The Complainant is Association of Apartment Owners of Moana Pacific, United States of America (“United States”), represented by Porter McGuire Kiakona, LLP, United States.
The Respondent is Robert Allman, Moana Pacific Association of Apartment Owners, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2021. On June 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 3, 2021, the Registrar transmitted by email to the Center its verification response disclosing that the current registrant of record for the Domain Name is not the person/entity specified initially in the Complaint as the Respondent. The Center sent an email communication to the Complainant on July 7, 2021 asking them to cure the deficiency specified above. The Complainant filed an amended Complaint on July 9, 2021. 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 July 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2021. The Center received an email communication and a submission on July 15 and July 16, 2021, respectively. The Center notified the commencement of the Panel appointment process on August 18, 2021. The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 24, 2021. 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 From documents attached to the Complaint, it appears that the Complainant is a residential condominium owners association established by the developer of a high-rise apartment complex in Honolulu, Hawaii, United States in 2005. The Complainant has evidently never registered a trademark, and while the Complaint refers to a “trademark”, it actually offers evidence only of a trade name, “MOANA PACIFIC”, registered with the Hawaii Department of Commerce and Consumer Affairs in 2016, which expired on August 28, 2021. At the time of this Decision, the Department’s online database continues to show that this registration is expired. The Registrar reports that the Domain Name was created on January 1, 2008, and is currently registered to the Respondent Mr. Allman, listing his organization as “Moana Pacific Association of Apartment Owners,” at the same address as one of the towers in the Complainant’s apartment complex, with an email address using the Domain Name. The Complaint is unclear about the sequence of registration from the beginning but insists that employees of the Complainant have always registered the Domain Name on behalf of the Complainant, and the Domain Name has been used only for the Complainant’s business. The Panel notes that screenshots of the website associated with the Domain Name stored on the Internet Archive’s Wayback Machine show a website (the “Association website”) with information for residents, requiring password access. There is also some content that could be characterized as advertising for prospective purchasers of condominiums, such as a photo gallery and a summary description of the apartment complex on the home page, along with a contact telephone number. The Complainant explains that the Domain Name was registered by its “former general manager”, the Respondent Mr. Allman, and then by another “employee” and “successor manager”, Eric Lau (who was initially named as the Respondent in this proceeding). According to the Complaint, “Complainant has been locked out of the domain account and unable to access many of its important documents and emails. Complainant has attempted to work with Respondent and Eric Lau but both either forgotten [sic] the information, have been uncooperative, unresponsive, and/or claims they do not have the information to assist.” Mr. Lau said in an email that he provided the login information to “Jerrie” when he left employment with the Complainant, but the Complainant has not found that helpful. At the time of this Decision, the Domain Name does not resolve to the Association’s website and generates security alerts on some browsers. 5. Parties’ Contentions A. Complainant The Complainant asserts that it “can be undisputed that the domain name at issue, www.moanapacific.org, is identical to the trademark in which Complainant has rights as required under this action, because it is the exact same name and was in fact created by Complainant for operation of its building and Association business.” The Complainant cites in support its (formerly) registered trade name “MOANA PACIFIC”, which is based on part of the Association’s name. The Complainant argues that “when a former employee used his own credit card and email address to register an association’s domain name and thereafter leaves while failing to disclose the name of the primary email address or PIN, thus locking the association out of its own domain name, that former employee has no rights or legitimate interests in respect to the domain name.” The Complainant “thus pursues this dispute resolution remedy as its only reasonable remedy.” B. Respondent The Respondent Mr. Allman did not reply to the Complainant’s contentions. Mr. Lau, who is not the current Domain Name registrant and is not listed as a Respondent in the Amended Complaint, submitted a Response complaining about “harassment” and requesting “video conference arbitration”. He states that he offered access to his email earlier but no longer has access to relevant materials. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. Under paragraph 15(a) of the Rules, “[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”. A. Identical or Confusingly Similar Paragraph 4(a)(i) is a standing requirement that entails comparing the Domain Name with a trademark or service mark in which the Complainant has rights. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant here presents a trade name, “MOANA PACIFIC”, which is indeed similar to the Domain Name but appears to be expired. It is not a registered trademark. The WIPO Final Report on the dispute resolution procedure that became the UDRP (The Management of Internet Names and Addresses: Intellectual Property Issues, Final Report of the World Intellectual Property Organization Internet Domain Name Process (April 30, 1999) took the position, in paragraph 167, that “registrations that violate trade names . . . rights would not be considered to fall within the definition of abusive registration for the purposes of the administrative procedure.” Subsequently, however, in its Second Report, The Recognition of Rights and the Use of Names In the Internet Domain Name System, Report of the Second WIPO Internet Domain Name Process (September 3, 2001), paragraph 318(ii), WIPO concluded, “Where a trade name is used in widespread markets, it . . . often . . . satisfies the conditions for protection as an unregistered trademark so as to qualify, in appropriate circumstances, for protection against bad faith, deliberate misuse under the UDRP.” To establish that an unregistered trademark or service has become distinctive and acquired rights to such protection (whether or not it is also serving as a trade name), panels look to factors such as “ (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.” WIPO Overview 3.0, section 1.3. Here, apart from the Domain Name itself used for the Association website, the Complaint includes no evidence of the use of “MOANA PACIFIC” in a trademark sense. The website doubtless had some advertising value, although it appears to have been largely oriented to residents, who required passwords to access most pages. Absent information about sales, advertising, or media attention, it cannot be concluded that the Complainant has made a sufficient case that the Association’s name or trade name have acquired distinctiveness in a relevant market such that they should be recognized in this proceeding as a common law trademark or service mark. The Complaint must be dismissed for failure to establish this first element. However, for the sake of completeness and the benefit of the parties, the Panel proceeds to address the other elements of the Complaint. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in a domain name, by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is 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. The Respondent has not come forward in this proceeding to assert rights or legitimate interests in the Domain Name, and it appears from the record that the Respondent registered the Domain Name on behalf of the Complainant as its employee or contractor and used the Domain Name only to maintain the Complainant’s website and email accounts. Thus, the Panel finds no evident rights or legitimate interests on the part of the Respondent. C. Registered and Used in Bad Faith The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name): “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.” The Complainant cites none of these, and none of them fit the facts of this case. The Complainant must demonstrate bad faith in the registration and use (emphasis added) of the Domain Name. The Complainant acknowledges that the Respondent Mr. Allman registered the Domain Name on behalf of the Complainant and then passed on the credentials to his successor Mr. Lau, also acting on behalf of the Complainant. Since Mr. Allman managed the Domain Name and the Association website for the Complainant and did not keep the credentials for himself or attempt to hold them for ransom, it is hard to see how he can be charged with acting in bad faith. The Complainant may well wish it had insisted on keeping the login credentials and updating the registration details, but the facts here do not support a conclusion of bad faith, especially going back to the time of the original registration. The Policy was not designed as a remedy for poor management. The Panel would have to conclude that the Complaint fails on the third element, bad faith, even if it had not already failed to sustain the first element. 7. Decision For the foregoing reasons, the Complaint is denied. W. Scott Blackmer
Sole Panelist
Date: September 7, 2021
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