Complainant is Outrigger Hotels Hawaii of Honolulu, Hawaii, United States of America, represented by Fredrikson & Byron, P.A., United States of America.
Respondent is William Morgan / WAM Computers, Travel Services, Inc. of Litchfield, Illinois, United States of America, and of Vancouver, Washington, United States of America, represented by Senniger Powers, LLP, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Dotster, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2010. On December 10, 2010, the Center transmitted by e-mail to Dotster, Inc. a request for registrar verification in connection with the Domain Name. On December 13, 2010, Dotster, Inc. transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information set forth in the Complaint. The Center sent an e-mail communication to Complainant on December 14, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an Amendment to the Complaint on December 16, 2010.
The Center verified that the Complaint together with the Amendment to the 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 December 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response January 9, 2011. The Response was filed with the Center January 9, 2011.
The Center appointed Robert A. Badgley, Christopher S. Gibson and Mark Partridge as panelists in this matter on February 8, 2011. The Panel finds that it was properly constituted. Each member of 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
According to the Complaint, Complainant is one of the largest privately held hospitality companies in the Pacific Rim and Asian regions. Based in Hawaii, Complainant and its related companies allegedly have operated in the hospitality, resort, lodging, and travel-related services industries for more than fifty years. Complainant is the owner of the OUTRIGGER trademark and service mark, which Complainant has used continuously in commerce and trade in connection with “hotel management” services since 1963 or earlier. Complainant has also used its OUTRIGGER mark in commerce continuously in connection with “travel and tour information services” and “travel agency services” since 1976 or earlier. Complainant’s OUTRIGGER mark is the subject of federal trademark registrations in the United States: U.S. Reg. Nos. 1992873 and 3647485.
Further, Complainant is the owner of the OUTRIGGER HOTELS HAWAII mark which Complainant has used continuously in commerce in connection with “hotel services” since 1963 or earlier. Complainant also owns the OUTRIGGER HOTELS HAWAII & Catamaran design logo, which Complainant has used continuously in commerce in connection with “hotel services” since 1987. Complainant’s OUTRIGGER HOTELS HAWAII and OUTRIGGER HOTELS HAWAII & Catamaran design marks are the subject of federal trademark registrations in the United States: U.S. Reg. Nos. 1566472 and 1562706.
Further, Complainant is the owner of the OUTRIGGER RESORT CLUB and OUTRIGGER RESORT CLUB & Catamaran design marks, which Complainant has used continuously in commerce and trade in connection with “vacation real estate time-sharing services” since 2002 or earlier. These marks are the subject of federal trademark registrations in the United States: U.S. Reg. Nos. 2872565 and 2872626.
In addition, Complainant provides some of its services via online websites accessible at various of Complainant’s domain names: (registered in 1994), (1998), (2002), (2006), and (2008).
The Domain Name was registered on February 27, 2008. Complainant alleges that, at that time, Respondent knew or should have known of Complainant’s various OUTRIGGER-formative marks. Respondent does not specifically deny this allegation, but does aver that, before it registered the Domain Name, it had been doing business as Outrigger Travel Services. Respondent attaches to the Response a series of vendor invoices between November 2007 and May 2008 addressed to Outrigger Travel Services (at the address of William Morgan).
Respondent takes pains to point out that, although it is identified in the Complaint as William Morgan/WAM Computers, the true, beneficial owner of the Domain Name registration, and therefore the true Respondent, is Travel Services, Inc. WAM Computers provides web hosting services for Travel Services, Inc., and William Morgan is the president of WAM Computers. WAM Computers simply acts as an agent for Travel Services, Inc. in registering and maintaining domain names for Travel Services, Inc. These assertions are purportedly backed up by un-notarized declarations annexed to the Response. These agency matters are not pivotal to the views and decision of any Panelist in this proceeding, and therefore Respondent’s assertions of agency and beneficial ownership will be taken as true for purposes of this proceeding.
