Ko Olina Intangibles, LLC v. Nimiety Group, LLC
Claim Number: FA0912001297883
Complainant is Ko Olina Intangibles, LLC (“Complainant”), represented by Lane
Hornfeck, of Starn O'Toole Marcus & Fisher,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <koolinaactivities.com>, registered with Wild West 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 7, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 10, 2009.
On December 8, 2009, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <koolinaactivities.com> domain name is registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 December 15, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 4, 2010 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 firstname.lastname@example.org by e-mail.
A Response was received and determined to be deficient on January 4, 2010, pursuant to ICANN Rule # 5 because the Response was not received in hard copy prior to the Response deadline.
On January 8, 2010, a timely additional submission was received from Complainant.
On January 11, 2010, a timely additional submission was received from Respondent.
All submissions were considered by the Panel.
On January 12, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is Ko Olina Intangibles, LLC, a limited liability company
organized under the laws of
The registrant of koolinaactivities.com, the Disputed Domain Name, and
Respondent in this administrative proceeding is Nimiety Group, LLC, a
The Disputed Domain Name was registered on April 24, 2006.
Since 1985, Complainant and/or its assignor has continuously and
actively used the “Ko Olina” trade name throughout the
West Beach Estates, the predecessor in interest to Complainant, registered the trade name “Ko Olina” on December 9, 1985.
In 1998, Complainant purchased real property and certain intangibles from West Beach Estates, including the trade name “Ko Olina.” Complainant renewed and registered the trade name “Ko Olina” to May 7, 2014.
“Ko Olina” is an arbitrary term that was coined by Complainant’s predecessor and has no assigned meaning to it in any language apart from being associated with Complainant. “Ko Olina” is not a Hawaiian word. It is also not a geographical location or name.
Complainant has authorized the use of the trade name “Ko Olina” to related entities including, but not limited to, Ko Olina Activities, LLC. In addition to the trade name “Ko Olina,” Ko Olina has registered numerous trade names incorporating the term “Ko Olina” with State of Hawaii Department of Commerce and Consumer Affairs.
The use of the trade name “Ko Olina” has not been authorized by Ko Olina in connection with Respondent’s registration and use of the Disputed Domain Name.
The “Ko Olina” trade name is well known through long, continuous and exclusive use, as well as extensive promotion, advertising and publicity relating to the Ko Olina Entities.
The Ko Olina Entities have an active presence on the Internet, including operating the website koolina.com, which is devoted exclusively to the promotion of the Ko Olina Entities.
Respondent’s Disputed Domain Name is identical and/or confusingly similar to the “Ko Olina” trade name
On December 4, 2009, Complainant filed a Petition for Revocation with the State of Hawaii Department of Commerce and Consumer Affairs’ Business Registration Division for the revocation of the registration, existing use and possible future use of the trade name “Koolina Activities.com” and any similar iteration of these words by Respondent and any individuals or entities related to Respondent.
Respondent is registered with the Department of Commerce and Consumer
Affairs of the State of
“Ko Olina” is not a Trademarked name, “Ko Olina Resort and Marina” is what was trademarked.
The name Ko Olina was selected by Reverend Abraham K. Akaka. The word Ko means to fulfill and Olina means
joy. Ko Olina was a fishing camp and it
became a retreat for
Nimiety Group LLC, is in the tour and activity business and provides
tours and activities to visitors coming to
The website Koolina.com does not sell any activities or tours from the website, thus there is no confusion to visitors viewing Koolinaactivities.com.
The State of
C. Additional Submissions
Complainant’s Additional Submission:
“Ko Olina” has been and continues to be an appropriately registered trade name.
The term “Ko Olina” is one relating to business or entities instead of “products” of such business or entities, and the term is appropriately registered as a trade name instead of a trademark.
Respondent improperly registered <koolinaactivities.com> without permission of Complainant. Registration of a trade name with the Department of Commerce and Consumer Affairs (DCCA) in and of itself does not grant ownership of the trade name.
