Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Maui Land and Pineapple Co., Inc. and Kapalua Land Co., Ltd , Kahului, Maui, HI, USA ("Complainant") represented by Craig Nakamura. The Respondent is Sullivan Properties, Inc., Lahaina, HI, USA ("Respondent") represented by Margaret Jenkins-Leong, Goodsill, Anderson, Quinn & Stifel.

The domain names at issue are kapalua.net, and kapalua.com, registered with Network Solutions.

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

James Alan Crary as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on August 31, 2000; The Forum received a hard copy of the Complaint on September 5, 2000.

On September 6, 2000, Network Solutions confirmed by e-mail to The Forum that the domain names kapalua.net, and kapalua.com are registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0;5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On September 7, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 27, 2000 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 postmaster@kapalua.net, and postmaster@kapalua.com by e-mail.

On October 26, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed James Alan Crary as Panelist.

A response was submitted together with exhibits on October 16, 2000. The Complainant submitted a document entitled Complainant’s Domain Name Dispute Supplemental Statement. This was submitted without the $150 fee provided by the National Arbitration Forum Rules, Rule 7. The Respondent also submitted additional materials after paying the fee called in the supplemental rules.

In accordance with the Rules For Uniform Domain Name Dispute Resolution Policy, hereinafter the "Policy Rules", Rule 12, the Panel at its sole discretion may request further statements or documents in addition to the complaint and the response. Although not requested by the Panel in this case, discretion was exercised in favor of considering both supplemental writings submitted by the parties.

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

A. Complainant

The Complainant is a diversified land company, which dates back to 1909. It has developed a resort on the island of Maui in Hawaii.

It was alleged that the name "KAPALUA" was coined by Complainant for its resort. Although "Kapalua" was Hawaiian in origin this word was not an existing Hawaiian name or word it was also not the known geographic name for the location of the resort. It incorporated Kapalua Land Company in January 1975 for the purpose of developing the Kapalua resort.

Complainant registered numerous trade names in 1975 which incorporated "Kapalua" as part of the registered name. A total of 94 trademark registrations using the Kapalua trade name are registered with the state of Hawaii. Its unique logo was registered with the United States Patent and Trademark Office in January 1977.

The firm employs some 475 employees, the resort operations whose subsidiary businesses include a real estate sales office called Kapalua Realty.

The Respondent operates a general real estate brokerage business engaged in real estate sales and management of vacation rentals in west Maui.

Respondent registered the name kapalua.com on June 27, 1995 and kapalua.net on November 30, 1998.

Complainants subsidiary Kapalua Land Company has registered a variety of domain names which incorporate Kapalua as part of the domain name but could not register kapalua.com since it was precluded due to the Respondent’s previous registration. Respondent had never been known by the name "Kapalua" nor was it located in the Kapalua resort.

Respondent’s kapalua.com site contains materials relating to a golfing event that was directly copied from Respondent’s brochures and promotional materials. Nowhere on those pages was there any reference to Respondent’s business. The web site included a reference "Kapalua villas" which led web users to vacation rental properties at the Kapalua resort which were managed by Respondent. An Internet user entering the site would believe that the accommodations that they were choosing were being managed by Complainant’s subsidiary. This obstructed Complainant’s efforts to sell and rent properties in the Kapalua resort.

The Complainant alleged that Respondent’s domain names are identical to Complainant’s Trade name. Respondent knew or should have known that Complainant would dispute the registrations of Kapalua as domain names. At the time it has been using the Kapalua name for over 20 years. Respondent, who had been in the real estate business in that area for 7 years, was well aware of Complainant’s use of the name for their resort.

Respondent was known as Sullivan Properties and not known by the name Kapalua. It was alleged that Respondent’s were not using the domain name in connection with a bona fide offering of goods or services nor were they making a noncommercial or fair use of the site.

Respondent sought to profit from its registration by offering competing services and trading upon the image associated with the Kapalua name. Respondents intended to misleadingly divert consumers to their site by using Complainants name. By registering the two domain names Respondent evidenced intent to prevent the Complainants from using the trade name and a pattern of conduct to do so.

