[Indexed as:
Moana Fisheries v. Turner]
[Indexed as:
moanapacific.com]
WIPO Arbitration
and Mediation Center
Administrative
Panel Decision
Case No. WIPO
D2000-0139
Commenced:
March 21, 2000
Judgement:
April 26, 2000
Presiding
Panelist: David Perkins
Domain name Domain name dispute resolution policy Trademark Identical Confusingly similar Bad faith registration Bad faith use - Inaction.
Complainant,
a company incorporated in New Zealand, carries on business as a processor,
exporter and distributor of seafood and seafood products.
Complainant
is registered under the trade-name and mark MOANA PACIFIC.
Respondent, a company incorporated in California, carries on a fisheries business which is similar to and competes with the Complainant's fisheries business both in New Zealand and overseas, including the USA. Respondent registered the domain name at issue, moanapacific.com, after the Complainants trademark registration.
Complainant asserts that it has established a significant and valuable reputation and goodwill both nationally and internationally in the tradename and mark MOANA PACIFIC. Complainant contends that the domain name in issue is identical to the Complainant's MOANA PACIFIC mark, that the Respondent has no rights or legitimate interest in the domain name and that Respondent has registered and is using that domain name in bad faith. Complainant claims that Respondent has been aware of Complainant's use and proprietary rights in the MOANA PACIFIC name and mark and that the domain name in issue was registered primarily for the purpose of disrupting the competitive business of Complainant.
Held, Name Transferred to Complainant.
The Panel finds that the domain name in issue is identical to Complainant's registered trademark and that Respondent has no rights or legitimate interests in the domain name.
Based on the unchallenged assertion by Complainant that Respondent has never traded or used the name MOANA PACIFIC in connection with its business, the Panel finds that Respondent registered the domain name in bad faith.
The concept
of a domain name being used in bad faith is not limited to positive action:
inaction is within the concept.
In a fax
addressed to the Center, Respondent stated, inter alia, "The domain name
in question has been transferred to the Complainant." In the Panel's
view, this statement indicates acceptance by the Respondent that the domain
name in issue has been registered and is being used in bad faith.
Policies referred to
Uniform Domain Name Dispute Resolution Policy
Cases referred to
Decision D2000-0003
Panel Decision
referred to
--
David
Perkins , Panelist: -
1. The Parties
Complainant is Moana Pacific Fisheries Limited of 2nd Floor, 32 Halsey Street, Auckland, New Zealand.
Respondent is Turner New Zealand of P O Box 8919, Newport Beach, CA92658, United States of America.
2. The Domain Name and Registrar
The domain name at issue is:
moanapacific.com
and the Registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration
and Mediation Center [the Center] received the Complaint on March 8, 2000
[electronic version and hard copy]. The Center despatched by fax and email
to the Complainant a Complaint Deficiency Notification on March 16, 2000,
with a view to the formal requirements of the ICANN Uniform Domain Name
Dispute Resolution Policy [the Policy], the Rules of Uniform Domain Name
Dispute Resolution Policy [the Rules] and the Supplemental Rules for Uniform
Domain Name Dispute
Resolution
Policy [the Supplemental Rules]. Complainant made the required payment
to the Center.
The formal date of the commencement of this administrative proceeding is March 21, 2000.
On March 9, 2000, the Center transmitted via email to Network Solutions, Inc. a request for registrar verification in connection with this case and on March 10, 2000, Network Solutions, Inc. transmitted via email to the Center Network Solutions' verification response confirming that registrant and administrative contact is Turner New Zealand and the technical contact is Brendan McNeill of Digiweb New Zealand Limited.
Having verified, on the basis of clarifications received by the Center from the Complainant on March 17, 2000, that the Complainant satisfied the formal requirements of the Policy and the Rules, the Center transmitted on March 22, 2000, to moanapacific.com, noel.turner.co.nz and [email protected] the Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by April 10, 2000. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to:
Noel A Turner
Turner New
Zealand
PO Box 8919
Newport Beach,
CA 92658
USA
and to:
Brendan McNeill
Digiweb New
Zealand Limited,
PO Box 25-129
Christchurch
8001
New Zealand
No Response was received from the Respondent by the due date of April 10, 2000. On April 11, 2000, Notice of Respondent Default was sent to the Complainant and to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceeding. Save as set out in Section 6 of this Decision (below), no reply by Respondent to the Notification of Respondent Default was received.
Having received on April 18, 2000, Mr. David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. David Perkins was formally appointed as the Sole Panelist. The Projected Decision Date was May 2, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from Respondent, save for the Respondent's fax to the Center of April 18, 2000 [see Section 6 of this Decision].
4. Factual Background
4.1 The Complainant
The Complainant, Moana Pacific Fisheries Limited, is a company incorporated in New Zealand which carries on business as a processor, exporter and distributor of seafood and seafood products.
4.2 The Respondent
The Respondent, Turner New Zealand, is stated to be a company incorporated in California which carries on a fisheries business which is similar to and competes with the Complainant's fisheries business both in New Zealand and overseas, including the United States of America. The Complaint states that the parties are in direct competition both in New Zealand and internationally.
4.3 The Complainant's Trade Mark
The Complainant has asserts that it has a well known and well established profile both in New Zealand and internationally in the tradename and mark MOANA PACIFIC and has established a significant and valuable reputation and goodwill both nationally and internationally in the said name and mark. Annexed to the Complaint are particulars of two registered trade marks:
New Zealand
Registration No: B218,920 MOANA PACIFIC [Class 29] in respect of
"Fish and fish products; seafood and seafood products."
