Aloha Petroleum Ltd. v. CustomWeather
Inc.
Claim Number: FA0205000114417
Complainant
is Aloha Petroleum Ltd., Honolulu,
HI (“Complainant”) represented by Martin
Hsia, of Cades Schutte Fleming &
Wright. Respondent is CustomWeather Inc., San Francisco, CA
(“Respondent”).
The
domain name at issue is <aloha.biz>,
registered with Corporate Domains, 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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on May 24, 2002; the Forum
received a hard copy of the Complaint on May 24, 2002. Complainant submitted an
Additional Submission to the Forum on June 6, 2002.
On
May 30, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 19,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On July 17, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Judge Harold Kalina (Ret.)
as the single Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response from Respondent.
Transfer
of the domain name from Respondent to Complainant.
A. Complainant
1. Respondent’s <aloha.biz> domain name is identical to Complainant’s
registered ALOHA mark.
2. Respondent does not have any rights or
legitimate interests in respect of the <aloha.biz>
domain name.
3. Respondent registered the <aloha.biz> domain name in bad
faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant owns U.S. Patent and
Trademark Office (“USPTO”) Reg. No. 2,547,377 for its ALOHA mark registered and
listed on the Principal Register on March 12, 2002. Complainant’s ALOHA mark
was filed with the USPTO on August 2, 2001 for retail gasoline supply services.
Also, Complainant holds numerous other trademark registrations in the state of
Hawaii that incorporate the ALOHA mark (e.g., ALOHA WINDWARD SERVICE, ALOHA
KAPAHULU, and ALOHA WAIANAE, among others). Complainant has used its ALOHA mark
in commerce since 1977.
Respondent registered <aloha.biz> on March 27, 2002.
Complainant’s investigation revealed that Respondent is a Delaware corporation
with its principal place of business in California, and is engaged in the
business of providing custom weather forecasts and weather maps. Respondent is
not an authorized or licensed agent of Complainant. Complainant’s Additional
Submission indicates that Respondent may be having difficulty with its
registrar, Enom.com, where Enom.com has registered several domain names to
Respondent without Respondent’s knowledge.
Paragraph 15(a) of the STOP 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 the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules
and draw such inferences it considers appropriate pursuant to paragraph 14(b)
of the STOP Rules.
Paragraph
4(a) of the STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1) the domain name
is identical to a trademark or service mark in which the Complainant has rights;
and
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (“IP”) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (“gTLD”) in the
disputed domain name is not a factor for purposes of determining that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Complainant
has established rights in the ALOHA mark through registration with the USPTO
and continuous use of the mark since 1977.
Respondent’s
<aloha.biz> domain name is
identical to Complainant’s registered ALOHA mark. Respondent’s domain name
emulates Complainant’s mark in its entirety, mirroring it in spelling and form.
Respondent’s domain name deviates from Complainant’s mark only with the
inconsequential addition of the gTLD “.biz.”
Accordingly,
the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to submit a
Response in this proceeding. Therefore, it is presumed that Respondent lacks
rights and legitimate interests in the <aloha.biz>
domain name. See Canadian Imperial Bank
of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23,
2000) (finding no rights or legitimate interests where no such right or
interest was immediately apparent to the Panel and Respondent did not come
forward to suggest any right or interest it may have possessed).
Furthermore, because Respondent failed to
submit a Response in this proceeding, the Panel is permitted to make all
reasonable inferences in favor of Complainant. See 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”).
Complainant failed to locate any
information that would suggest Respondent is the owner or beneficiary of a
trademark or service mark that is identical to the disputed domain name
pursuant to STOP Policy ¶ 4(c)(i). Also, Respondent has not provided this Panel
with any evidence that would suggest it owns a trademark or service mark that
reflects the ALOHA moniker. See Nat’l
Acad. of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb.
Forum Feb. 11, 2002) (finding that, because Respondent did not come forward
with a Response, the Panel could infer that it had no trademark or service
marks identical to <grammy.biz> and therefore had no rights or legitimate
interests in the domain name).