According to the Complaint, Respondent identifies itself as “Outrigger Travel Club” and “Outrigger Vacation Club” on various websites. Respondent specializes in vacation club services, through which it provides its subscribing members with discounted travel and vacation packages, including transportation, lodging, tours, amusements, special event tickets, and restaurants. Respondent is owned by a Delaware company called Travel Services, Inc. Respondent does not dispute the foregoing.
Respondent does not state how long it has been using the name “Outrigger” on the website accessible by the Domain Name, but on one of Respondent’s former websites, Respondent declared that it has been “making memories since 1985.” Respondent alleges that, at the time it received a letter dated August 14, 2009 from Complainant’s counsel, it had been offering travel services “well before that date.” Respondent also alleges that, by that time, it had been “commonly known” as “Outrigger Travel Club.” Respondent supports the “commonly known” allegation with a handful of vendor invoices which no one on the Panel finds to be conclusive evidence of Respondent being “commonly known” as “Outrigger Travel Club.” In contrast to the website indicating “Memories since year 1985,” Respondent’s President in a declaration, submitted as Annex F to the Response, states that the “company began preparations for operating the Outrigger Travel Club, beginning in 2007.” The first member of Respondent’s “Outrigger Travel Club” joined the club on November 21, 2008, according to evidence in the record.
Respondent explains its choice of the Domain Name as follows. Respondent registered the Domain Name because it corresponds to the name under which Respondent does business, as Outrigger Travel Club. Respondent selected Outrigger Travel Club as the name under which to do business because “the connotation and flavor of Outrigger Travel Club — that being of an exotic and fun nature — is consistent with other names that the Respondent has successfully used for its travel club businesses.” Respondent states that it has operated other travel clubs under the names: Funseekers Vacations, Castaways Vacations, Beachcombers Vacations, Sealand Travel Club, and Tradewinds Vacation Club.
On August 14, 2009, Complainant’s counsel sent Respondent a letter asserting that Respondent’s use of the Domain Name constituted infringement of Complainant’s OUTRIGGER trademark and other marks. On September 3, 2009 Respondent’s counsel sent a letter explaining the actions it would take to ensure that there would be no likelihood of confusion and therefore no infringement. Respondent stated it would change the way it refers to its travel services, shifting from “Outrigger Vacation Club” to “Travel Services’ Outrigger Vacation Club,” while also including a disclaimer to indicate it is not associated with Complainant. According to Respondent, it received no further communication from or on behalf of Complainant, and hence Respondent assumed that Complainant was satisfied that Respondent’s proposed actions would alleviate Complainant’s concerns.
Complainant points out that, in the September 3, 2009 letter, Respondent’s counsel made no assertion that Respondent had senior rights to the OUTRIGGER name or even that Respondent had been using the “Outrigger Vacation Club” name since 1985. Complainant also alleges that Respondent made no changes to its website, despite its promises to do so.
Respondent or its affiliates registered nine other OUTRIGGER-formative domain names, three of which were ordered transferred to Complainant in a recent case under the Policy (in which Respondent did not respond to the Complaint), and six of which were voluntarily transferred to Complainant after that decision.
Respondent’s websites have made explicit and repeated references to Complainant’s hotels and resorts, such as text formerly contained on the website accessible via one of Respondent’s former domain names (), which refers to Complainant’s Outrigger Royal Sea Cliff resort in Hawaii. The website stated (with emphasis added):
Enjoy Hawaii with Outrigger Vacation
Club and relax at the beautiful Outrigger Royal Sea Cliff Resort on your next vacation.
Welcome To The Outrigger Royal Sea Cliff Resort — Hawaii
Outrigger Vacation Club invites you to spend time at this beautiful resort location on the big island on your next Hawaiian vacation. Located high atop a dramatic lava rock bluff, guests of the Outrigger Royal Sea Cliff enjoy uninterrupted ocean views from each rooms own private balcony. Beautifully sculpted landscape filled with tropical flowers and streams, offer a tropical island paradise on your vacation with Outrigger Vacation Club. Enjoy swimming pools, stunning views and the convenience of location at the Outrigger Royal Sea Cliff Resort with Outrigger Vacation Club. Just a mile from the town of Kailua Kona, guests out to explore the island don’t have far to go to access charters, snorkeling tours, wonderful shopping and fine dining. Get to know the Outrigger Royal Sea Cliff Resort with Outrigger Vacation Club as your partner in travel. Great service is easy to find at the Outrigger Royal Sea Cliff Resort. Including an activities desk, Barbecue grills, complimentary parking and wireless internet, sauna, pool and spa as well as a tennis court, guests have access to many ways to relax and enjoy the big island with Outrigger Vacation Club. Each spacious room includes a kitchen for your convenience as well as a balcony, air conditioning and ceiling fans just to name a few of the fine points. Make the Outrigger Royal Sea Cliff Resort your home base for a vacation on the big island of Hawaii with Outrigger Vacation Club.
