2024. 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 company incorporated in Panama, specializing in the provision of hospitality services and the operation of resort chains. The Complainant has been active in this business since the mid-1980s and now has 24 properties in eight countries across the Caribbean, including 18 all-inclusive resorts operating under the SANDALS brand. The Complainant has won numerous industry awards, including being named the World’s Leading All-Inclusive Company for 26 years in a row by the World Travel Awards. The Complainant has registered a number of SANDALS trademarks worldwide, covering various goods and services related to its activities. Some of the SANDALS trademark registrations are indicated below: - Canadian trademark registration No. TMA747646 for SANDALS, registered September 15, 2009, in classes 16, 25, 28, 35, 43. - US trademark registration No. 74011965 for SANDALS, registered September 18, 1990, in classes 39, 42. - Mexican trademark registration No. 420852 for SANDALS and design, registered August 27, 1992, in class 42. - European Union (“EU”) trademark registration No. 000169946 for SANDALS and design, registered on June 11, 1998, in classes 16, 25, 28, 42. The Complainant operates the domain name , which was registered on July 5, 1995, and a corresponding website, where it actively advertises hospitality services provided by its resort chain. The disputed domain name was registered on August 4, 2022, by the Respondent, based in the US. At the time of the decision, the disputed domain name resolves to a registrar’s parked page displaying pay-per-click advertising that includes advertising of resorts and hotels. Prior to initiating the dispute, the Complainant sent a letter dated January 31, 2024, to the Respondent through the privacy/proxy service but received no response. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. The Complainant contends that it has strong rights in the SANDALS trademark by virtue of its longstanding use and registration of the marks in a number of jurisdictions around the world, including use online. Additionally, the Complainant indicates that its activities and initiatives receive attention in media in many countries worldwide. The Complainant has developed substantial goodwill and reputation in its SANDALS name and marks. A number of previous UDRP panels have recognized the value of the Complainant’s trademark and its association with the Complainant. The Complainant contends that the disputed domain name is nearly identical and confusingly similar to its SANDALS trademark, as it incorporates the entire SANDALS trademark, along with the words “resorts” and
page 3 “reviews,“ combined with the generic Top-Level Domain (“gTLD”) “.com”. The Complainant claims that these additions do not prevent a finding of confusing similarity between the disputed domain name and its SANDALS trademark, and do not create an overall different impression. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name as the SANDALS trademark precedes the registration of the disputed domain name by years. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services. Moreover, the Respondent is not commonly known by the domain name. The Complainant has not authorized the Respondent to use the SANDALS mark in the disputed domain name. The Respondent was fully aware of the Complainant’s reputation and the Complainant’s trademark rights on the SANDALS mark when the Respondent registered the disputed domain name. The SANDALS mark is well known, and it is inconceivable that the Respondent registered the disputed domain name without knowing of the Complainant’s trademark rights. The disputed domain name was registered and is being used in bad faith by the Respondent. At the time of the Complaint, the disputed domain name resolved to a registrar's parked page displaying advertisements, including those for resorts and hotels, which competes with the Complainant's services. The Respondent’s use of the Complainant’s entire trademark combined with a word used to describe the Complainant’s business and the services associated with it in the disputed domain name is intended to lead consumers to believe that they have reached the Complainant’s website and to divert internet traffic from the Complainant thereby interfering with the Complainant’s business. Therefore, the disputed domain name has been registered by the Respondent in an unfair manner and in bad faith. It is also inconceivable that the Respondent had any good faith intentions at the point of registering the disputed domain name. The Complainant seeks a decision that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The gTLD in the disputed domain name is viewed as a standard registration requirement and as such is typically disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0. Therefore, the Panel disregards the gTLD for the purposes of this comparison.
page 4 Although the addition of other terms “resorts” and “reviews” to the Complainant trademark SANDALS separated by the hyphen in the disputed domain name may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds 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 rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. According to the Complainant, the Respondent is not authorized or licensed to use the SANDALS trademark in the disputed domain name. Given that the disputed domain name includes the Complainant’s trademark with added terms “resorts” and “reviews” that on the one hand are related to the sphere of business of the Complainant and on the other hand signal a potential “review site”, which could support a claim to a legitimate interest on the part of the Respondent. There is however, no response, and nothing on the related website except pay-per-click links, so the Complainant’s prima facie case remains unrebutted. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. As the Panel established above, the Complainant’s SANDALS trademark was used in commerce well before the registration of the disputed domain name on August 4, 2022. The Complainant’s SANDALS trademark predates registration of the disputed domain name for decades. Previous UDRP panels have already recognized the wide reputation of the SANDALS trademark: “Because the SANDALS mark is so well known, it is implausible to believe that the Respondent was not aware of it when it registered the disputed domain name.” See Sandals Resorts International 2000 Inc. v. Privacy service provided by Withheld for Privacy ehf / Kameila Ricketts, WIPO Case No. D2022-2639.
page 5 Another UDRP panel also noted: “The Complainant establishes that, by reference to its SANDALS trade mark, it has been well known for a long period in a number of jurisdictions, in connection with resort and travel services in the Caribbean.” See Gorstew Limited v. Global Access/ Moniker Priacy Services, WIPO Case No. D2008-0546. The Panel agrees and considers that the well-known character of the SANDALS trademark is established. The Panel finds with a high degree of certainty that the Respondent knew of the Complainant’s SANDALS trademark when registering the disputed domain name. This conclusion is supported by the well-known character of the Complainant’s mark, addition of other terms “resorts” and “reviews” to the Complainant trademark SANDALS in the disputed domain name that refer to the Complainant’s sphere of business, strong presence of the Complainant online and on the market of hospitality services in the United States, the reported country of the Respondent. With respect to the use, the Panel finds that, by using the disputed domain name to resolve to a registrar’s parked page with pay-per-click links that include advertisements for resorts and hotels, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark. Furthermore, the Responded failed to submit a response to disprove allegations of illegal activity or provide any evidence of a good faith use or to show rights or legitimate interests in the disputed domain name. The Panel concludes that the Respondent’s intent for registering the disputed domain name, which reproduces the Complainant’s trademark entirely has always been to capitalize on the goodwill of the Complainant’s trademark. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. Therefore, based on the confirmed reputation, fame, and long term use of the Complainant’s SANDALS trademark, and in the absence of the response from the Respondent providing any explanation or evidence of actual or contemplated good-faith use, the Panel finds the Respondent registered and used the disputed domain name in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) 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 name be transferred to the Complainant. /Oleksiy Stolyarenko/ Oleksiy Stolyarenko Sole Panelist Date: May 31, 2024
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