KAANAPALI KAI CHARTERS, INC., dba Teralani Sailing Adventures v. Philippe Le Blanc
Claim Number: FA2104001940529
Complainant is KAANAPALI KAI CHARTERS, INC., dba Teralani Sailing Adventures (“Complainant”), represented by CORSEARCH, INC, Texas, USA. Respondent is Philippe Le Blanc (“Respondent”), Hawaii, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <teralani.com> (the “disputed domain name”), registered with GoDaddy.com, LLC (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 6, 2021; the Forum received payment on April 6, 2021.
On April 7, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <teralani.com> disputed domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@teralani.com. Also on April 12, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 19, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun as 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 Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant offers luxury catamaran cruises departing from the Hawaiian Island of Maui. Complainant contends that it has common law rights in the TERALANI mark through significant promotion and continuous use of the mark in commerce (hereinafter the “TERALANI Mark”). Complainant also contends that Respondent’s <teralani.com> disputed domain name is identical to Complainant’s TERALANI Mark as it contains the mark in its entirety, merely adding the “.com” generic top-level domain (“gTLD”) to the TERALANI Mark.
Complainant further claims that Respondent lacks rights and legitimate interests in the <teralani.com> disputed domain name as it is not commonly known by the disputed domain name and has not been licensed or otherwise permitted by Complainant to use the TERALANI Mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, according to Complainant, Respondent diverts Internet traffic to a website that offers competing services. Further, Respondent offers the disputed domain name for sale.
Finally, Complainant claims that Respondent registered and is using the <teralani.com> disputed domain name in bad faith. Respondent offers the disputed domain name for sale. After Complainant sent a cease-and-desist letter to Respondent, Respondent changed its website that resolved to a competing website, and instead, the disputed domain name then resolved to a landing page offering the disputed domain name for sale, both evidence of bad faith. Moreover, Complainant maintains that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the TERALANI Mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
On April 14, 2021, Respondent sent an email to the Forum seeking clarification of the dispute. Respondent also stated that he was willing to transfer the disputed domain name but needed to recoup significant costs related thereto. Respondent also stated that he would respond to the Complaint and pay the fee for a 3-person panel but did not do so. The Panel does not consider the email a formal response. The Panel read the submission from Respondent and does not find it credible.
The Panel finds that Complainant has common law rights in the TERALANI trademark because the Complainant used the mark continuously and further, the mark has acquired secondary meaning. The Panel also finds that the disputed domain name is identical to Complainant’s TERALANI Mark, that Respondent lacks rights and legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel concludes that Complainant has established common law trademark rights in the TERALANI Mark.
Policy ¶ 4(a)(i) does not require a complainant to own a registered trademark prior to a respondent’s registration of a disputed domain name if it can demonstrate common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “[t]he Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”).
Further, the Panel concludes that Respondent’s disputed domain name is identical to the TERALANI Mark per Policy ¶ 4(a)(i), as the name incorporates the TERALANI Mark in its entirety, and merely appends a “.com” gTLD to the mark. Use of a complainant’s mark as a disputed domain name fails to distinguish the mark for the purposes of a Policy ¶ 4(a)(i) analysis and the addition of a gTLD may not be sufficient to distinguish the disputed domain name from the mark. See Cards Against Humanity, LLC v. sri winarti, FA 1736823 (Forum July 31, 2017) (“The Panel therefore finds Respondent’s <cardsagainsthumanity.us> to be identical to Complainant’s CARDS AGAINST HUMANITY mark.”); see also Tupelo Honey Hospitality Corp. v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). Here, the Panel holds that Complainant has made out a prima facie case.
Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not provided evidence nor proven that it is commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the TERALANI Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Further, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent used the disputed domain name to resolve to a competing website, and subsequently used the disputed domain name to resolve to a landing page offering the disputed domain name for sale. See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Complainant provides a screenshot of the website at the disputed domain name, claiming that the services offered include whale watching, snorkeling, and cruises, which compete with Complainant’s business. In addition, where a respondent’s use of a disputed domain name is to offer it for sale, the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the disputed domain name in bad faith for the reasons described below.
First, Respondent uses the disputed domain name to resolve to a competing website that operates boat touring in Hawaii, and thus, offers competing services. Using a confusingly similar domain name to divert Internet users to a respondent’s website that competes with complainant’s services demonstrates bad faith per Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). Such conduct is emblematic of bad faith. The fact that Respondent includes a disclaimer in the footer of the website to which the disputed domain name resolves does not negate Respondent’s use in bad faith. Moreover, as described below, since the website links users to another website where those users can purchase the disputed domain name, this is also emblematic of bad faith.
Second, Respondent registered and uses the <teralani.com> disputed domain name in bad faith because Respondent offers the disputed domain name for sale. General offers to sell a disputed domain name may suggest bad faith per Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”).
Third, Respondent acted in bad faith since it used the disputed domain name to intentionally attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion or a false association with the Complainant’s TERALANI Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Such conduct demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Fourth, it is likely that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the mark. Registering a domain name with knowledge of another’s rights may be indicative of bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). The Panel finds that Respondent’s knowledge of Complainant’s TERALANI Mark is evidenced by Respondent’s use of the disputed domain name to offer competing services while including a disclaimer to distinguish Complainant’s business.
Finally, Respondent did not respond to the cease-and-desist letter demanding transfer of the disputed domain name sent by Complainant. Previous UDRP panels have held that failure to respond to a cease-and-desist letter may be considered a factor in finding bad faith registration and use of a disputed domain name. See Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; see also Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <teralani.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: May 18, 2021
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