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Hawaii Visitors & Convention Bureau v. Hawaiian Vacations [2002] GENDND 1063 (8 July 2002)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Hawaii Visitors & Convention Bureau v. Hawaiian Vacations

Case No. D2002-0488

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, 8^th 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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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