WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Hawaii Superferry, Inc. v. Domain Park Limited Case No. D2008-1301 1. The Parties
The Complainant is Hawaii Superferry, Inc. of the United States of America, represented by Debevoise & Plimpton LLP of the United States of America.
The Respondent is Domain Park Limited of Samoa. 2. The Domain Name and Registrar
The disputed domain name is registered with R Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2008. On August 27, 2008, the Center transmitted by email to R Corp. a request for registrar verification in connection with the domain name at issue. On August 27, 2008, R Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 30, 2008.
The Center appointed Ross Wilson as the sole panelist in this matter on October 14, 2008. 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, Hawaii Superferry, Inc., was formed in 2002 to construct and operate a high speed ferry. It commenced construction of its first vessel in June 2004 and started taking reservations on June 30, 2007. The Complainant started its passenger and vehicle service between Honolulu on the island of O'ahu and Kahului on the island of Maui on August 26, 2007.
From January to June 2007, leading up to the commencement of the ferry service, the Complainant spent approximately $740,000 marketing the service through print advertising, television and radio spots, press releases and promotions. Also, in the first half of 2007, the HAWAII SUPERFERRY service was featured in television, newspaper and magazine articles nationwide.
The Complainant filed a trademark application on January 19, 2007.
The Complainant wrote to the Respondent on March 20, 2008 demanding the immediate transfer of the domain name to Hawaii Superferry, Inc. No reply was received.
The Respondent registered the disputed domain name on July 7, 2007. 5. Parties' Contentions A. Complainant
The Complainant contends that:
a. it has valid rights in the HAWAII SUPERFERRY trademark and that the domain name registered by the Respondent is confusingly similar to the Complainant's HAWAII SUPERFERRY trademark;
b. there is no relationship or affiliation between the Complainant and the Respondent giving rise to any license, permission or other right by which the Respondent could own or use any domain name incorporating Complainant's HAWAII SUPERFERRY mark;
c. the Respondent is using the domain name to direct Internet users to other websites, including websites of sellers of services that compete with those sold by the Complainant on its site;
d. the Respondent Domain Park Limited is a notorious cybersquatter that is taking advantage of the Complainant's mark and preventing the Complainant from reflecting the mark in a corresponding domain name;
e. the fact that the Respondent ignored the Complainant's demand letter supports a finding of bad faith;
f. the Respondent registered the domain name in order to confuse Internet users who were expecting to find a website belonging to or associated with the Complainant or its HAWAII SUPERFERRY service and diverted these users to the Respondent's own website;
g. the Respondent has registered and used the domain name in bad faith by offering links to websites belonging to third parties, including websites that sell services that compete with the Complainant;
h. there is no purpose to the Respondent linking to other commercial sites that sell travel and vacation services other than to obtain a financial benefit in the form of revenues from the third parties whose websites are accessed via the Respondent's website; and
i. 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 mark. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant demonstrated its rights in HAWAII SUPERFERRY through its long association with the name starting with its registration of the domain name on October 2, 2001, its marketing campaign and the unsolicited news coverage of its proposed operation in June 2, 2003, its application for a trademark on January 19, 2007 and its commencement of online reservations for the HAWAII SUPERFERRY service on June 30, 2007.
Based on the evidence provided, the Complainant has proven to the Panel's satisfaction that it has rights in the trademark HAWAII SUPERFERRY.
The disputed domain name was constructed by inserting the generic word “island” between the two words of the Complainant's trademark. Many previous panels have held that the use of a generic word in association with a trademark does not avoid a finding of the disputed domain name being confusingly similar to the trademark. In Gerber Products Company v. LaPorte Holdings,WIPO Case No. D2005-1277 it was held that the addition of generic or descriptive words is not sufficient to distinguish a mark from its subsequent adopter. Similarly, in Six Continents Hotels, Inc. v. credoNIC.com / DOMAIN FOR SALE,WIPO Case No. D2004-0987, the panel in drawing on other decisions commented that “the mere addition of generic terms or common terms to a mark ‘does not change the overall impression of the designations as being' domain names connected to Complainant” and that when “a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar.”
Similarly, in this case, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to and legitimate interests in the disputed domain name. In this case, the Respondent has chosen not to file any submission or evidence to demonstrate its rights or legitimate interests in the words “Hawaii Island Superferry”. In this situation, paragraph 14(b) of the Rules allows the Panel, in the absence of exceptional circumstances, to draw such inferences from the absence of a response from the respondent as it considers appropriate.
The Complainant has stated that there is no relationship or affiliation between the Complainant and the Respondent giving rise to any license, permission or other right by which the Respondent could own or use any domain name incorporating the mark HAWAII SUPERFERRY. Also, that the only reason for the Respondent's use of the domain name is to trade unlawfully off the value and goodwill of Complainant's HAWAII SUPERFERRY trademark as evidenced by the way the Respondent is using the domain name to direct Internet users to other websites, including websites of sellers of services that compete with those sold by the Complainant. In support of its case, the Complainant cites Baudville, Inc. v. Henry Chan,WIPO Case No. D2004-0059 where the panel found that re-directing Internet users through sponsored links to the complainant's competitors is not a legitimate use or interest in the disputed domain name.
Accepting that the Complainant has not licensed or otherwise permitted or authorised the Respondent to use its trademark or to apply for a domain name incorporating any such mark, the evidence before the Panel is that the Respondent has used the domain name to derive a commercial benefit.
The Respondent has chosen not to rebut the evidence provided and, consequently, the Panel finds no indication of any situation which would suggest the Respondent has rights or legitimate interests in the domain name. There is no indication that the Respondent had been commonly known by the domain name, had made a legitimate noncommercial or fair use of the domain name or had made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
As there is no evidence provided that refutes the Complainant's submissions, the Panel finds that the Complainant has proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of determining whether there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. One circumstance illustrated in part (iv) of that paragraph relevant to this case is whether by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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 Complainant argues that the Respondent's site acts purely as a click-through site because it operates as a portal with links to other websites including commercial travel and vacation sites. The links include, among others, “Hawaii island hopping”, “2 Hawaii Island Vacation”, “Affordable Hawaii Tours” and “Hawaii Activities.” Each of these links takes the user to a commercial third-party travel website, including sites that allow the user to search for and purchase tickets from Honolulu, O'ahu to Kahului, Maui.
The fact that the website is primarily related to travel and vacation indicates that the Respondent knowingly used the Complainant's trademark and is further evidence that the Respondent is unfairly and opportunistically benefiting from the goodwill associated with the Complainant's mark.
Finally, the Complainant provided a list of the numerous domain name dispute cases where the Respondent has been involved in using multiple domain names directed against different complainants. A “pattern of conduct” is clearly evident and again leads to the conclusion that the Respondent is acting in bad faith.
Based on the above, the Panel finds that the disputed domain name was registered and is being used in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Ross Wilson
Sole Panelist
Dated: October 28, 2008
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