Tampa Water Taxi Company LLC v. Dara Hindman / Yacht StarShip

Claim Number: FA2206001999291



Complainant is Tampa Water Taxi Company LLC (“Complainant”), represented by Mark C. Johnson of Johnson Dalal, Florida, USA.  Respondent is Dara Hindman / Yacht StarShip (“Respondent”), represented by Brad F. Barrios of Turkel Cuva Barrios, PA, Florida, USA.



The domain name at issue is <>, registered with, LLC.



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.


Aaron B. Newell, ESQ as Panelist.



Complainant submitted a Complaint to the Forum electronically on June 6, 2022; the Forum received payment on June 6, 2022.


On June 7, 2022,, LLC confirmed by e-mail to the Forum that the <> domain name is registered with, LLC and that Respondent is the current registrant of the name., LLC has verified that Respondent is bound by the, 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 June 8, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 2022 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  Also on June 8, 2022, 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.


A timely Response was received and determined to be complete on July 13, 2022.


On 19 July 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Aaron B. Newell, ESQ 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.



Complainant requests that the domain name be transferred from Respondent to Complainant.



A. Complainant

Complainant asserts that:


i)             it owns common law trade mark rights in the name TAMPA WATER TAXI for passenger transportation by boat in/around the Tampa area in Florida, and has done so since at least 2010;


ii)            it operates a website at where it promotes its services, and has done so since 2010;


iii)           Respondent operates as Pirate Water Taxi in the Tampa area and is a competitor of Complainant’s;


iv)           Respondent registered the domain name in 2019 in full knowledge of Complainant, its business and its domain name, and has used the domain name in advertising to redirect website traffic to Respondent’s website at


B. Respondent

            Respondent asserts that:


i)             Complainant has no federal registered trade mark rights and has not adequately substantiated its claim to common law rights in TAMPA WATER TAXI;


ii)            TAMPA WATER TAXI is generic and descriptive of the parties’ services;


iii)           Complainant trades as TAMPA WATER TAXI CO in any event, not TAMPA WATER TAXI;


iv)           Respondent adopted the domain name <> as a good faith descriptor of its services;


v)            Complainant owns a Florida state trademark registration for TAMPAWATERTAXICO.COM but this is subject to disclaimers in respect of the terms TAMPA, WATER TAXI and .COM and is therefore indicative that the trade mark is weak. 


C. Additional Submissions

No material further submissions were made.



The Panel’s factual findings are:


i)             Complainant has registered the domain name TAMPAWATERTAXICO.COM in 2009 and has traded as TAMPA WATER TAXI CO from a website at that domain name since at least as early as 2010 (and likely earlier), providing passenger transport services and tours by boat in/around the Tampa area;


ii)            Respondent does not trade as TAMPA WATER TAXI but rather PIRATE WATER TAXI, and has done so since in/around 2016 providing passenger transport services, tours and entertainment events by boat in/around the Tampa area.


It should be noted that Respondent does not mention its tour services in detail in its Response, but the panel has conducted research of matters of public record such as (inter alia) the Respondent’s own website which uses the heading “Daily Tours of Downtown Tampa aboard the Pirate Water Taxi” and Respondent’s LinkedIn page which states “Experience Downtown Tampa's beautiful Riverwalk and more aboard Pirate Water Taxi! We offer daily tours, private charters and specialty events”. Respondent concludes that Respondent promotes itself as offering tours as well as water transport services.


iii)           Respondent has not used the phrase TAMPA WATER TAXI as a trademark. Respondent trades primarily as PIRATE WATER TAXI.  


iv)           Complainant owns an active Florida state trademark registration for TAMPAWATERTAXICO.COM which it filed 27 July 2010 and which disclaims the terms TAMPA, WATER TAXI and .COM. and covers the following services: WATER SHUTTLE, WATER TAXI, CHARTER BOAT, & TOUR BOAT SERVICES. Complainant filed the application for this trademark after its application for TAMPA WATER TAXI was rejected by the Florida Department of State Division of Corporations rejected its earlier application for TAMPA WATER TAXI due to its conflict with an earlier registration for similar services.



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 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.


Preliminary Comments

It should be noted that the Complainant omitted reference to its Florida state trademark registration for TAMPAWATERTAXICO.COM from its Complaint, but this was raised by Respondent in its Response, included as evidence by the Respondent and verified by the Panel by accessing public records available on, the official State of Florida website for The Division of Corporations and the administrator of the Florida state trademark register.