Respondent registered the domain name primarily for the purpose of disrupting the Complainants business by creating a likelihood of confusion with the Complainant’s mark as to the source of Respondent’s web site.

Finally it was maintained that Respondents registered the domain names intentionally to attract Internet users to their web site for commercial gain based on Respondents experience in the real estate business. Respondent knew that there would be confusion between the two companies intentionally diverting customers of the Complainant to Respondent’s web site causing Complainant to loose customers and suffer injury to it’s business.

B. Respondent

Respondent is a general real estate and management firm specializing in the sale of luxury condominiums and residential properties in west Maui Hawaii. It also offers condominium for vacation rentals in that area. A substantial portion of its business is devoted to the resale of units in the Kapalua area. Respondent has conducted business in the state of Hawaii since 1979. Kapalua is a popular resort area on the island of Maui located near Kapalua Bay.

A number of resorts and businesses currently use "Kapalua" as part of their business name, including 16 businesses unrelated to the Complainants business operations. "Kapalua" is a registered mark belonging to Kapalua Strickwaren GmbH L. L. C. of Hamburg, Germany. Complainants have not registered "Kapalua" as a trade name with the United States Patent and Trademark Office but two other entities have.

Respondents maintained that it chose the domain names to attract individuals seeking to rent or buy properties in the Kapalua area. The kapalua.com web site had been operated continuously since June 1995 providing information about Complainants listing for sale or rent as well as general information regarding attractions on Maui. The home page clearly identified Respondent and there was no claim of connection to the Complainant.

Respondent maintained that Complainant could not overcome the fact that Kapalua is a geographic location, which Respondent had a clear and legitimate interest in promoting. Because "Kapalua" is a primarily geographically descriptive mark when applied to Complainant’s properties located in Kapalua, Hawaii. Complainant does not have the right to exclude others from using it in a non-trademark sense to refer to the geographic area in question. The area in west Maui has been referred to as Kapalua as early as the 1950s.

Respondent maintained the geographic descriptive marks do not accrue rights that may be enforced against good faith users unless they have attained secondary meaning although registration of a geographic mark with the United States Patent and Trademark Office may raise a presumption of secondary meaning, Complainant had not obtained federal registration for the "Kapalua" word mark for use for hotel and resort services. The Kapalua name was not exclusively associated with Complainant’s properties; there were multiple users of the Kapalua name.

Respondent asserted that Complainant had not acted promptly upon discovering the registration of kapalua.net and kapalua.com. It was asserted that Complainant became aware of Respondent’s registration in August 1996 but did not take steps to protect its trade name. Respondent had not used the domain name to convince the public that it was affiliated with Complainant. The web site clearly identified Respondent as the owner and origin of the web site which it used to promote the geographic location of the properties it rents and sells.

Respondent had a legitimate need to use "Kapalua" in order to describe its listed properties and to attract prospective customers seeking properties in Kapalua, Maui.

Respondent admitted that inadvertently Respondents web page designer copied information that had been developed by Complainant in connection with the golf tournament on its web site. When Respondent learned that the information was lifted verbatim from Complainant’s own web site the information was immediately removed. The material copied included information regarding how to contact Complainant to purchase tickets for the event.

Respondent denied bad faith use. The domain names were acquired to attract customers to its real estate listings in Kapalua, Maui. The domain names were not for sale although a sale at one time was contemplated in connection with settlement negotiations between the parties.

Respondent did not engage in a pattern of abusive domain name registrations. It’s registration of two domain names could not be construed as a pattern of conduct.

At the time registration Complainant was not using the Internet to promote comparable services. There was no business to disrupt. The web site home page clearly identified itself as being sponsored by Respondent who was in the business of real estate and not a proprietor of a resort hotel or condominium development. Finally it was maintained that the Complainant was tardy, waiting four years to file a complaint during which time the Respondent had expended considerable resources developing goodwill under the kapalua.com name.

1. The word "Kapalua" describes a geographic place location.

2. The Complainant is the owner and developer of various resort properties on west Maui, Hawaii.

3. The Complainant has registered 94 variations of the Kapalua trademark with the state of Hawaii, and has registered its Kapalua logo with the United States Patent and Trademark Office.

