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Association of Apartment Owners of Mauna Luan, Inc. v. Jerome Ranos [2004] GENDND 54 (20 January 2004)
CPR Institute for Dispute Resolution
Under the ICANN Uniform Domain Name Dispute
Resolution Policy
366 Madison Avenue • New York, NY 10017-3122
• Tel. (212) 949-6490 • Fax (212) 949-8859 • cprneutrals@cpradr.org • www.cpradr.org
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COMPLAINANT
Association of Apartment Owners of Mauna Luan, Inc.
511 Hahaione Street
Honolulu, HI 96825
Telephone: (808) 395-7544
Fax: (808) 395-7417
E-mail: mauna.luan@verizon.net
vs.
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File Number:
CPR 0323
Date of Commencement: December 2, 2003
| Domain Name(s): |
MAUNALUAN.NET
MAUNALUAN.ORG
MAUNALUAN.COM |
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|
RESPONDENT
Jerome Ranos
521 Hahaione Street 2-8K
Honolulu, HI 96825
Telephone: (808) 395-1584
Fax: n/a
E-mail: 96825jr@earthlink.net
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Registrar: NameSecure Inc.
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Before Thomas M. Pitegoff, Esq., Arbitrator
PROCEDURAL HISTORY
The Complaint was filed with CPR Institute for Dispute Resolution (CPR) on December 2, 2003. After review for
administrative compliance,
CPR served the Complaint on Respondent on December 2, 2003. Respondent filed a
Response on December 24, 2003, two days after it
was due. On January 5, 2004, CPR appointed me as Arbitrator
pursuant to the Uniform Domain Name Dispute Resolution Policy (UDRP)
and the Rules for UDRP (the “Rules”)
promulgated by the Internet Corporation for Domain Names and Numbers (ICANN).
Upon the written submitted record including the Complaint and its attachments, and the Response and its
attachments, I find as
follows:
FINDINGS
Respondent’s domain name, MAUNALUAN.NET, was registered with NameSecure Inc. on July 10, 2003. Respondent’s
domain names, MAUNALUAN.ORG
and MAUNALUAN.COM were registered with NameSecure Inc. on September 13, 2003. In
registering the names with NameSecure Inc., an
ICANN accredited registrar, Respondent agreed to submit to this
forum to resolve any dispute concerning the domain names, pursuant
to the UDRP.
The UDRP provides, at Paragraph 4(a), that each of three findings must be
made in order for a Complainant to prevail:
| i. | Respondent’s domain name must be identical or confusingly similar
to a trademark or service mark in which complainant has rights;
and
|
| |
| ii. | Respondent has no rights or legitimate interests in respect of
the domain name; and
|
| |
| iii. | Respondent’s domain name has been registered and is being
used in bad faith. |
IDENTITY/CONFUSING SIMILARITY
UDRP Paragraph 4(a)(i) calls for a finding that Respondent’s domain name is identical or confusingly similar
to a trademark or service
mark in which the complainant has rights.
Complainant alleges that the domain names MAUNALUAN.NET, MAUNALUAN.ORG and MAUNALUAN.COM are identical or
confusingly similar to
MAUNA LUAN, a distinguishing part of Complainant’s corporate name and a common law
trademark. MAUNA LUAN is a 434-unit, 29 year-old,
self-managed condominium complex that is well-known in Honolulu.
Respondent does not dispute that, with the exception of the “.net”, “.org” and “.com” extensions, the
domain names in dispute are
identical to Complainant’s trademark. However, Respondent argues that (a)
the name Mauna Luan is not a registered trademark; (b)
an internet search returns hundreds of websites
that use Mauna Luan; (c) Mauna is a Hawaiian name for mountain and Luan is a common
Asian name.
Trademark rights can exist through use in commerce, without registration. Registration is not necessary to
establish common law
trademark rights. Complainant has used the mark in commerce continuously for a number of years.
A Google search of Mauna Luan yields many websites that refer to the Mauna Luan condominium complex in Honolulu.
Not one of the
websites that appear on first few pages of this Google search uses Mauna Luan as part of its domain name.
The fact that Mauna Luan means “Mount” Luan in Hawaiian does not change the fact that it is a distinguishing name for
Complainant.
There does not appear to be any question but that Complainant has rights in the mark Mauna Luan.
I therefore conclude that the registered domain name is identical or confusingly similar to Complainant’s
protected mark.
RIGHTS AND LEGITIMATE INTERESTS
Complainant alleges that Respondent has no rights or legitimate interests with respect to the domain name at
issue. In support
for this allegation, Complainant notes that Respondent registered all three domain names at
a time in which he was serving as a
member of the board of directors of Complainant and discussed the website
with the board in terms that initially promised to be
developed as a website of Complainant. In April of 2003,
Respondent was appointed to the board to fill a vacancy created by a director’s
resignation. At a meeting of
the board on July 23, 2003, Respondent presented his idea for a Mauna Luan website for use as a communication
tool with the owners. He said he would provide a website at no cost to Complainant and that he had already
been working on one
as “sort of a hobby.” Because of concerns regarding the sensitive nature of some of the
documents that Respondent wanted to post
on the website, the board of directors decided to proceed slowly in
consultation with legal counsel. The relationship between Respondent
and the rest of the board of directors
deteriorated after that, and Respondent eventually resigned from the board. As the relationship
deteriorated,
Respondent became less cooperative. In late September of 2003, Complainant asked Respondent to assign the
three
domain names to Complainant and Complainant offered to pay Respondent’s costs of registration. Respondent
refused to relinquish
ownership of the domain names.
