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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Action Sports Maui LLC v. Domain Discreet, Kimo Harlacher

Case No. D2009-1146

1. The Parties

Complainant is Action Sports Maui LLC of Kihei, Hawaii, United States of America, represented by the law firm Paul Johnson Park & Niles, United States.

Respondents are Domain Discreet of Funchal, Madeira, Portugal and Kimo Harlacher of Lahaina, Hawaii, United States. Mr. Harlacher has submitted a Response. Domain Discreet was a privacy service utilized by Mr. Harlacher; the real party in interest; for simplicity the Panel will refer to both named Respondents as "Respondent", singular.

2. The Domain Names and Registrar

The following disputed domain names are all registered with Register.com:

<actionsportmaui.com>

<actionsportskiteboarding.com>

<actionsportskitesurfing.com>

<actionsportswindsurfing.com>

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 28, 2009. On August 28, 2009, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain names. On that same day, Register.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 2, 2009, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 2, 2009.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2009. Respondent filed his Response with the Center on September 28, 2009.

The Center appointed Richard G. Lyon as the sole panelist in this matter on October 5, 2009. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On October 6, 2009, Complainant sent an email message to the Center, inquiring "Would the panel consider a response submitted by Complainant?" The Center replied that it would refer this request to the Panel. At the Panel`s request the Center notified the parties on October 6, 2009, that "The Panel has reviewed each party`s submissions and has determined that no extraordinary circumstances exist that might justify a supplemental filing by Complainant. See Mani Brothers, LLC v. Lincoln Gasking, WIPO Case No. D2008-0097. Complainant`s request to submit a ‘response` is therefore denied."

4. Factual Background

Both parties to this proceeding provide tourists the opportunity to engage in outdoor sports on the island of Maui, State of Hawaii, United States of America. These sports include surfing, windsurfing, kiteboarding, kitesurfin, and others. Each party provides equipment rental, training and lessons, and guide services for these activities.

Complainant has operated its business under the name Action Sports Maui since 1999. Complainant filed for a registration for a trademark of the phrase ACTION SPORTS MAUI with the United States Patent and Trademark Office (USPTO) in September 1999. This application was subject to an office action by the USPTO indicating that the mark could not be registered because it consisted merely of a description of the services provided and the location at which they were provided; following this office action. Complainant abandoned this trademark application. In May 2009 Complainant filed a second trademark application with the USPTO, this time for Action Sports Maui and a design; this second application is currently pending in the USPTO. Complainant`s main web site since 1999 has been <actionsportsmaui.com>.

Respondent was established in 2003 and has since that time provided its services under the name Aqua Sports Maui. One of Respondent`s first employees was a former employee of Complainant or Complainant`s founder. Respondent`s main web site for its outdoor sports is <mauikiteboardinglessons.com>. Respondent owns and operates several other tourist-oriented businesses on the island of Maui.

This proceeding is not the first dispute between the parties, not even the first involving a domain name. A principal of Complainant registered <aquasportsmaui.com> in June 2006. The pleadings and evidence in this case include several communications between the parties regarding the domain names disputed in this proceeding, the <aquasportsmaui.com> domain name, and other matters. There is no evidence in the record that the parties have been involved in litigation between themselves.

Respondent registered the disputed domain names in October 2007, and they initially resolved to a website advertising the services of Aqua Sports Maui, as did they when accessed by the Panel.

5. Parties` Contentions

A. Complainant

Complainant contends as follows:

1. Complainant has rights in the phrase Action Sports Maui sufficient to invoke the Policy by reason of its prominent use of this phrase to identify its business since 1999. Complainant has also used this phrase in its principal website since 1999. Each of the disputed domain names includes this phrase as its principal component and is therefore confusingly similar to Complainant`s mark.

2. Complainant has never authorized Respondent to use its marks and Respondent has never been commonly known by the phrase Action Sports Maui. Respondent`s use of the disputed domain names has been to divert Internet users seeking Complainant to websites controlled by Respondent, one of Complainant`s competitors. Such use is not bona fide or legitimate under the Policy.

3. For the same reasons, Respondent`s use of the disputed domain names has been in bad faith, as specifically condemned by paragraph 4(b)(iv) of the Policy. As this use has been continuous since Respondent`s registration of the disputed domain names, registration of each of them was made in bad faith.

B. Respondent

Respondent contends as follows:

1. Complainant lacks enforceable rights in the phrase Action Sports Maui and therefore may not use the phrase as the basis for a Policy proceeding. Complainant`s trademark application was denied or about to be denied by the USPTO because of its descriptive nature, and later withdrawn. Many other companies use these three words in some combination for various goods and services.

2. Respondent`s use of the disputed domain names is legitimate under paragraph 4(a)(ii) of the Policy because Respondent offers genuine services there. Its services are not directly competitive with those of Complainant and Respondent offers many other services at its websites that Complainant does not offer. The phrase Action Sports Maui describes Respondent`s business as accurately as it does Complainant`s; Action Sports is a descriptive or generic term to which neither Complainant nor any other provider of action sports is granted exclusive use. Respondent has received permission from the holder of companies named Action Sports for use of that term in Respondent`s businesses and promotion.

