National Arbitration Forum




Intrawest Sandestin Company LLC v. Admin Contact

Claim Number: FA0910001289075



Complainant is Intrawest Sandestin Company LLC (“Complainant”), represented by Ginger Barry, of Broad and Cassel, Florida, USA.  Respondent is Admin Contact (“Respondent”), represented by Steve, Florida, USA.



The domain name at issue is <>, registered with, Inc.



The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.


Dennis A. Foster as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on October 13, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 19, 2009.


On October 13, 2009,, Inc. confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with, Inc. and that the Respondent is the current registrant of the name., Inc. has verified that Respondent is bound by the, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).


On October 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 12, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to by e-mail.


A Response was received on November 12, 2009.  However because this Response was received not in hard copy the National Arbitration Forum does not consider this Response to be in compliance with ICANN Rule 5.  Despite such noncompliance, the Panel believes that it should give due consideration to the electronic version of the Response (that was sent by the required deadline) in order to ensure “that each Party is given a fair opportunity to present its case” per ICANN Rule 10(b).  See, for example, J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (Accepting submission of a Response, without a timely filing of a hard copy, where “Respondent submitted a timely Response to the Forum via e-mail.”); and Veritas DGC, Inc. v. The Collectors Source and Edward T. Arrich, Jr., FA 94425 (Nat. Arb. Forum May 8, 2000) (although no hard copy was properly filed, the panel considered the respondent’s filing where “Respondent submitted a response by FAX…which was timely served”).


On November 18, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster as Panelist.



Complainant requests that the domain name be transferred from Respondent to Complainant.



A. Complainant

- Complainant has registered its mark, SANDESTIN, with the United States Patent and Trademark Office (“USPTO”).  The service mark has been in use in connection with Complainant’s (or Complainant’s predecessor-in-interest’) operation of the Sandestin Golf and Beach Resort in Miramar Beach, Florida since at least April 1973.


- Complainant registered and is using the domain name,, with respect to its business, such registration having occurred in 1996.


- Sandestin is not a city or a geographical location.  Complainant has provided wedding services at its resort since it was opened to the public.


- Complainant never licensed to Respondent use of the SANDESTIN mark, nor is Respondent affiliated with Complainant in any manner.  Respondent has no rights in said mark and does not operate a business that competes with Complainant.


- Evidence indicates that Respondent resides in Jacksonville, Florida, about 300 miles from Complainant’s principal location.


- Respondent has not put the disputed domain name to use and does not operate a wedding business.


- Respondent’s registration for the disputed domain name contains false contact information in violation of Policy stipulations, as both Respondent’s listed address and phone number are incorrect. 


- Respondent has no rights or legitimate interests in the disputed domain name, and has not satisfied any of the criteria cited in Policy paragraph 4(c) to establish such rights or interests.


- Respondent registered the disputed domain name in bad faith, and its use of the name constitutes cyber-squatting.  Respondent’s sole purpose is to prevent Complainant from using a domain name related to Complainant’s services.


- Complainant sent a cease-and-desist letter to Respondent concerning the disputed domain name in October 2009.  Respondent refused to transfer the name to Complainant.


B. Respondent

- Sandestin is a geographical location in Florida.  Moreover, the mark, SANDESTIN, incorporates the name of the nearby city, Destin.


- Activities listed under Complainant’s service mark registration do not include weddings, and thus use of the disputed domain name should not be a threat to Complainant’s business.


- As there are numerous domain names which contain variants of the word “poker,” a domain name containing the words “sand,” “destin” or “tin” should also be allowable without challenge.



Since April 1973, Complainant has operated the Sandestin Golf and Beach Resort in Miramar Beach, Florida.  Complainant has used the service mark, SANDESTIN, co-extensively with operation of the resort and has registered the mark with the USPTO (Registration No. 2,634,400; issued October 15, 2002).  Among the services offered at Complainant’s resort include those for weddings.


