Akoha Inc. v. akoha.org c/o Domain Administrator
Claim Number: FA0708001068208
Complainant is Akoha Inc.
(“Complainant”), 3981 boul. St-Laurent,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <akoha.com>, registered with Nameview, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On September 11, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 1, 2007 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <akoha.com> domain name is identical to Complainant’s AKOHA mark.
2. Respondent does not have any rights or legitimate interests in the <akoha.com> domain name.
3. Respondent registered and used the <akoha.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant filed a trademark application with the Canadian
Intellectual Property Office on
Respondent, akoha.org, registered the <akoha.com> domain name on
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant has filed a Canadian trademark application for the AKOHA mark, but does not currently hold a registered trademark. Nevertheless, Complainant can establish common law rights in the AKOHA mark by demonstrating that the mark has acquired sufficient secondary meaning through extensive commercial use. See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
Complainant has alleged to have used the AKOHA mark since it
began its operations on
Policy ¶ 4(a)(i) requires that a complainant prove that the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights. (Emphasis added.) Because Complainant has failed to establish any rights in the AKOHA mark, the Panel finds that Policy ¶ 4(a)(i) has not been satisfied.
Although Complainant did not expressly allege that Respondent lacks rights or legitimate interests in the disputed domain name, it did make this argument through implication. Once a complainant makes a prima facie case in support of its allegations, the burden then shifts to the respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). However, the Panel finds that the assertions in the Complaint do not establish a prima facie case. Complainant suggested that Respondent is typosquatting by misspelling the word “Aloha,” and is using this common typo to attract Internet users to its website which advertises Hawaiian vacations and airfare. However, Complainant is not claiming to hold any rights in the “Aloha” mark, and failed to explain why Respondent does not have rights or legitimate interests in the AKOHA mark used as is. Therefore, the Panel finds that Complainant has failed to establish a prima facie case in support of its allegations pursuant to Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name).
Therefore, the Panel finds that Policy ¶ 4(a)(ii) has not been satisfied.
Complainant alleged that Respondent has been known to
register domain names in bad faith and without rights or legitimate interests
in the names. As evidence, Complainant
cites four prior UDRP cases ordering transfers of the disputed domain
names. However, the respondent listed in
each of the four cases is “Domain Deluxe,” which is a company located in
Complainant also alleged that Respondent has attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion among customers searching for Complainant’s products and services. Complainant alleged that customers may become confused as to the source, sponsorship, affiliation, or endorsement of the products and services advertised on Respondent’s website. The Panel disagrees because it previously found that Complainant failed to demonstrate that its AKOHA mark had acquired sufficient secondary meaning in commerce among customers searching for Complainant’s products. Furthermore, the Panel notes that Respondent registered the disputed domain name two weeks before Complainant filed its Canadian trademark application. The Panel therefore concludes that Respondent had no reason to know of Complainant’s business prior to registering the disputed domain name. Giving consideration to all of the foregoing, the Panel finds that Complainant has failed to prove that Respondent registered and used the <akoha.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant); see also It Takes 2 v. C.,J., FA 384923 (Nat. Arb. Forum Feb. 15, 2005) ("[I]n the absence of any evidence of knowledge on the part of Respondent of Complainant, its mark or its services at the time Respondent acquired the domain name, the Panel finds Complainant has failed to establish registration in bad faith.").
Therefore, the Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.
Having failed to establish any of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Bruce E. Meyerson, Panelist
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