Complainant notes that nowhere does Respondent or its affiliate distinguish itself from Complainant. Instead, every sentence implies that a direct relationship exists between Outrigger Vacation Club and Complainant’s resort. According to Complainant, taken as a whole, the foregoing web content allows the inference that Respondent’s affiliate was deliberately attempting to mislead and confuse potential customers into the false belief that its activities are associated with or endorsed by Complainant. Further, Respondent’s web page contained a direct hyperlink to Complainant’s web page devoted to the Outrigger Royal Sea Cliff Resort, which, according to Complainant, also “strongly indicates both a deliberate attempt to confuse potential customers into holding a mistaken impression that Respondent and Complainant are affiliated and evidence that Respondent is fully aware of Complainant’s hotels and resorts, the nature and scope of Complainant’s operations, and Complainant’s OUTRIGGER mark.” Complainant asserts that Respondent’s affiliate websites also follow the same pattern, with the website at “” making repeated references to Complainant’s Outrigger Royal Kahana Resort and its Outrigger Fairway Villas resort.
It is also alleged and not disputed that Respondent and its affiliates have Facebook pages which refer to Complainant’s resorts. Again, Complainant notes, Respondent and its affiliates make no attempt to distinguish themselves from Complainant; rather, “they take pains to connect themselves with Complainant for the purpose of misleading customers to the mistaken impression that the Outrigger Vacation Club is associated with or endorsed by Complainant.”
Finally, Complainant alleges that Respondent’s business is a sham operation, which has been the subject of various consumer complaints and a complaint by the Massachusetts Attorney General on July 6, 2010 against Respondent’s affiliate, Outrigger Travel Club of Tulsa, Oklahoma. According to the Massachusetts complaint, Respondent and/or its affiliates have violated the Massachusetts Consumer Protection Act by “using highly deceptive marketing promotions to lure consumers to sales presentations” and “inducing those consumers to sign membership contracts for a vacation club (Oklahoma-based Outrigger Vacation Club) by, without limitation: (i) making false and misleading statements about the benefits of the vacation club membership; (ii) using unfair, coercive and high-pressure sales tactics; and (iii) engaging in myriad violations of regulations issued by the Attorney General, including, without limitation, false advertising, general misrepresentations and unconscionable conduct.” Complainant’s Exhibit 20 includes a press release from the office of the Massachusetts Attorney General, which states that a Massachusetts court has issued a temporary restraining order (i.e., a form of injunction), which, among other things, freezes the assets of the Outrigger Vacation Club and prohibits it from continuing to market or sell travel services and vacation club memberships in Massachusetts. Further, the complaint submitted by the Massachusetts Attorney General states that Outrigger Vacation Club is not registered as a domestic or foreign corporate entity with the Corporations Divisions of the Oklahoma, Delaware or Massachusetts Secretaries of State, but according to the Better Business Bureau is a sole proprietorship of which C. Brighton is the “Manager.” Moreover, rather than maintaining a real commercial presence in Oklahoma where Outrigger Vacation Club claimed it is located, the Attorney General’s complaint alleges that the only business located at the address supplied by Outrigger Vacation Club is a UPS Store, which maintains mailboxes available for use by third-parties.