Respondent registered the disputed domain name, <>, on December 30, 2008.  Respondent has made no use of the name.  Respondent listed a false address and telephone number when registering the disputed domain name.



Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”


Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:


(1)   the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the domain name has been registered and is being used in bad faith.


Identical and/or Confusingly Similar

Complainant has submitted to the Panel appropriate evidence (Exhibit C) of Complainant’s USPTO service mark registration for SANDESTIN.  Such evidence suffices to establish Complainant’s rights in that mark for the purposes of Policy ¶ 4(a)(i).  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007); and Spencer Douglass, MGA v. Bail Yes Bonding, D2004-0261 (WIPO June 1, 2004) (“The Complainant has established rights in the [service] marks, which are registered with the United States Patent and Trademark Office and thus are entitled to a presumption of validity.”).


Though the disputed domain name, <>, incorporates the mark, SANDESTIN, in full, the two are not identical.  The generic term “wedding” is added, along with the gTLD, “.com.”  In the view of the Panel, these deviations are insufficient to prevent the name from being confusingly similar to the mark.  Numerous prior UDRP panels have disregarded the addition of generic terms to established trademarks or service marks when considering the confusing similarity between those domain names and marks.  This is especially true when the additional term relates directly to services provided under the mark.  In this case, Complainant has contended without contradiction that it supplies wedding services at its primary location.  Thus, the Panel feels constrained to follow the consensus precedent as noted.  See Accenture Global Services GmbH v. Alok Mishra, D2007-0559 (WIPO June 7, 2007) (finding <> to be confusingly similar to the mark ACCENTURE); American Express Company v., FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <> domain name confusingly similar to the complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); and Isleworth Land Company v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”)


Accordingly, the Panel finds that Complainant has sustained its burden in showing that the disputed domain name is identical or confusingly similar to a service mark in which Complainant has rights.


Rights or Legitimate Interests

Complainant has asserted that it has not licensed to Respondent rights in Complainant’s valid service mark, a mark with which the Panel has found the disputed domain name to be confusingly similar.  As such, Complainant has put forth a prima facie case that Respondent has no rights or legitimate interests in that name, compelling Respondent to come forward with clear evidence in rebuttal.  See AOL LLC v. Jordan Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); and Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).


To determine whether Respondent can satisfy its burden of rebuttal, the Panel shall first determine if his actions fall under the criteria cited in Policy ¶ 4(c), to wit:


(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or


(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or


(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.


Since Complainant has contended, without disagreement from Respondent, that Respondent is making no use of the disputed domain name at all, the Panel is disinclined to find that ¶ 4(c)(i) is applicable.  This determination is reinforced by the rather short Response, which makes no reference to Respondent’s use of or preparation to use the name.  With respect to ¶ 4(c)(ii), Respondent’s name, Admin Contact, bears no resemblance to the disputed domain name, negating any possible application of that paragraph in the Panel’s view.  Finally, once again Respondent’s lack of use of the disputed domain name causes the Panel to conclude that ¶ 4(c)(iii) does not apply in this case, since nonuse cannot be “noncommercial or fair use.”


Reaching for a rationale outside of ¶ 4(c), Respondent argues that it has rights or legitimate interests in the disputed domain name because Sandestin is a geographic location, and thus available for anyone’s use in a domain name notwithstanding Complainant’s valid service mark registration.  Complainant denies explicitly that Sandestin is a recognized geographic location.  Instead of submitting hard evidence to bolster its claim, Respondent implies that the Panel should peruse the internet on its own to discover evidence in Respondent’s favor.  In fairness to Complainant pursuant to ICANN Rule 10(b), the Panel believes it should not conduct a fishing expedition for evidence to support Respondent’s contention, when Respondent had ample opportunity and the responsibility to present such evidence – if it exists – in the Response.  As to geography, the Panel determines only that Complainant and Respondent both agree that Complainant’s primary operations are located near the city of Destin, Florida, which is immaterial to the proposition under consideration.  Thus, the Panel decides that this unsupported contention by Respondent fails to rebut the aforesaid prima facie case.