3. Respondent`s registration and use have similarly not been in bad faith. "The disputed domain names and trademark/word mark/service mark were not clearly registered by either Complainant or Respondent at the time the disputed domain names were registered." Since the phrase is descriptive term, Respondent is entitled to use the phrase in a domain name used in its action sports business.

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy has two elements. Complainant must establish that it holds a mark, and that the disputed domain names are identical to or confusingly similar to that mark. It is well established under the Policy that a trademark or service mark need not be registered to enable its owner to base a UDRP proceeding upon it. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions (WIPO Overview). paragraph 1.7: "Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services."

Complainant here has clearly met that standard, as it has provided uncontested evidence that it has operated under the name ACTION SPORTS MAUI for a decade. For purposes of paragraph 4(a)(i), that is enough even if the mark never matures to registered trademark status; in fact the mark may be not susceptible of registration at all and still be used for a Policy proceeding. Salt River Community Gaming Enterprises (d/b/a Casino Arizona) v. Fort McDowell Casino, WIPO Case No. D2007-0416; Memorydealers.com, Inc. v. Dave Talebi, WIPO Case No. D2004-0409; James Good o/a Pornreports.com v. Mark Anderson, WIPO Case No. D2004-0391; Teresa Christie, d/b/a The Mackinac Island Florist v. James Porcaro d/b/a Weber`s Mackinac Island Florist, WIPO Case No. D2001-0653. Especially is that so when as here Respondent was well aware of Complainant and its use of the mark. Paul McMann v. J McEachern, WIPO Case No. D2007-1597.

As each of the disputed domain names includes Complainant`s mark as its principal feature, for purposes of the Policy they are confusingly similar. Complainant has established this Policy limb.

B. Rights or Legitimate Interests

Complainant has not authorized Respondent to use the disputed domain names, and (other than his registration and use of the disputed domain names) Respondent has provided no evidence that it has used the phrase ACTION SPORTS MAUI in the trademark sense - to identify its business. Respondent claims two bases for legitimacy. First, he claims to have been granted permission to use the phrase ACTION SPORTS MAUI by owners of companies (other than Complainant) whose names include the phrase or who hold registered marks that include the phrase. That argument misses the point; what Respondent needs to establish is use of that phrase to identify, not merely describe, his Aqua Sports Maui business. In the words of paragraph 4(c)(ii) of the Policy, what must be shown is that Respondent "[has] been commonly known" by that name. (Emphasis supplied.) This distinction is discussed at greater length in Julie & Jason, Inc. d/b/a The Mah Jongg Maven v. Faye Scher d/b/a Where the Winds Blow, WIPO Case No. D2005-0073, a case in which the panel dismissed an argument directly analogous to the contention made by Respondent here. Nothing in the over-large record in this proceeding indicates any use by Respondent of the phrase Action Sports Maui as a business identifier; indeed Respondent`s only claimed expense for use of that phrase refers to an amount spent to require and maintain the disputed domain names. Respondent remains free to describe his business as including action sports; what the Policy prevents is appropriating Complainant`s mark for his Internet address.

Respondent`s second argument is that Action Sports Maui is "a ‘generic term` (see Annex 12) and therefore is not protectable, especially in the way the complainant/his lawyer asserts it to be, according to the USPTO." That contention applies more directly to paragraph 4(a)(i), where the Panel has noted that it is directly contrary to longstanding Policy precedent. Merely because a mark includes or consists of common words does not ipso facto legitimate Respondent`s use of it in the disputed domain names. In this proceeding, as in the Mackinac Island case, supra:

"Respondent does not use a name corresponding to the Domain Names, is not commonly known by the Domain Names, and is not making a legitimate noncommercial or fair use of the Domain Names. The evidence shows that the Respondent is a competitor of the Complainant and well aware of the Complainant`s use of the mark in question, and, as discussed below, gives rise to a conclusion that the Respondent`s use of the mark was not fair use but in bad faith."

Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Complainant has similarly proven that Respondent registered and used the disputed domain names in bad faith as that term has been defined by panels under the Policy. Respondent was well aware of Complainant and its business name when he registered the disputed domain names, and he immediately put them to use to resolve to Respondent`s website at which Respondent offers competitive services. Despite his rote denial of being Complainant`s competitor, Respondent does acknowledge what is obvious from the evidence, that Complainant`s business, Action Sports Maui, competes directly with Respondent for customers on Maui interested in surfing, kiteboarding, and similar sports.<sup>1</sup> As Complainant argues, this constitutes bad faith under section 4(b)(iv) of the Policy: "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant`s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names listed below be transferred to the Complainant:

<actionsportmaui.com>

<actionsportskiteboarding.com>

<actionsportskitesurfing.com>

<actionsportswindsurfing.com>

Richard G. Lyon
Sole Panelist

Dated: October 8, 2009