Respondent does not deny or even address the allegations that it is a sham operation or discuss the Massachusetts proceeding. Nor does Respondent specifically deny or address Complainant’s assertions that Respondent or its affiliates use domain names that incorporate or modify Complainant’s OUTRIGGER or OUTRIGGER RESORT CLUB marks and that link to websites making repeated references to Complainant and its resort properties in a manner that deliberately attempts to mislead potential customers into the false belief that Respondent’s activities are associated with or endorsed by Complainant. 5. Parties’ Contentions
The factual contentions of the parties are set forth above in the Factual Background section. The parties’ main arguments will be taken up in the context of the three elements of the Policy, discussed below. 6. Discussion and Findings
The burden for Complainant under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered is being used in bad faith.
The Panel is in unanimous agreement that Complainant has satisfied the first element of a successful claim under the Policy. A majority of Panelists also finds that the Complaint succeeds on the second and third elements as well and to the extent relevant for the purpose of paragraph 18(a) of the UDRP Rules, that it is appropriate to proceed to the rendering of a decision under the Policy, which would naturally not limit any court consideration under any applicable national law. The Presiding Panelist respectfully dissents from the majority on the third element, and does not address the second element because it is not necessary to do so. A. Identical or Confusingly Similar
There is no question that Complainant has long-established rights, through registration and use, in the OUTRIGGER mark. Respondent’s Domain Name totally incorporates that mark and adds the descriptive words “travel club.” In view of Complainant’s business, the term “travel club” does not reduce the confusing similarity between the mark and the Domain Name. If anything, the term “travel club” deepens the confusing similarity.
Further, as noted above, Complainant also owns the OUTRIGGER RESORT CLUB trademark, which Complainant has used since at least 2002. The Domain Name , registered in February 2008, uses the words “outrigger” and “club” just as in Complainant’s mark, but substitutes the term “resort” for “travel.” This change does not diminish the confusing similarity between the Domain Name and Complainant’s OUTRIGGER RESORT CLUB mark.
Accordingly, the Panel unanimously concludes that Policy paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests
A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
A majority of the Panel finds that Complainant has made a prima facie showing that Respondent does not have rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy, and that Respondent has been unable to rebut this showing. This is based on the following circumstances:
(1) Complainant has no relationship with Respondent and has granted no license to Respondent upon which Respondent could claim a right or a legitimate interest in using the OUTRIGGER or OUTRIGGER RESORT CLUB marks as a basis for registering the Domain Name.
(2) Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Instead, it is undisputed that Respondent’s use of the Domain Name is commercial in nature, because Respondent is using it to link to a website from which Respondent sells subscription memberships for discounted travel and vacation packages.
(3) While Respondent claims it is commonly known by the Domain Name, at least two members of the Panel disagree with this assertion. Respondent has acknowledged in this case and in correspondence through its legal representative to Complainant that it is known as Travel Services, Inc. Beyond this, the Panel observes that Respondent and its affiliates use multiple (and perhaps shifting) names and domain names for their putative travel clubs, such as Outrigger Travel Club, Outrigger Vacation Club and Outrigger Vacation Club Pro, as well as Funseekers Vacations, Castaways Vacations, Beachcombers Vacations, Sealand Travel Club, and Tradewinds Vacation Club. On this basis alone, there is serious question about whether Respondent is commonly known by the Domain Name, as opposed to being known as Travel Services, Inc. or known as the multiple other names that it (or its affiliates) use. There is no dispute that Respondent operates some form of business, whether legitimate or not, specializing in vacation club services. However, while Respondent’s website mentioned that it had been providing services since 1985, this point is contradicted by the declaration of Respondent’s president, who stated that the company began preparations for operating the “Outrigger Travel Club” in 2007 and the statement in the Response that the first member of Respondent’s Outrigger Travel Club joined in November 2008. The Domain Name itself was registered in February 2008. The record thus demonstrates a relatively short period during which Respondent started using the Outrigger Travel Club name in the Domain Name prior to being contacted by Complainant’s legal representative in August 2009, after Complainant discovered Respondent’s use. This short period does not justify a finding that Respondent is commonly known by the Domain Name, particularly in view of the multiple other names and domain names that Respondent has been using during the same period and in view of the nature of Respondent’s use, as described below (i.e., making repeated and confusing references to Complainant and Complainant’s resort properties).