The State of
The DCCA has made a determination that Complainant is the owner of the trade names “Ko Olina” and “Ko Olina Resort” based on a preponderance of the evidence.
The DCCA found and/or held:
(a) The “Ko Olina” trade name was specifically coined by Complainant’s predecessor-in-interest, West Beach Estates, and has been continuously and actively used since 1985.
(b) Although the term “Ko Olina” is derived from two Hawaiian words, it is not a Hawaiian word. It is also not a geographic location.
The geographic area where Ko Olina Resort & Marina is located has not been known as “Ko Olina.” Paradise Cove is located with the gates of the Ko Olina Resort & Marina.
The State of
It is undisputed that Respondent is competing directly with Ko Olina Activities, LLC and/or Ko Olina Resort Activities, LLC by offering to book identical activities on its website.
Respondent’s Additional Submission:
As stated in the Complainant’s last “Additional Submission” Ko Olina Intangibles, does not own and/or manage Ko Olina Activities LLC. Therefore the Complainant’s argument the Disputed Domain Name is identical and/or confusingly similar to the trade name of “Ko Olina” and entity names “Ko Olina Activities LLC” is not valid.
There is no confusion between the names or domain names <koolina.com> and the domain name <koolinaactivities.com>.
The Complainant would have to have an Underscore in the domain name for it to be valid. Ko_olina.com would be the correct and legal name that could be disputed.
The State of
There is no business name registered as “Koolina” included in the Director’s Final Order as the Complainant has submitted, only names “Ko Olina” Transportation or Limousine, etc.
The State of
For the reasons set forth below, the Panel finds Complainant is not entitled to the relief requested.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
While Complainant, Ko Olina Intangibles,
LLC, asserts that it holds numerous trademark registrations with
Complainant alleges it, and its
predecessors in interest, have used the KO OLINA mark to develop and operate a
resort in the area of Kapolei on the
Complainant claims Respondent’s <koolinaactivities.com> domain name is confusingly similar to
Complainant’s KO OLINA mark. Complainant
alleges the disputed domain name combines Complainant’s mark, after removing a
space, with the generic term “activities” and the generic top-level domain
(“gTLD”) “.com.” Previous panels have
found the removal of a space from a complainant’s mark, the addition of a
generic term, and the addition of a gTLD all fail to adequately distinguish a
disputed domain name from a complainant’s mark.
See Am. Int’l Group, Inc. v. Domain
Respondent contends that the <koolinaactivities.com> domain
name is comprised of common and geographic terms and as such c
Complainant has proven this element.
The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under 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 UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
that while it competes with Complainant, its offering of different activities
and services are a bona fide offering
of goods and services under Policy ¶ 4(c)(i).
Respondent argues it owns the right to sell its activities and services
to customers interested in visiting the Ko Olina area. Respondent asserts it is a legal business in
the state of
also argues that the terms of the <koolinaactivities.com> domain name are common and geographic, and therefore, Complainant does not have an
exclusive monopoly on the terms on the Internet. Respondent argues Complainant’s KO OLINA mark
is made up of two Hawaiian words meaning “fulfillment of joy.” Respondent contends the area where
Complainant’s resort is located was given this name by Reverend Abraham Akaka
and the land became a retreat for
Complainant has not proven this element.
Since the Panel has concluded that Respondent has rights or legitimate interests in the <koolinaactivities.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent contends that the <koolinaactivities.com> domain name is comprised entirely of common and geographic terms that have many meanings apart from use in Complainant’s KO OLINA mark. Moreover, Respondent contends that the registration and use of domain name comprising such common terms is not necessarily done in bad faith. A respondent is free to register a domain name consisting of common terms and the domain name currently in dispute contains such common terms. The Panel finds that Respondent did not register or use the <koolinaactivities.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis.").
Complainant has not proven this element.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <koolinaactivities.com> domain name remain with Respondent.
Hon. Karl V. Fink (Ret.), Panelist
Dated: January 26, 2010
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