It is generally accepted in UDRP proceedings that the Panel may and is entitled to conduct research relating to matters of public record in order to verify the contentions of the parties and/or assist it in formulating its decision. The Panel has done so here in verifying the existence of the Complainant’s Florida state trademark registration for TAMPWATERTAXICO.COM and the limited prosecution history of this and its application for TAMPA WATER TAXI made available by the Florida state Division of Corporations.


Identical and/or Confusingly Similar

Complainant asserts common law trademark rights in the name TAMPA WATER TAXI. The Panel finds that the Complainant has provided insufficient information and evidence to substantiate these alleged rights.


However, Complainant is not required to demonstrate rights specifically in TAMPA WATER TAXI in order to meet the threshold requirement under Policy 4(a)(i). Complainant must establish that the domain name at issue is identical or confusingly similar to a trademark or service mark in which it has rights.


Complainant has traded consistently at the domain name since at least 2010 and continues to do so. One might assume that there has been meaningful traffic to this domain name and significant promotion of the domain name to help the Complainant market and maintain its business over this time. Unfortunately, no evidence relating to goodwill or common law rights in the domain name was submitted by Complainant. While it can be assumed there is some reputation in the domain name, the Panel cannot speculate as to the potential level of goodwill and/or common law rights in the domain name itself. There is none of the expected information available regarding sales, turnover, and/or marketing/advertising/promotion in respect of the domain name and/or TAMPA WATER TAXI CO name.


With this said, Respondent has brought to the Panel’s attention Complainant’s registered trademark rights on the Florida state register for TAMPAWATERTAXICO.COM.


It is open for the Panel to find that a United States state registration (as distinct from a Federal registration) potentially confers standing to the Complainant, subject to it meeting the “identical or confusingly similar” threshold. A number of Forum Panels have made this determination in the past (see for example FA1301001481278 which proceeded based on Montana and Wyoming trademark registrations).


It should be noted that the WIPO Jurisprudential Overview 3.0 (Point 1.2.2) suggests that state registrations must be carefully considered and may not be acceptable as “rights” on which to base a UDRP Complaint, but ultimately allows for the exercise of discretion:


When considering UDRP standing, panels tend to carefully review certain types of automatic/unexamined registered trademarks such as US state registrations (as opposed to US federal registrations); these are not accorded the same deference and may not on their own satisfy the UDRP’s “rights in a mark” standing test.


It should be noted that Panels at WIPO have upheld Complaints based on state registrations in certain circumstances. See for example D2011-1243 (case proceeding based on a Kansas state registration), or D2007-1597 where the Panel upheld the Complaint based on a Massachusetts state registration, noting the following:


Unlike some states of the United States of America and contrary to Respondent’s assertion, Massachusetts does not issue trademarks automatically upon filing; the Secretary of the Commonwealth does give filings some scrutiny before authorizing a mark, so the exception in the Overview does not apply.


In the present circumstances, there is evidence that the Florida trademark registry does not operate a “deposit” system with automatic granting of rights on application. Indeed, Complainant’s first application for TAMPA WATER TAXI was rejected based on an earlier mark, requiring that it reconsider its filing position and file TAMPAWATERTAXICO.COM as an alternative.


While the rights granted by a state registration may be weaker or smaller in scope than a Federal trademark registration, they remain rights. In this case they are rights that are subject to examination and scrutiny prior to registration. The Panel therefore finds that it should continue the assessment as to identity and/or confusing similarity.


In that regard, the Complainant’s rights are in the term TAMPAWATERTAXICO.COM. The domain name at issue is <>. The signs are not identical. Are they confusingly similar?


The Complainant’s rights disclaim TAMPA, WATER TAXI and .COM, as the Respondent points out. This does not however mean that the registration is unenforceable in respect of other signs that contain these terms. Signs must be compared by reference to their respective wholes. The fact that TAMPA, WATER TAXI and .COM are individually disclaimed therefore does not mean that their combination in the single sign TAMPAWATERTAXICO.COM is itself disclaimed. If that were the case there would be no point to the registration.


In that connection, the Complainant’s TAMPAWATERTAXICO.COM domain name and trademark registration differ only from <> in respect of the abbreviation “co” which infers “company” and itself is weak and – due to its meaning and position in the trade mark - not by itself likely to be a distinguishing element.


Indeed, following traditional rules of the comparison of trade marks, the Complainant’s registration and the Respondent’s domain name are identical in respect of the lead element TAMPAWATERTAXI as well as the .COM aspect (which, again while weak, is not irrelevant to the comparison).


While the respective signs are both on the “weak” and descriptive end of the distinctiveness spectrum, they remain highly similar and/or nearly identical. The inclusion of the term “CO” does not remove the risk of confusion between two near-identical signs.