(4) Respondent argues that it has used “Outrigger Travel Club” in connection with a bona fide offering of services since well before Respondent received any notice of a dispute. However, two members of the Panel find that the evidence does not support this view. As noted above, Respondent has not denied or addressed the allegations that it is a sham operation or addressed the proceedings in Massachusetts brought by the state attorney general, which were raised by Complainant. This is the case even though Respondent’s president, in her declaration (Annex F of the Response), acknowledges ownership “of another of our company’s clubs called Outrigger Vacation Club,” which is the entity that is formally the subject of the Massachusetts’ investigation. Further, as noted above, Respondent has not denied or addressed Complainant’s allegations concerning (i) Respondent or its affiliates operating multiple websites using domain names (i.e., a total of ten domain names) that incorporate Complainant’s OUTRIGGER and OUTRIGGER RESORT CLUB marks, and (ii) Respondent or its affiliates making repeated references on their websites to Complainant and its resort properties in a manner that deliberately attempts to mislead potential customers into the false belief that Respondent’s activities are associated with Complainant. Why would Respondent engage in these tactics? Respondent has not explained why. Respondent instead has stated that after receiving notice from Complainant’s legal representative, Respondent made certain changes to its Acknowledgement and Bylaws documents and began referring to itself as “Outrigger Travel Club by Travel Services,” but these points are disputed by Complainant. In the view of the majority of this Panel, Respondent has failed to adequately address Complainant’s allegations, which go to the question of bona fide use of the Domain Name. Accordingly, Respondent has failed to rebut Complainant’s prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. Indeed, as discussed below, a majority of the Panel is of the view that the Domain Name has been used to promote and facilitate an abusive scheme, potentially in breach of state law and leading to confusion with Complainant, which may be considered a form of bad faith registration and use of the Domain Name.
Accordingly, a majority of the Panel concludes that Policy paragraph 4(a)(ii) has been satisfied. C. Registered and Used in Bad Faith
A majority of the Panel finds that Respondent registered and has used the Domain Name in bad faith, based on the following findings: Bad faith registration:
Complainant alleges that, at the time of registration, Respondent knew or should have known of Complainant’s various OUTRIGGER-formative marks. Respondent and its affiliates “knew all along what they were doing.” As discussed above, at the time the Domain Name was registered in February 2008, Complainant had been operating under the OUTRIGGER mark in the field of hotel services for more than 45 years (since 1963), and in the field of travel and tour information services for more than 30 years (since 1976). In addition, Complainant had been using OUTRIGGER RESORT CLUB mark for approximately six years (since 2002).
In the face of Complainant’s allegations and this evidence, Respondent does not specifically deny that it was aware of Complainant. Instead, Respondent maintains that it registered the Domain Name because “it corresponds to the name under which the Respondent does business, as Outrigger Travel Club.” This explanation does not satisfy a majority of the Panel. As discussed above, the Panel is not convinced that Respondent is commonly known by the Domain Name. Moreover, Complainant has alleged and provided evidence to show that Respondent and its affiliates registered the Domain Name and at least nine other similar domain names incorporating Complainant’s trademarks. Complainant contends that, in accordance with paragraph 4(b)(ii) of the Policy, this was done “in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [respondent has] engaged in a pattern of such conduct.” While this is highly suggestive that Respondent and its affiliates targeted Complainant and its trademarks when they registered the Domain Name and the other domain names incorporating Complainant’s marks, Respondent does not try to explain or even refer to these circumstances in its Response. Respondent merely makes the bald statement that it did not register the Domain Name in order to prevent Complainant from reflecting Complainant’s mark in a corresponding domain name. Respondent also flatly states that it “has not engaged in a pattern of such conduct,” even though the evidence shows the opposite to be true.