United States of America
Registration No: 1,781,596 MOANA PACIFIC [ Class 29] in respect of
"Fish and seafoods."
The mark was
registered on July 13, 1993, and claims first use in commerce from November
15, 1991.
The registration
gives no exclusive right to use of PACIFIC except as part of the word mark
MOANA PACIFIC. The registration states that MOANA is a maori word meaning
"a wide expanse of water" and, colloquially, "sea".
In the absence of a Response, there is no challenge to the Complainant's assertions as to ownership, use and reputation of its MOANA PACIFIC name and mark. However, to ensure that the Parties are treated with equality [Rules, para. 10(b)], the Panel accessed the Complainant's website on April 24, 2000, which verifies that the Complainant is operating its fish and seafoods business internationally under the MOANA PACIFIC name and mark.
5. Parties' Contentions
A. Complainant
The Complainant contends that the Respondent has registered as a domain name a mark which is identical to the Complainant's MOANA PACIFIC mark, that the Respondent has no rights or legitimate interest in respect of the domain name in issue and that Respondent has registered and is using that domain name in bad faith.
B. Respondent
No response or any communication relating to the Complaint has been received from the Respondent, except as referred to in Section 6 below.
6. Discussions and Findings
6.1 The Policy para. 4a provides that the Complainant must prove each of the following:
· that the Respondent's 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 rights or legitimate interests in respect of the domain name; and
· the domain name has been registered and is being used in bad faith
6.2 Identical or Confusingly Similar
The Panel finds that the domain name at issue, moanapacific.com, is identical in all material respects to the Complainant's registered trade mark MOANA PACIFIC. The Panel, therefore, finds that the Complainant succeeds in establishing the requirement of Para. 4(a)(i).
6.3 Rights or Legitimate Interests
Para 4(c) of the Policy identifies circumstances which, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent's rights or legitimate interests for the purposes of para 4(a)(ii).
The Complaint
states that the Respondent is using the domain name in issue as no more
than a URL [i.e. Internet] address and that the information provided at
that website is exactly the same as that provided by the Respondent on
its website at the URL address turnernewzealand.co.nz. The Panel has accessed
the two websites. Moanapacific.com did not appear to be active. Neither
of the websites - [email protected] and turnernewzealand.co.nz -
appear to make any use of the domain name at
issue such
as to indicate that the Respondent might have any rights to or a legitimate
interest in that name. The Complainant asserts that the Respondent has
never traded as MOANA PACIFIC, nor used that name in connection with its
business, nor ever been commonly known by that domain name. In the absence
of a Response, the Panel can find no evidence that would tend to establish
that the Respondent has rights or legitimate interests in respect of the
domain name at issue. The Complainant succeeds in establishing the requirement
of para 4(a)(ii) of the Policy.
6.4 Bad Faith
Para 4a(iii) of the Policy requires that Respondent's domain name must both have been registered and been used in bad faith. Both requirements must be met.
Para 4b of the Policy sets out circumstances which, if found by the Panel to be present " shall be evidence of the registration and use of a domain name in bad faith.". The Policy goes on to state that those circumstances are not exhaustive of the circumstances indicating registration and use in bad faith.
6.5 Registered in Bad Faith
The Respondent registered the domain name in issue on July 26, 1999. The Complainant asserts that the parties are direct competitors in the fisheries business and that the Respondent has at all times been aware of the existence and activities of the Complainant and the Complainant's use and proprietorial rights in the name and mark MOANA PACIFIC. The Complainant further asserts that in the circumstances, the domain name in issue was registered by the Respondent primarily for the purpose of disrupting the competitive business of the Complainant.
Again, in the absence of a Response, the Panel finds that Complainant succeeds in establishing the first part of the requirement of para 4(a)(iii) of the Policy. In making this finding, the Panel also takes into consideration the unchallenged assertion by the Complainant that the Respondent has never traded as MOANA PACIFIC or used that name in connection with its business.
6.6 Use in Bad Faith
The concept of a domain name being used in bad faith is not limited to positive action: inaction is within the concept [see, Decision D2000-0003]. Further, the Complainant states that
"The Respondent
has offered to sell the Complainant the rights to the domain name
www.moanapacific.com
in exchange for the Complainant reimbursing it for its legal expenses in
answering the Complainant's legitimate complaints."
The Complainant has, however, proffered no evidence to substantiate such offer nor is it apparent from the Complaint that the consideration said to have been demanded by the Respondent exceeded its documented out of pocket costs directly related to the domain name. The Panel, therefore, disregards that part of the Complaint in coming to its Decision in this Case. However, by the Respondent's only communication in this Case - a fax addressed to the Center dated April 18, 2000 - the Respondent stated, inter alia,
"The domain name in question has been transferred to the Complainant."
In the Panel's view, this statement indicates acceptance by the Respondent that the domain name in issue has been registered and is being used in bad faith.
By fax from the Complainant's advisers to the Center of April 20, 2000, it is said that there has been no contact between the parties in relation to this Complaint, no settlement discussions, nor has the domain name in issue been transferred to the Complainant. In the circumstances, the Panel also finds that the Complainant succeeds in establishing the second part of the requirements of para 4(a)(iii) of the Policy.
7. Decision
For all the
foregoing reasons, the Panel decides that the Complainant has proved each
of the three elements of para. 4 of the Policy. Accordingly, the Panel
requires that the registration of the domain name moanapacific.com be transferred
to Complainant.
David Perkins
Sole Panelist
April 26, 2000