Kapalua Land Company, Ltd. v. Orbiculate.com c/o Marco Stocchi
Claim Number: FA0808001222536
Complainant is Kapalua Land Company, Ltd. (“Complainant”),
represented by Colin O. Miwa, of Cades Schutte, LLP.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kapaluacondos.com>, registered with Enom, Inc.
The undersigned certify that they have acted independently and impartially and, to the best of their knowledge, have no known conflict in serving as Panelist in this proceeding.
G. Gervaise Davis, Jeffrey M. Samuels and the Honorable Charles K. McCotter, Jr. (Ret.) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 3, 2008.
On August 29, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <kapaluacondos.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 8, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 29, 2008 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.
On October 9, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed G. Gervaise Davis, Jeffrey M. Samuels and the Honorable Charles K. McCotter, Jr. (Ret.) as Panelists.
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 <kapaluacondos.com> domain name is identical/confusingly similar to Complainant’s KAPALUA mark.
2. Respondent does not have any rights or legitimate interests in the <kapaluacondos.com> domain name.
3. Respondent registered and used the <kapaluacondos.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
name, “KAPALUA”, was adopted in the 1970s by Complainant’s parent, MLP, and its
predecessor-in-interest as the name of the resort to be owned and developed by
KLC. Since 1975, long prior to
Registrant’s registration of the domain name <kapaluacondos.com>,
KLC has been using the mark “KAPALUA” in connection with the development of the
Kapalua Resort and luxury real estate residential developments located within
the resort. Since its initial use of the
“KAPALUA” mark, KLC has continuously and actively used the mark, including in
extensive advertising of its upscale real estate properties, hotel services,
and related merchandise under the “KAPALUA” name. KLC has actively and continuously used the
mark in commerce since at least as early as 1975 in association with its
development and operation of the Kapalua Resort in
The <kapaluacondos.com> web address and domain name contain KLC’s “KAPALUA” mark in its entirety. The website also is an inactive advertising/commercial website for “Maui Real Estate Company” “a division of California Real Estate Company” containing a few active sponsored links and internal links to competing vacation rentals and other services not located within, or associated with, KLC’s Kapalua Resort.
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) (AIn 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.
Identical and/or Confusingly Similar
Complainant has rights in the KAPALUA mark by virtue of its several trademark registrations with the United States Patent and Trademark Office (“USPTO”). In particular, Complainant owns a trademark registration in the KAPALUA mark (Reg. No. 2,703,816 issued April 8, 2003). The Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i). See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world); see also VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”). Even if Kapalua is a geographic area (a point Complainant disputes), and thus descriptive in nature, Complainant established to the satisfaction of the USPTO that its use of such term, in connection with resort and hotel services, has acquired distinctiveness.
Respondent’s <kapaluacondos.com> domain name is confusingly similar to Complainant’s KAPALUA mark. Respondent’s disputed domain name features Complainant’s mark in its entirety and adds the generic term “condos” along with the generic top-level domain (“gTLD”) “.com.” The Panel finds that these distinctions fail to differentiate Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Disney Enter. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the alterations to the complainant’s DISNEY mark in the respondent’s <finestdisneyhomes.com> domain name are insufficient to differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is using the <kapaluacondos.com> domain name to operate a website that features sponsored links to advertisements for various commercial websites. The Panel infers from Respondent’s use that it is collecting click-through fees for each misdirected Internet user. The Panel finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
Complainant contends that Respondent is neither commonly known by the disputed domain name, nor licensed to register domain names using the KAPALUA mark. Respondent’s WHOIS information identifies Respondent as “Orbiculate.com c/o Marco Stocchi.” The Panel finds that Respondent is not commonly known by the disputed domain name and therefore lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds bad faith registration and use under paragraph 4(b)(iv) of the Policy. The evidence shows that Complainant has used its KAPALUA mark for resort services since 1975 and for hotel services since 1977, and that the domain name was not registered until April 2003. There is also evidence that the KAPULUA mark has been used in connection with a well-known golf tournament. The domain name <kapaluacondo.com> is likely to cause confusion as to the source of Respondent's website.
A trial of some fifty or sixty links of Respondent’s website resolve to other placeholder pages or broken or non-existent links. There is no apparent record of any such organizations as the websites list as the owners in their titles. The Panel cannot, from the facts given us, know what the Respondent is actually doing, but that since he failed to respond and since we see that the links only go to other placeholder sites without any substance, we can only assume that this is not a good faith use of the domain but an effort to hold the domain until the Respondent decides what to do with it, and that alone is not good faith. Furthermore, the fact that the companies who are listed in the headers on these web pages appear not to exist in the real world if further evidence of bad faith use.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kapaluacondos.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Jeffrey M. Samuels
G. Gervaise Davis
Dated: October 27, 2008
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