The sole panelist at the UDRP brought against the domain AVKauai.com, made a powerful statement about the Complainant:
And yet, despite this statement, the panelist did not deliver a finding of Reverse Domain Name Hijacking, essentially giving a slap on the Complainant’s wrist who was merely denied the domain’s transfer.
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
John Belliveau, A/V Kauai, Inc. v. Kent Taginawa, Audio Visual Technology LLC
Case No. D2021-1637
1. The Parties
Complainant is John Belliveau, A/V Kauai, Inc., United States of America (“United States”), internally represented.
Respondent is Kent Taginawa, Audio Visual Technology LLC, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <avkauai.com> (the “Domain Name”) is registered with The Name IT Corporation DBA Name Services.net (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2021. On May 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 26, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2021. The Response was filed with the Center on June 4, 2021. On June 7, 2021, the Center informed the Parties that it would proceed with the panel appointment process.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 10, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The record in this proceeding is sparse, which is remarkable because it is undisputed that Respondent was once employed by Complainant.
Complainant John Belliveau owns a corporation, A/V Kauai, Inc., registered in Hawaii, United States. According to the Complaint, A/V Kauai was formed in 1993. Complainant provides audio-visual rental services (widely referred to as “AV services”) to clients, typically organizers of concerts and other events, on the Hawaiian island of Kauai.
As far as the record in this case reveals, neither Complainant nor his company holds any registered trademark for AV KAUAI. Complainant has provided various exhibits comprised of letters from clients expressing satisfaction with Complainant’s excellent audio-visual services after various events were concluded. These laudatory missives almost always refer to Mr. Belliveau, but not to AV KAUAI as a trademark.
Complainant alleges that Respondent was an employee of Complainant’s company for several years, and that he entrusted Respondent with the task of registering the Domain Name for Complainant’s business. The record is not clear in this regard, but Complainant alleges that this request was made “verbally” in “early 1996”. According to Complainant, this request was not “acted upon” until December 2000. In 2001, Respondent left Complainant’s company.
The WhoIs record reveals that the Domain Name was first registered on June 10, 2003. The Domain Name currently resolves to a website where Respondent’s audio-visual rental services are offered in the same geographical market served by Complainant. Again, given the sparse nature of the record provided by the Parties here, it is unclear how long this manifestly commercial website has been in operation. The uncertain factual posture is underscored by Complainant’s “History of the dispute”, which states in part:
“In 2001 Mr. Tanigawa [Respondent] left the company [A/V Kauai, Inc.]. In 2003 Mr. Belliveau [Complainant] couldn’t access the website [it is not clear what website is under discussion here; there is nothing in the record about Complainant’s website in 2003] and it was explained to him by his lawyer [name immaterial] that Mr. Tanigawa didn’t register the name under A/V Kauai, Inc. In 2003, Kent Tanigawa verbally offered to sell the website back for a price of $5,000 [USD 5,000]. Mr. Belliveau counter offered at $300 [USD 300] and Mr. Tanigawa never replied. In 2004 Br. Belliveau sent a cease-and-desist letter that was never replied to. Not knowing how to proceed with this matter, Mr. Belliveau didn’t pursue it further as Mr. Tanigawa had accepted a job working for the Kauai Community College and it was assumed he was no longer competing in our market.”
The alleged 2004 cease-and-desist letter is not annexed to the Complaint, and hence the Panel has no idea what the letter said, and, more to the point, the Panel has no idea whether the letter included any assertion by Complainant of any trademark rights whatever.
Respondent does not specifically reply to the allegation that he exited the audio-visual rental service market or took a job in an unrelated sector, but he does claim that he has been using the Domain Name for more than 20 years, and that the Domain Name “is generic in nature and refers to the audio visual services provided”. On March 2, 2016, Respondent registered the business name Audio Visual Technology, LLC with the State of Hawaii.
5. Parties’ Contentions
Complainant contends that he has proven all three elements required under the Policy for a transfer of the Domain Name.
Respondent contends that he legitimately registered the Domain Name and has been using it in good faith for many years in connection with his business.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is 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) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Because a successful complaint under the UDRP requires that a complainant prove all three elements required for a transfer of the subject domain name, the Panel here declines to decide whether Complainant holds any trademark rights in AV KAUAI, because the Complaint fails on at least one of the other UDRP elements, as discussed below. The Panel does observe, though, that there is no registered trademark here, and there is no evidence in the record that the decidedly weak (if not nonexistent) trademark AV KAUAI enjoys any secondary meaning as a source identifier of Complainant’s services.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or 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
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a 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.
In view of the Panel’s ruling below on the “bad faith” element, the Panel need not decide the “rights or legitimate interests” issue. As noted above, the record in this case is threadbare, and, even though Respondent here will ultimately prevail on the merits, the Panel is not prepared to find that Respondent enjoys a legitimate interest vis-à-vis the Domain Name. The fact that the prior relationship between the Parties was alluded to but not developed at all in the record makes the Panel hesitant to conclude that Respondent is entirely on the up-and-up here.
C. Registered or Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes from this remarkably undeveloped record that Complainant has failed to prove, on a balance of probabilities, that Respondent registered the Domain Name in bad faith. As suggested above, Complainant’s very trademark rights are unclear. Perhaps above all, the (alleged) fact that Complainant sent Respondent a cease-and-desist letter 17 years ago, but Complainant does not attach the letter to the Complaint here (or even bother to explain its contents), suggests to the Panel that Complainant is in a decidedly weak posture in this case, and probably knows as much. The passage of 17 years between the purported cease-and-desist letter and the commencement of this proceeding is truly remarkable, and the laconic explanation of that 17-year lapse leaves the Panel with the impression that this Complaint was a “wing and a prayer”, at best.
This Complaint fails, at a minimum, for lack of any proof that the Domain Name was registered and used in bad faith.
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Date: June 19, 2021
Copyright © 2021 DomainGang.com · All Rights Reserved.