START-UP TRADEMARK OPPOSITION POLICY

DECISION

Aloha Petroleum Ltd. v. CustomWeather Inc.

Claim Number: FA0205000114417

PARTIES

Complainant is Aloha Petroleum Ltd., Honolulu, HI (“Complainant”) represented by Martin Hsia, of Cades Schutte Fleming & Wright.  Respondent is CustomWeather Inc., San Francisco, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <aloha.biz>, registered with Corporate Domains, Inc.

PANEL

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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).

Complainant submitted a Complaint to the Forum electronically on May 24, 2002; the Forum received a hard copy of the Complaint on May 24, 2002. Complainant submitted an Additional Submission to the Forum on June 6, 2002.

On May 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 19, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 17, 2002, pursuant to STOP Rule 6(b), the Forum appointed Judge Harold Kalina (Ret.) as the single 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 STOP Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s <aloha.biz> domain name is identical to Complainant’s registered ALOHA mark.

2. Respondent does not have any rights or legitimate interests in respect of the <aloha.biz> domain name.

3. Respondent registered the <aloha.biz> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns U.S. Patent and Trademark Office (“USPTO”) Reg. No. 2,547,377 for its ALOHA mark registered and listed on the Principal Register on March 12, 2002. Complainant’s ALOHA mark was filed with the USPTO on August 2, 2001 for retail gasoline supply services. Also, Complainant holds numerous other trademark registrations in the state of Hawaii that incorporate the ALOHA mark (e.g., ALOHA WINDWARD SERVICE, ALOHA KAPAHULU, and ALOHA WAIANAE, among others). Complainant has used its ALOHA mark in commerce since 1977.

Respondent registered <aloha.biz> on March 27, 2002. Complainant’s investigation revealed that Respondent is a Delaware corporation with its principal place of business in California, and is engaged in the business of providing custom weather forecasts and weather maps. Respondent is not an authorized or licensed agent of Complainant. Complainant’s Additional Submission indicates that Respondent may be having difficulty with its registrar, Enom.com, where Enom.com has registered several domain names to Respondent without Respondent’s knowledge.

DISCUSSION

Paragraph 15(a) of the STOP 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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.

Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.

Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (“IP”) claim form.  Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights.  The existence of the “.biz” generic top-level domain (“gTLD”) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.

Complainant’s Rights in the Mark

Complainant has established rights in the ALOHA mark through registration with the USPTO and continuous use of the mark since 1977.

Respondent’s <aloha.biz> domain name is identical to Complainant’s registered ALOHA mark. Respondent’s domain name emulates Complainant’s mark in its entirety, mirroring it in spelling and form. Respondent’s domain name deviates from Complainant’s mark only with the inconsequential addition of the gTLD “.biz.”

Accordingly, the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding. Therefore, it is presumed that Respondent lacks rights and legitimate interests in the <aloha.biz> domain name. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Furthermore, because Respondent failed to submit a Response in this proceeding, the Panel is permitted to make all reasonable inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Complainant failed to locate any information that would suggest Respondent is the owner or beneficiary of a trademark or service mark that is identical to the disputed domain name pursuant to STOP Policy ¶ 4(c)(i). Also, Respondent has not provided this Panel with any evidence that would suggest it owns a trademark or service mark that reflects the ALOHA moniker. See Nat’l Acad. of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that, because Respondent did not come forward with a Response, the Panel could infer that it had no trademark or service marks identical to <grammy.biz> and therefore had no rights or legitimate interests in the domain name).

Respondent has yet to develop a purpose for the disputed domain name and has not provided any evidence showing any demonstrable preparations to use <aloha.biz> in connection with a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii). Respondent has the burden of producing credible evidence that it registered <aloha.biz> for a legitimate purpose. Respondent’s failure to support its registration with evidence signifying some right or legitimate interest in the disputed domain name implies that Respondent has none. See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the Respondent to demonstrate that it has rights or legitimate interests); see also Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that in order to show rights or legitimate interests in the disputed domain name Respondent must establish with valid evidence “a course of business under the name, or at least significant preparation for use of the name prior to learning of the possibility of a conflict” with an IP Claimant).

Complainant’s investigation also revealed that Respondent is located in Texas and is involved with providing consumers personalized weather forecasts. Respondent’s disputed domain name incorporates the ALOHA mark, a word uniquely associated with Hawaii and its people which most often is associated with the words “hello,” “goodbye” and “love.” There is no apparent connection between Respondent’s weather forecasting service and the ALOHA mark. Furthermore, Complainant’s investigation failed to produce any evidence that Respondent is commonly known by its <aloha.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).

Accordingly, the Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.

Registration or Use in Bad Faith

The criteria specified in ¶ 4(b) of the STOP Policy do not represent an exhaustive list of bad faith evidence. The Panel must take into consideration the totality of circumstances in order to determine if Respondent registered or used the domain name in bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).

Because Complainant’s ALOHA mark is listed on the USPTO’s Principal Register and due to the nature of NeuLevel’s STOP IP claim registration procedure, Respondent had notice of Complainant’s preexisting rights in the ALOHA mark. Respondent’s subsequent registration of the infringing <aloha.biz> domain name, despite knowledge of Complainant’s rights in the ALOHA mark, represents bad faith registration under STOP Policy ¶ 4(a)(iii). See Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also Valspar Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002) (“Respondent was on notice of Complainant’s rights in PAINT.BIZ when it registered the disputed domain name, because Respondent received notice of Complainant’s IP Claim.  Respondent’s registration of the disputed domain name despite this notice when Respondent had no right or legitimate interest in the domain name is evidence of bad faith”).

Furthermore, Respondent registered an infringing domain name that incorporates Complainant’s ALOHA mark in its entirety in the second level domain. Respondent’s lack of rights or legitimate interests in the <aloha.biz> domain name and knowledge of Complainant’s preexisting rights implies that Respondent registered the disputed domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name. Respondent’s actions represent bad faith registration under STOP Policy ¶ 4(b)(ii). See Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of a domain name goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services: it prevents the trade mark owner from reflecting that mark in a corresponding domain name”); see also  Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy ¶ 4(b)(ii), noting that it was reasonable to conclude Respondent registered <peachtree.biz> with the intent to prevent Complainant from reflecting its PEACHTREE mark in a corresponding domain name, given Respondent's knowledge of Complainant's mark and Respondent's lack of rights or interests in the mark).

The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the STOP Policy, the Panel concludes that relief should be hereby GRANTED.

Accordingly, it is Ordered that the <aloha.biz> domain name be TRANSFERRED from Respondent to Complainant, and that subsequent challenges under the STOP Policy against this domain name SHALL NOT be permitted.

                                                                                         Judge Harold Kalina (Ret.), Panelist

                                                                                                Dated:  July 31, 2002

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