As a result, the Panel finds that Complainant has demonstrated that Respondent has no rights or legitimate interests in the disputed domain name.


Registration and Use in Bad Faith

In order to be successful in these proceedings, Complainant is required by the Policy to show that the disputed domain name was registered and is being used in bad faith [emphasis added].   In ¶ 4(b), the Policy lists four circumstances that give rise to a finding of bad faith registration and use.  However, the Panel determines that none of these circumstance comes into play in the current case, because:  Complainant has supplied the Panel with no evidence of Respondent’s intent or attempts to sell the disputed domain name (¶ 4(b)(i)); Complainant has failed to contend that Respondent has engaged in a pattern of preventing others from reflecting their trademarks or service marks in a corresponding domain name (¶ 4(b)(ii)); Complainant has not shown that Respondent has attempted to disrupt Complainant’s business in any meaningful way (¶ 4(b)(iii)); and, as Respondent has put the disputed domain name to no use, Complainant has failed to demonstrate that Respondent is profiting monetarily from confusion with Complainant’s service mark in connecting a website to that name (¶ 4(b)(iv)).


However, the circumstances cited in ¶ 4(b) were not intended to be exhaustive of the reasons for which a panel might conclude that a disputed domain name was registered and is being used in bad faith.  See Do The Hustle, LLC, supra.; and Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“Furthermore, it must be recalled that the circumstances identified in paragraph 4(b) are ‘without limitation’ - that is, paragraph 4(b) expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.”).


In this case, Complainant alleges, and the Panel accepts in the absence of rebuttal from Respondent, that Respondent filed deceptive contact information when registering the disputed domain name.  Moreover, Complainant has established to the Panel’s satisfaction (Exhibit E), that Respondent’s location, in Jacksonville, Florida, is close enough – approximately 300 miles – to Complainant’s operations that Respondent likely knew of Complainant’s existence prior to such registration.  Additionally, the Panel concludes that Complainant’s valid USPTO service mark registration put Respondent on notice, at least constructively, of Complainant’s rights in the SANDESTIN mark.  Finally, the Panel finds no evidence in the record plausibly connecting Respondent with either the term “Sandestin” or the wedding business, giving rise to the reasonable inference that Respondent had no legitimate reason to register <>.  For all these reasons, the Panel finds that Respondent acted in bad faith when registering the disputed domain name.


As to whether Respondent’s passive holding of the disputed domain name can constitute bad faith use of the same, many prior Policy panels have held that such a circumstance can result in exactly that finding.  See, for example, Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v., D2005-0615 (WIPO Aug. 9, 2005)(“…it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); DCI S.A. v. Link Commercial Corporation,  D2000-1232 (WIPO Dec. 7, 2000) (“…the Respondent’s passive holding of the domain name in this particular case satisfies the requirement of paragraph 4 (a) (iii) of the Policy that the domain name ‘is being used in bad faith’ by Respondent.”); The Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (“Passive holding of a domain name permits an inference of…use in bad faith.”); and Telstra Corporation Limited, supra (“…it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”)


While all the circumstance present in those prior Policy rulings may not appear in the instant case, the Panel finds sufficient reasons to conclude that the disputed domain name is being used in bad faith.  Respondent has engaged in intentional deception as to its exact whereabouts.  Given its proximity to Complainant, Respondent likely did know, and certainly should have known, of Complainant’s business and service mark.  Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.


For the foregoing reasons, the Panel finds that Complainant has proved that the disputed domain name was registered and is being used in bad faith.



Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.


Accordingly, it is Ordered that the <> domain name be TRANSFERRED from Respondent to Complainant.




Dennis A. Foster, Panelist
Dated: December 7, 2009







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