Complainant is Outrigger Hotels Hawaii of Hawaii, United States of America.
Respondent is Outrigger Vacation Club of Texas, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , are registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2010. On August 12, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On August 12, 2010, Tucows Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed a revised Complaint on August 18, 2010.
The Center verified that the Complaint revised 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 10, 2010.
The Center appointed M. Scott Donahey as the sole panelist in this matter on September 14, 2010. 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
Complainant is the holder of numerous registrations with the United States Patent and Trademark Office (“USPTO”) for the following marks: OUTRIGGER (for hotel management, travel and tour information, and travel agency services), the earliest of which issued on August 13, 1996 and which showed a first use in commerce of December 1963; OUTRIGGER HOTELS HAWAII (for hotel services), the earliest of which issued on November 14, 1989 and which showed a first use in commerce of December 1963; and, OUTRIGGER RESORT CLUB (for vacation real estate time share services), the earliest of which issued on August 10, 2004 and which showed a first use in commerce of December 15, 2002 (Complaint, Annexes 3 and 4). Based in Hawaii, Complainant has continuously operated in the fields of hospitality, resorts, travel, and resort services for more than sixty years.
Complainant is also the owner of several domain names, including , , , , and , the earliest of which was registered on October 26, 1994. All of the domain names listed above resolve to web sites at which Complainant’s services are offered (Complaint, Annex 5).
Respondent registered the disputed domain names on May 25, 2009. Respondent uses the domain names to resolve to web sites at which Respondent offers services directly competitive with those offered by Complainant (Complaint, Annex 6). On August 14, 2009, Complainant’s counsel wrote Respondent a cease and desist letter demanding that Respondent cease and desist from using the domain names to resolve to competitive web sites and that Respondent transfer the domain names to Complainant. By facsimile letter dated September 3, 2009, Respondent’s former counsel denied that any confusion existed and declined to either stop the use of the offending domain names or to transfer them to Complainant (Complaint, Annex 7).
Respondent’s web sites and Facebook page makes repeated references to resorts operated by Complainant, with no disclaimer that Respondent is unconnected with or is not authorized by Complainant to use Complainant’s service marks and service names, and which include links to Complainant’s web sites (Complaint, Annexes 9, 11, 13, 14, and 16).
Respondent’s conduct has been the subject of numerous consumer complaints, complaints which have confused Complainant with Respondent (Complaint, Annex 17). Such complaints resulted in at least one lawsuit by the Attorney General of the Commonwealth of Massachusetts, freezing Respondent’s assets (Complaint, Annex 18). 5. Parties’ Contentions A. Complainant
Complainant alleges that the disputed domain names are confusingly similar to trademarks in which Complainant has rights that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain names all consist of Complainant’s OUTRIGGER mark and the addition of other words or phrases descriptive of the services offered by Complainant as well as elements of Complainant’s OUTRIGGER RESORT CLUB marks. The addition in a domain name of words or phrases descriptive of the goods or services with which the mark is used to the mark itself may constitute confusing similarity. Forte (UK) Limited v. Eugenio Ceschel,WIPO Case No. D2000-0283 ( B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case Complainant has, in the Panel’s view, demonstrated sufficient evidence to make such prima facie showing that Respondent has no rights or legitimate interests in respect of the domain names and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Respondent has been using the disputed domain names to resolve to web sites which advertise services directly competitive with those offered by Complainant. Moreover Respondent’s web sites contain numerous and repeated references to Complainant, its properties, and its services, including links to Complainant’s web sites. Moreover, Respondent’s business practices have been the subject of a lawsuit filed by a government agency for unfair business practices, and consumers complaining about such conduct have confused Respondent with Complainant. Accordingly, the Panel finds that Respondent has registered and is using the disputed domain names in bad faith under paragraph 4(b)(iv) of the Policy. 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 names, , and be transferred to Complainant.
M. Scott Donahey
Sole Panelist
Dated: September 23, 2010
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