Hawaii Visitors & Convention Bureau v. Hawaiian Vacations

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Hawaii

Visitors & Convention Bureau v. Hawaiian Vacations

Case

No. D2002-0488

1. The Parties

The Complainant in this

administrative proceeding is the Hawaii Visitors & Convention Bureau ("the

Complainant"), a private, nonprofit corporation existing under the laws

of the State of Hawaii in the United States of America. The Complainant’s place

of incorporation and principal place of business are 2270 Kalakaua Avenue, 8th

Floor, Honolulu, Hawaii, United States of America.

The Respondent in this

proceeding is Hawaiian Vacations ("the Respondent"), having its principal

place of business at 5107 – 35 Avenue, Edmonton, Edmonton, Canada.

2. The Domain Name and

Registrar

This dispute concerns the

domain name <gohawaii.biz> (the "Domain Name").

The Domain Name was registered

with the Registrar in question on or about November 7, 2001.

The Registrar with whom

the Domain Name is registered is VeriSign, Inc. whose address is 21355 Ridgetop

Circle, Dulles, Virginia 20166, United States of America.

3. Procedural History

A complaint pursuant to

the Uniform Domain Name Dispute Resolution Policy ("the policy") and

the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules")

both of which are implemented by ICANN on October 24, 1999 was received by WIPO

on May 25, 2002. Payment in the required amount to the Centre has been made

by the Complainant.

On June 4, 2002 a request

for registrar verification was sent to the Registrar requesting confirmation

that it had received a copy of the complaint from the Complainant, that the

Domain Name was currently registered with it and that the policy was in effect,

and requesting full details of the holder of the Domain Name and advice as to

the current status of the Domain Name.

On June 7, 2002 a response

was received from the Respondent.

On June 17, 2002 a notification

of appointment of administrative panel and projected decision date ("the

appointment notification") was sent to the Complainant and the Respondent.

The appointment notification informed the parties that the administrative panel

would be comprised of a sole panelist, Clive Elliott.

4. Factual Background

The Complainant is a non-profit

corporation dedicated to promoting tourism and conventions to and among the

Hawaiian Islands. Originating in 1903, the Complainant claims that it is the

oldest tourism organization in the Pacific Region and the only entity representing

all of the Islands of Hawaii in the arena of global destination marketing. It

is the State of Hawaii’s official marketing agency and receives most of its

funding from the State.

The Complainant filed on

September 23, 1998, an application with the United States Patent and Trademark

Office ("USPTO") to register "GOHAWAII" as a service mark

in Class 35 for tourism promotion. On March 21, 2000, the USPTO issued Certificate

of Registration No. 2,331,414 recognizing "GOHAWAII" as a service

mark belonging to the Complainant. (Copy supplied).

The Complainant is a membership

based organization and the members are businesses relating to tourism and convention,

including airlines, hotels, restaurants, travel agencies, and tour operators.

The Complainant's membership allows tourism and convention related businesses

to demonstrate their support for Hawaii’s tourism industry.

The Respondent is a Canadian

company that provides travel agency services and specializes in arranging vacations

to Hawaii. Hawaiian Vacations assists customers in making reservations for air

travel to Hawaii, hotel accommodations in Hawaii, and other Hawaii-related travel

activities.

5. Parties’ Contentions

A. Complainant

The Complainant states

that shortly before July 1994, the Complainant began using the mark "GOHAWAII"

to market tourism and conventions in Hawaii. The "GOHAWAII" mark has

been used by the Complainant in the United States, Canada, Asia, and Europe

in magazines, newspaper and television ads, signage, brochures, travel planners,

road shows, trade shows, and on stationary and business cards. The Complainant

currently features the "GOHAWAII" mark in almost all of its advertisements.

The Complainant claims to have devoted considerable time and expense to promoting

its "GOHAWAII" mark and that this mark has developed and currently

holds considerable goodwill and value for the Complainant, its members, and

its clients, including the State of Hawaii.