Respondent has yet to develop a purpose
for the disputed domain name and has not provided any evidence showing any
demonstrable preparations to use <aloha.biz>
in connection with a bona fide offering of goods or services pursuant to
STOP Policy ¶ 4(c)(ii). Respondent has the burden of producing credible
evidence that it registered <aloha.biz>
for a legitimate purpose. Respondent’s failure to support its registration with
evidence signifying some right or legitimate interest in the disputed domain
name implies that Respondent has none. See
Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that
absent evidence of preparation to use the domain name for a legitimate purpose,
the burden of proof lies with the Respondent to demonstrate that it has rights
or legitimate interests); see also Gene
Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that
in order to show rights or legitimate interests in the disputed domain name
Respondent must establish with valid evidence “a course of business under the
name, or at least significant preparation for use of the name prior to learning
of the possibility of a conflict” with an IP Claimant).
Complainant’s investigation also revealed
that Respondent is located in Texas and is involved with providing consumers
personalized weather forecasts. Respondent’s disputed domain name incorporates
the ALOHA mark, a word uniquely associated with Hawaii and its people which
most often is associated with the words “hello,” “goodbye” and “love.” There is
no apparent connection between Respondent’s weather forecasting service and the
ALOHA mark. Furthermore, Complainant’s investigation failed to produce any
evidence that Respondent is commonly known by its <aloha.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii). See Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because Respondent is not commonly known by the disputed domain name
or using the domain name in connection with a legitimate or fair use); see also Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in domain name when Respondent is not known by the mark).
Accordingly, the Panel finds that STOP
Policy ¶ 4(a)(ii) has been satisfied.
The criteria specified in ¶ 4(b) of the
STOP Policy do not represent an exhaustive list of bad faith evidence. The
Panel must take into consideration the totality of circumstances in order to
determine if Respondent registered or used the domain name in bad faith. See Twentieth Century Fox Film Corp. v.
Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in
determining if a domain name has been registered in bad faith, the Panel must
look at the “totality of circumstances”); see
also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding
that the criteria specified in 4(b) of the Policy is not an exhaustive list of
bad faith evidence).
Because Complainant’s ALOHA mark is
listed on the USPTO’s Principal Register and due to the nature of NeuLevel’s
STOP IP claim registration procedure, Respondent had notice of Complainant’s
preexisting rights in the ALOHA mark. Respondent’s subsequent registration of
the infringing <aloha.biz>
domain name, despite knowledge of Complainant’s rights in the ALOHA mark,
represents bad faith registration under STOP Policy ¶ 4(a)(iii). See Victoria’s
Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a
Principal Register registration [of a trademark or service mark] is
constructive notice of a claim of ownership so as to eliminate any defense of
good faith adoption” pursuant to 15 U.S.C. § 1072); see also Valspar Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb.
Forum June 4, 2002) (“Respondent was on notice of Complainant’s rights in
PAINT.BIZ when it registered the disputed domain name, because Respondent
received notice of Complainant’s IP Claim.
Respondent’s registration of the disputed domain name despite this
notice when Respondent had no right or legitimate interest in the domain name
is evidence of bad faith”).
Furthermore, Respondent
registered an infringing domain name that incorporates Complainant’s ALOHA mark
in its entirety in the second level domain. Respondent’s lack of rights or
legitimate interests in the <aloha.biz>
domain name and knowledge of Complainant’s preexisting rights implies that
Respondent registered the disputed domain name in order to prevent Complainant
from reflecting its mark in a corresponding domain name. Respondent’s actions
represent bad faith registration under STOP Policy ¶ 4(b)(ii). See Toyota Jidosha Kabushiki
Kaisha v. S&S Enter. Ltd.,
D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of a domain name
goes further than merely correctly using in an advertisement the trade mark of
another in connection with that other’s goods or services: it prevents the
trade mark owner from reflecting that mark in a corresponding domain name”); see also Peachtree Software v. Scarponi,
FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy
¶ 4(b)(ii), noting that it was reasonable to conclude Respondent
registered <peachtree.biz> with the intent to prevent Complainant from
reflecting its PEACHTREE mark in a corresponding domain name, given
Respondent's knowledge of Complainant's mark and Respondent's lack of rights or
interests in the mark).
The Panel finds that STOP Policy ¶ 4(a)(iii) has been
satisfied.
Having
established all three elements required under the STOP Policy, the Panel
concludes that relief should be hereby GRANTED.
Accordingly,
it is Ordered that the <aloha.biz>
domain name be TRANSFERRED from
Respondent to Complainant, and that subsequent challenges under the STOP Policy
against this domain name SHALL NOT be
permitted.
Judge Harold Kalina (Ret.), Panelist
Dated: July 31, 2002
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