Further, this Panel considers that there is a real risk that consumers will overlook the “co” element in the comparison between <> and TAMPAWATERTAXICO.COM, and that in typing the Complainant’s domain name or searching for the Complainant’s business by reference to TAMPAWATERTAXICO.COM there is significant potential for confusion if/when they are presented with the option to engage with the domain name <>.


Further, noting that a) the parties are competitors, that b) Complainant had enjoyed nearly a decade of business under the TAMPWATERTAXICO.COM domain name when the Respondent – who otherwise had never been known by <> – registered its domain name, that c) it is unlikely and perhaps impossible that Respondent was unaware of Complainant at the time that it registered the domain name, and that d) most likely in full knowledge of the Complainant and its TAMPAWATERTAXICO.COM domain name Respondent registered and used <> to divert internet traffic to its domain name, the Panel considers that Respondent’s conduct itself infers a certain degree of distinctiveness in Complainant’s trade mark and domain name and, in turn, a degree of similarity.


Finally, the Panel notes that Respondent appears to acknowledge that TAMPA WATER TAXI and TAMPAWATERTAXICO.COM are “similar”. See for example Respondent’s concession at Response page 5 where it states that Complainant’s Whois record for its domain name “demonstrates [Complainant’s] ownership of a domain similar to [TAMPA WATER TAXI], but it does not demonstrate use of [TAMPA WATER TAXI] in commerce…”. Clearly the Respondent here acknowledges the similarity between TAMPA WATER TAXI and TAMPAWATERTAXICO.COM.


The Panel finds that the domain name is confusingly similar to a “trademark or service mark in which the complainant has rights”.


Rights or Legitimate Interests

Respondent’s defense rests primarily on the notion that it is using the domain name as a good faith descriptor of its business.


The Panel has already determined that it is unlikely that the Respondent registered the domain name <> without knowledge of the Complainant and its own use of the near-identical domain name Complainant had been in operation for nearly ten years at the time that Respondent registered the domain name. Both parties offer passenger transport and tour services by boat in/around the Tampa area. Complainant alleges that the parties are competitors and this is not disputed by Respondent.


While both businesses describe themselves as “water taxi” services that operate in “Tampa”, the Panel considers that any descriptive function of “” is tempered by its similarity to the Complainant’s domain name and trademark, both of which had been used by Complainant for nearly a decade and in competition with the Respondent at the time of registration of the Respondent’s domain name.  


It is difficult to see how the use of the Respondent’s domain name could not have an adverse impact on the Complainant, its business and its brand. It is also difficult to see how the Respondent could not have anticipated this. Further, based on the evidence submitted by Respondent, until it registered the domain name <> Respondent was not known by the name “TAMPA WATER TAXI” and had not described itself in this way at any time. Its use of “Tampa water taxi” (as a descriptor or otherwise) appears to have originated with its registration of the domain name.


In the circumstances, the Panel has determined that, on balance of probabilities, Respondent adopted the domain name in the knowledge that it could have an adverse impact on the Complainant’s brand and business, and potentially see some of the Complainant’s internet traffic diverted to the Respondent. Whether the domain name provides Respondent with the additional benefit of being a potential descriptor of its business does not justify or legitimize this conduct.


The starting point here is that Respondent registered a domain name which it most likely knew directly reflected the brand of one of its competitors. Where some Panels might say to Complainant “this is a risk you took when choosing a less-distinctive name”, this Panel considers that the risk was taken by the Respondent in registering a domain name that almost entirely replicates the brand of a long-established competing business. Respondent could have chosen any number of descriptive phrasings for its secondary domain name. It decided to use something nearly identical to a competitor’s brand, and to justify this with the pretext that the domain name is descriptive and therefore legitimate. The Panel disagrees and finds that Respondent does not have a legitimate interest in the domain name.


Registration and Use in Bad Faith

The Panel finds that, on balance of probabilities, Respondent registered the domain name a) in full knowledge of Complainant and its brand and business, b) aware of the similarity between the domain name and the domain name and brand used by Complainant, c) aware of the impact that this could cause on Complainant’s brand and business and d) aware that internet users seeking out the Complainant could confuse Respondent’s domain name with the Complainant or the Complainant’s domain name. It is a matter of record that Respondent used the domain name to divert traffic to its domain name and business.


The Panel considers that this is cybersquatting conduct, and finds that the domain name was registered and used in 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 <> domain name be TRANSFERRED from Respondent to Complainant.




Aaron B. Newell, ESQ Panelist

Dated:  August 2, 2022



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