In order to benefit from

and further augment the substantial goodwill and recognition associated with

its "GOHAWAII" mark, the Complainant decided to use <gohawaii.com>

as the primary domain name for its website. On January 4, 1997, the Complainant

acquired the domain name <gohawaii.com> from its marketing agency, who

had registered the name on the Complainant’s behalf. The Complainant’s <gohawaii.com>

website is successful and heavily frequented.

In October 1997, as part

of the membership application process, the Complainant received from the Respondent's

president the information to be used in its listing. This information included

a hypertext link to be placed on the Complainant’s <gohawaii.com> website

that would direct people to Hawaiian Vacations’ <gohawaiianvacations.com>

website. On August 3, 2000, the Complainant faxed to Hawaiian Vacations a form

entitled "Update 2001". This form asked the Respondent to update its

listing information so that any changes could be included in the upcoming 2001

Complainant publications. This form referred to the Complainant’s <gohawaii.com>

website seven times on two different pages. On October 2, 2000, the Respondent

signed and returned the form to the Complainant.

The Respondent became the

registrant of <gohawaii.biz> on November 7, 2001.

The Complainant never received

any notice from VeriSign that there was any problem with their request to register

<gohawaii.biz>. The Complainant believed that VeriSign would handle the

<gohawaii.biz> registration request. The Complainant continued to believe

this until November 12, 2001, when the Complainant searched the WhoIs database

and learned that the Respondent had successfully registered <gohawaii.biz>.

On November 21, 2001, the

Complainant sent a letter to the Respondent asking that Hawaiian Vacations cease

use of <gohawaii.biz> and transfer this Domain Name to the Complainant.

The letter offered to reimburse the Respondent for its costs of registering

<gohawaii.biz> as well as the cost of registering a replacement domain

name. In addition, the letter clearly advised the Respondent that the registration

of <gohawaii.biz> infringed upon the Complainant’s rights in the "GOHAWAII"

mark.

In an e-mail dated December

1, 2001 and sent on December 3, 2001, the Respondent responded by arguing, inter

alia, that it was unaware that the Complainant was using the "GOHAWAII"

mark in its marketing efforts or <gohawaii.com> as the primary domain

name for the Complainant’s website. The Respondent offered to transfer <gohawaii.biz>

to the Complainant in exchange for the following: (1) lifetime membership at

no cost; (2) 15 links within the Complainant website to the Respondent website

at no cost for an indefinite period; and (3) prominent placement of the Respondent's

logo, along with a link to the Respondent website, on each island home page

on the Complainant website at no cost.

On December 4, 2001, the

Complainant rejected the Respondent's offer and again advised them that it was

infringing the Complainant’s trademark rights. The Complainant repeated its

offer to reimburse the Respondents for their reasonable cost of registering

the Domain Name and a replacement domain name in exchange for the transfer of

the Domain Name.

On December 14, 2001, the

Respondent responded by demanding a free 20-year membership for the transfer

of <gohawaii.biz>. On December 17, 2001, the Complainant rejected the

Respondent's counteroffer. On December 18, 2001, the Respondent asserted that

although it did not yet have control over <gohawaii.biz>, once it acquired

such control it would terminate its registration of <gohawaii.biz> such

that anyone would be able to register the Domain Name. Since December 18, 2001,

the Complainant has received no further communications from the Respondent regarding

the Domain Name.

The Complainant further

comments that the Domain Name currently does not resolve into an active website.

Instead, the Domain Name resolves into a generic "Under Construction"

webpage.

B. Respondent

The Respondent says it

understands the Complainant's position in attempting to obtain the Domain Name

and agrees that the Complainant should have possession of the Domain Name, but

at the same time it disagrees with the manner in which the Complainant is trying

to acquire it.

The Respondent asserts

that it advised the Complainant in November of 2001 that it had registered the

Domain Name. The Respondent claims to have pointed out to the Complainant that

the Respondent itself uses the word "Go" in its domain name to drive

visitors to its site.

The Respondent states that

it made it quite clear to the Complainant from the onset that it would transfer

the Domain Name to it without cancelling the name once it was migrated to its

account. The Respondent believed that it had been fair by offering alternatives

and believed that the Domain Name could be picked up by a third party which

could be used in a detrimental manner.