In the face of evidence which is highly suggestive that Respondent was aware of Complainant and its trademarks, Respondent has failed to provide adequate responses. A majority of the Panel finds that Respondent and its affiliates were running a sophisticated operation and that it is more likely than not that Respondent intentionally and in bad faith targeted Complainant and its trademarks at the time the Domain Name was registered in February 2008. Bad faith use:
Complainant alleges a number of circumstances, in addition to those discussed above, in support of bad faith use of the Domain Name. Complainant asserts that Respondent and its affiliates acted in a pattern of bad faith under paragraph 4(b)(iv) of the Policy, making an intentional effort to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the websites. The bad faith of Respondent and its affiliates is demonstrated by the pattern of explicit and repeated references to Complainant’s hotels and resorts in a manner likely to confuse consumers into the mistaken belief that a relationship exists between Complainant and Respondent. Once again, Respondent does not address these allegations and the supporting evidence in its Response, instead choosing to defend against these points merely by maintaining that it chose the Domain Name because it matched a name under which Respondent was doing business.
Complainant also alleges, in accordance with paragraph 4(b)(iii) of the Policy, that Respondent “registered the domain name primarily for the purpose of disrupting the business of a competitor.” In particular, Complainant contends that Respondent used the Domain Name and the other nine domain names incorporating Complainant’s marks in a number of ways – including through its pattern of repetitive references to Complainant’s hotels and resorts and through use of unfair trade practices as evidenced by the Massachusetts proceedings – all of which have disrupted and tarnished Complainant’s business in a field in which Complainant and Respondent compete. Respondent has replied by contending that it “is not a competitor of the Complainant.” The evidence, however, indicates otherwise. Since 1976, Complainant’s OUTRIGGER trademark has been used in connection with “travel and tour information services” and “travel agency services.” There is ample potential for Respondent, operating under a name that is confusingly similar to Complainant’s marks, to attract consumers and steer them in favor of vacation alternatives that would be competitive to the options offered by Complainant. A majority of the Panel finds that there was a deliberate attempt by Respondent to trade unfairly off of Complainant’s good will, and that Respondent registered the Domain Name as one of a group of ten domain names registered primarily to disrupt Complainant’s business and unfairly take at least some potential customers from Complainant. The use of the Domain Name in connection with this scheme is an example of bad faith use.
Finally, the list of circumstances in the Policy, paragraph 4(b), is not intended to be exhaustive. A majority of the Panel is of the view that the Domain Name has been used to promote and facilitate an abusive scheme, potentially in breach of state law and leading to confusion with Complainant, which may be considered a form of bad faith use of the Domain Name whether or not this abusive scheme is expressly identified as an example under the UDRP Policy.
Accordingly, a majority of the Panel concludes that Policy paragraph 4(a)(iii) has been satisfied. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, a majority of the Panel orders that the Domain Name be transferred to Complainant.
Robert A. Badgley
Presiding Panelist (Dissenting)
Christopher S. Gibson
Panelist
Mark Partridge
Panelist
Dated: March 7, 2011 DISSENTING OPINION
I respectfully dissent from the majority in this close case. I am troubled by several allegations made against Respondent and its business, and am both troubled and surprised that Respondent offered no response to much of this. All the same, I believe this case is ill suited to resolution under the Policy, which should be confined to clear cases of cybersquatting. This case is, in my opinion, more apt for resolution in a court of law, where a better evidentiary record may be developed through discovery and cross-examination. At bottom, I cannot find anything palpable in the record indicating that Respondent more likely than not had Complainant or its OUTRIGGER mark in mind when registering the Domain Name in February 2008. There are allegations to that effect, and no categorical denial by Respondent. By implication, though, Respondent denies it by claiming to have stumbled upon the “Outrigger” name for its business because it evokes images similar to those used in its prior business iterations (sham or otherwise). There is just enough plausibility in that explanation for me to decline to reject it as false on its face. Again, a lawsuit with the benefit of discovery and so forth would test this explanation more capably than I can on this record.
I am also troubled by Respondent’s generous use, on at least one of its websites, of Complainant’s Hawaii resort. However, on this record I cannot conclude that these references prove Respondent’s knowledge of Complainant’s mark at the time of Domain Name registration. That is simply one inference too many for me.
Because I would not accept Complainant’s “bad faith” allegations under the Policy, I do not need to address the “rights or legitimate interests” issue.
Robert A. Badgley
Presiding Panelist (Dissenting)
Dated: March 7, 2011
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