Respondent notes that as a member of the association of apartment owners, he has a right to use the domain name
MAUNALUAN.NET as
a “meeting place” for apartment owners. At the request of the board, he placed a clear notice
on his website stating that it is
not the official website for the Mauna Luan. Respondent also informed the
board that other domain names were available for registration,
including mauna-luan.com and several others.
In addition, Respondent states that on October 29, 2003, he offered to assign to Complainant the domain name
MAUNALUAN.ORG. Claimant
accepted this offer by letter of November 4, 2003, and requested Complainant to assign
ownership of the other two domain names as
well. Respondent then refused to transfer any of the three domain
names to Complainant, saying that his refusal was due to the
“hostile tone” of the board’s “condescending” reply.
The reply strikes me as businesslike and serious, but not hostile or condescending.
UDRP Paragraph 4(c) provides that Respondent’s rights or legitimate interests in a domain name may be demonstrated,
without limitation,
by showing that (a) before notice to Respondent of the dispute, Respondent has used, or made
demonstrable preparations to use, the
domain name or a name corresponding to the domain name in connection with a
bona fide offering of goods or services; or (b) Respondent
has been commonly known by the domain name; or (c)
Respondent is making legitimate noncommercial or fair use of the domain name,
without intent for commercial
gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent registered all three disputed domain names at a time when he was a member of the board of directors of
Complainant and
the board was actually discussing the establishment of a website. The board rightfully expected
that Respondent, as a board member,
was acting and would act on behalf of Complainant and in the best interests of
Complainant, that initial ownership by Respondent
would be temporary and that ownership of the domain names would
be assigned to Complainant. In this circumstance, and in light
of the fact that Respondent included a commercial
classified section on the website, Respondent’s use of the domain names cannot
be considered fair use.
Respondent does have the right to use name of the community in which he lives. However, he does not necessarily
have the right
to use that name as the domain name of his personal website.
I therefore conclude that Respondent does not have rights or legitimate interests with respect to the domain names
at issue.
BAD FAITH
In support of the contention of Respondent’s bad faith registration and use, Complainant notes that Respondent
did not cooperate
with the board’s decisions regarding the initial posting of the website. At a meeting on
August 27, 2003, the board decided to
proceed with further discussion and planning for a website of limited
scope. Respondent stated that he was almost ready to post
his site and thought that the board was moving too
slowly. The board requested Respondent to post the website to allow each director
to log on and review it. A
few days after the meeting, Complainant asked Respondent to leave the web site posted until September
14, 2003,
and then to take it down until after discussion at the next board meeting on September 24, 2003. Respondent did
not
take down the website, but rather expanded it. He began soliciting information from Mauna Luan owners and
added a commercial classified
section in violation of Association policy.
Respondent notes that he did not register the disputed domain names to prevent Complainant from having a site
with its name, as
other, similar domain names remain available.
Paragraph 4(b) of the UDRP provides that indications of bad faith include, without limitation, (a) registration
for the purposes
of selling, renting or transferring the domain name to the Complainant for value in excess of
Respondent’s cost; (b) a pattern of
registration in order to prevent Complainant from reflecting the mark in a
corresponding domain name; (c) registration for the primary
purpose of disrupting the business of a competitor;
or (d) an intentional attempt to attract, for commercial gain, Internet users
to Respondent’s web site by creating
a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation
or endorsement of
Respondent’s web site or location, or of a product or service on Respondent’s web site or location.
If Respondent had agreed to transfer just one of the domain names, Respondent would have had a reasonable argument
that the other
two domain names should not be canceled or transferred because there was no evidence of bad faith.
However, Respondent’s refusal
to transfer even one of the three domain names to Complainant is evidence of a
pattern of registration in order to prevent Complainant
from reflecting the mark in a corresponding domain name.
I therefore conclude that Respondent did register and use the domain names in bad faith, as that term is defined
in the ICANN Policy.
CONCLUSION
In light of the findings above that (a) the registered domain names are identical or confusingly similar to
Complainant’s protected
mark; (b) Respondent does not have rights or legitimate interests with respect to the
domain names at issue; and (c) Respondent
did register and use the domain names in bad faith, as that term is
defined in the ICANN Policy, I find in favor of Complainant.
REMEDY
Complainant’s request to transfer the domain names MAUNALUAN.NET,
MAUNALUAN.ORG and MAUNALUAN.COM is hereby GRANTED. The domain
names shall be transferred to Complainant.
January 20, 2004
______________________________
______________________
Thomas M. Pitegoff, Esq.
Date
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