4. Respondent is engaged in general real estate brokerage including sale and management of vacation rentals in west Maui as well as the Kapalua Resort.

The fundamental factual issue between the parties is whether, as Respondent claims, Kapalua designates a preexisting geographic location on Maui, Hawaii or was essentially a term coming from the Hawaiian language which took on meaning as a result of Complainant’s efforts in developing a resort property on west Maui, Hawaii. Considering all the evidence and the contentions of the parties it was concluded that "Kapalua" is a geographic place name, descriptive in nature of the vicinity of Complainant’s resort. Exhibit G shows that "Kapalua" appearing on a U. S. Geological Survey map dating back to the 1950s which shows that the vicinity identified by the parties on west Maui. This evidence was considered more compelling than Complainants assertion that it coined the name "Kapalua" and that the word "Kapalua" was not an existing Hawaiian word or name and not the known geographic name for the location of the resort.

The Panelist notes that a standard geographic atlas National Geographic Atlas of the World, fourth edition, National Geographic Society (1975) at pp. 252 has a general index listing as follows: "Kapalua Beach, Maui, Hawaii". The map is found at pp. 43, which locates Kapalua Beach in the same, vicinity as identified by Complainant and Respondent. It was concluded that Respondent’s contention that the disputed domain name "Kapalua" is a bona fide geographic descriptive word was supported by the greater weight of the evidence.

The evidence supports a finding that the Complainant has Trademark rights both by virtue of its registrations and by virtue of common law. Complainants trademark is founded on a geographic place name, descriptive in nature and does not afford Complainant exclusive right to the use of the disputed name. A stronger case could be made by Complainant were the Respondent a direct competitor to Complainant in the resort business. The Respondent as a general real estate broker does business in real estate sales and rentals in west Maui, in Kapalua. The Complainant is a real estate and resort developer.

Respondent correctly points out that the evidence supports a finding that there were multiple users of the Kapalua name rather than an exclusive identification with the Complainant. Unrelated entities currently use Kapalua as part of their business names. A German firm registered Kapalua in connection with its clothing business. There are two other pending registrations for the United States and Patent Trademark Office as well. While it may be that Kapalua Resort is well known in the resort field, the evidence did not indicate that "Kapalua" had acquired secondary meaning for trademark protection purposes.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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.

The disputed domain names kapalua.com and kapalua.net are identical to Complainant’s trademark, Kapalua. The Complainant has rights in the registered trademark Kapalua. See internetamericainc v. internetamerica, D2000-0355 (WIPO) June 19, 2000. Finding that the domain name internetamerica.com is identical to Complainant’s mark. Complainant is satisfied the first element necessary to establish an abusive domain name registration under the Policy.

Paragraph 4(c) of the Uniform Domain Name Dispute Resolution Policy (The "Policy") sets forth circumstances which if established by the evidence demonstrates rights and legitimate interests to the domain name for the purposes of Paragraph 4(a)(ii). The circumstances include: (i) before any notice to you of the dispute, your use of or demonstratable preparations for use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

The Respondent registered the domain name kapalua.com on June 27, 1995 and two years later registered kapalua.net. Since that time it has operated the kapalua.com web site which provides information related to the Respondent’s real estate sales and rental business. The site clearly identifies itself as a real estate sales site associated with the Respondents real estate sales and rental business.

Based on the record it was concluded that Respondent’s was fully operational long before the dispute arose in November/December 1998. The dispute apparently simmering until commencement proceedings herein.

The Panel concluded that the circumstances of this case support a finding that Respondent had rights and legitimate interests with respect to the domain name under Policy 4(c)(i).

Since it was concluded that the Respondent has rights and legitimate interests in the disputed domain name, it was unnecessary to consider whether there was registration and use in bad faith. Since the Policy requires that Complainant establish each of the three elements under Paragraph 4(a) of the Policy.

It was concluded Complainant failed to establish an abusive domain name registration within the meaning of Section 4(a) of the Policy and thus was not entitled to relief under Section 4(i) of the Policy, it is therefore ordered that the Respondent retain the disputed domain names kapalua.com and kapalua.net.