The Respondent provides

a detailed explanation of the registration and transfer of the Domain Name.

It also asserts that the Complainant was not diligent in pursuing other available

remedies.

Significantly, the Respondent

does not dispute that the Complainant is entitled to the Domain Name.

6. Discussion and Findings

Para. 4(a) of the Policy

requires that The Complainant must prove each of the following:

- The Domain Name is

identical or confusingly similar to a trade mark or service mark in which the

Complainant has rights; and

- The Respondent has

no right or legitimate interest in respect of the Domain Name; and

- The Domain Name has

been registered and is being used in bad faith.

Para. 4(b) of the Policy

sets out four illustrative circumstances that, if proved, constitute evidence

of bad faith as required by para. 4(a)(iii) referred to above.

Para. 4(c) of the Policy

sets out three illustrative circumstances that, if proved, constitute evidence

of a right or legitimate interest as described in para. 4(a)(ii) referred to

above.

Domain Name Identical or

Similar

It is readily apparent

from the evidence that the Complainant has registered and used the trade mark

and name GOHAWAII, both in its home state of Hawaii and elsewhere. While the

Respondent has used the term "Go" it does not dispute that the Complainant has

valid and protectable rights in the GOHAWAII trade mark and name.

Clearly the Domain Name

is either identical or confusingly similar to the Domain Name and it is one

in which the Complainant asserts rights and in which the Respondent does not

dispute such rights.

Accordingly the first ground

is made out.

Respondent has no Right

or Legitimate Interest

Leaving aside the discussion

about the means by which the Respondent obtained registration of the Domain

Name and the suggestion that the Complainant did not avail itself of all available

remedies, the situation seems, on the evidence, that the Complainant asserts

a right in the Domain Name and the Respondent seems to accept this claim.

The Respondent seems to

be saying that it was seeking to obtain and then transfer the Domain Name in

the best interests of the Complainant and that it itself saw benefit in linking

to the Complainant's website.

The Respondent, by so acting

and in effectively agreeing that the Domain Name should be transferred to the

Complainant illustrates it has no legitimate basis for registering and using

the Domain Name. Indeed, its actions suggest that it has no legitimate interest

or right in the Domain Name, hence its agreement to transfer the Domain Name

to the Complainant. On this basis and in the absence of any other reasons advanced

by the Respondent, the Complainant makes out this ground.

Domain Name Registered

and Being Used in Bad Faith

Given the above concessions

and findings of fact it is hard to see on what basis the Respondent might succeed

in opposing this ground. Further, given the closely related areas in which the

Complainant and the Respondent operate it is reasonable to infer that the Respondent

must have known of the Complainant's interest in and claim to the GOHAWAII trade

mark and name at the date it sought to register the Domain Name.

Further, the Respondent

has, on the uncontradicted evidence, sought to extract from the Complainant

an unwarranted and significant advantage. That is, a life time membership and

links to the Complainant's website at no cost and for an indefinite period.

The Respondent does not dispute this and this being so it is found that such

conduct amounts to use of the Domain Name in bad faith.

On this basis the ground

is made out.

7. Decision

Therefore, and in consideration

to the Complaint’s compliance with the formal requirements for this domain dispute

proceeding, to the factual evidence and legal contentions that were submitted,

to the confirmation of the presence of each of the elements contemplated in

Paragraph 4(a)(i), (ii), and (iii) of the Policy, and on the basis of the statements

and documents submitted and in accordance with the Policy, the Rules and other

applicable rules and principles of law, as directed by paragraph 15(a) of the

Rules, it is found:

(1) that the Domain

Name is confusingly similar to The Complainant’s GOHAWAII trademark.

(2) that the Respondent

has no rights or legitimate interests in respect of the Domain Name; and

(3) that the Domain

Name has been registered and is being used in bad faith by the Respondent.

Therefore, the Panel requires,

pursuant to what is provided for under the Policy, that the Domain Name be transferred

to the Complainant.

Clive L.

Elliott

Sole Panelist

Dated: July

8, 2002

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• Hawaii Visitors & Convention Bureau — D2001-1467 · Terminated