WIPO Domain Name Decision: D2005-1338

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Brasserie de Tahiti v. Kane Kahuna

Case No. D2005-1338

1. The Parties

The Complainant is Brasserie de Tahiti, Papeete, Tahiti, French Polynesia, represented by MEYER & Partenaires, France.

The Respondent is Kane Kahuna, Hawaii, United States of America.

2. The Domain Name and Registrar

The disputed domain name <hinanobeer.com> is registered with BulkRegister.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2005. On December 28, 2005, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On December 30, 2005, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 January 5, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2006.

The Center appointed Alberto de Elzaburu as the sole panelist in this matter on February 6, 2006. 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 Complainant, Brasserie de Tahiti, is a company founded in 1914, in Tahiti (French Polynesia).

- The Complainant owns international registration no. 639.390 HINANO TAHITI for goods in Classes 30, 31, 32 and 33, with a priority date of July 21, 1995, French trademark no. 98751371 HINANO TAHITI for goods in Classes 3, 16, 18, 20, 21, 22, 24, 25, 29, 30, 31, 32 and 34 with a priority date of September 23, 1998; French trademark no. 043313025 HINANO in Classes 3, 16, 18, 24, 25, 32 and 34 with a priority date of September 10, 2004, as well as numerous U.S. registrations for the trademarks HINANO and HINANO TAHITI, all of which are listed in section L6 of the Complaint, and all of which have a priority date of September 16, 2004, except trademark no. 7648777 HINANO TAHITI which covers goods in Class 25 and has a priority date of February 4, 2003, as well as trademark no. 75977236 HINANO TAHITI (figurative), also for goods in Class 25, with a priority date of September 15, 1995.

- Hinano appears to be a reputed brand of beer, at least as far as Tahiti (French Polynesia) is concerned.

- The Complainant mainly operates via internet through its website “www.brasseriedetahiti.com”.

- The domain name <hinano.com>, also operated by the Complainant, was registered on September 13, 2003 (approximately two months before the disputed domain name was registered).

- On accessing the website identified by the domain name at issue it is only possible to see a text that appears to explain the meaning of the word HINANO and other information relating to the word’s origin and associated traditions.

5. Parties’ Contentions

A. Complainant

In its Complaint the Complainant, Brasserie de Tahiti, contends:

- That the Complainant is a company founded in 1914, in French Polynesia and is a market leader in the production and sale of beverages.

- That in 1955, it launched the trademark HINANO as a brand of beer, and that HINANO has since become the company’s leading brand outside of French Polynesia, enjoying increasingly high sales in countries such as France, Japan and the U.S. (above all Hawaii and California), where it has been sold since the 1990s.

- That the Complainant operates a website (“www.brasseriedetahiti.com”) on which it advertises the trademark HINANO and has even been operating a website (“www.hinano.com”) dedicated exclusively to this mark since 1999.

- That Kahuna Kane, which is how the Respondent is identified under the Whois of the disputed domain name, happens to share be the last name of a very well-known artist in Hawaii, who is also a professor of Hawaiian culture (Mr. Herb Kane).

- That the contact details of the disputed domain name make it impossible to contact the domain name owner, in that they do not even include a telephone or fax number and include a fake e-mail address, and that the domain name was initially registered in the name of a Mr. Klink.

- That the Complainant wrote to Mr. Klink in October, requiring that the ownership of the domain name be transferred back to Brasserie de Tahiti, to which Mr. Klink replied that he would do so only if he were granted a license to use the trademark HINANO and sell goods identified by that mark.

- That Brasserie de Tahiti owns various international, French and U.S. registrations for the trademarks HINANO TAHITI and HINANO.

- That the contested domain name is identical to the term Hinano in which Brasserie de Tahiti has prior trademark rights.

- That the Respondent has no legitimate rights or interests in the domain name in dispute and that it has never been identified under the term “hinanobeer.com”.

- That in the Complainant’s opinion, the identity of the registered owner, Kahuna Kane, is fictitious or else refers to Mr. Herb Kane. When the latter died in 2004, the contested domain name was registered in the name of the aforementioned Mr. Klink.

- That, as has already been mentioned, Mr. Klink replied to the Complainant’s warning letter by stating that he would start up a website using the disputed domain name if the Complainant did not meet his demand to be granted a license to use the trademark HINANO and sell the goods identified by that mark.

- That the contested domain name was registered to catch the Complainant’s attention, in that Mr. Klink had unsuccessfully tried to establish contact previously with the aim of securing a license. This, added to the fact that the contact details are false, is clear evidence that the domain name in dispute was registered in bad faith.

- That the contested domain name was registered for the purpose of attracting internet users and creating a likelihood of confusion with the Complainant’s website, and that the use of the domain name in dispute is not a legitimate non-commercial use, given that the Respondent set up the website after receiving a warning letter from the Complainant. The contested domain name has thus been used in bad faith.

Consequently, the Complainant petitions that the domain name in dispute, <hinanobeer.com>, be transferred to Brasserie de Tahiti.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

In the Panel’s view there is no doubt that this requirement has been met, in that the dominant word element of the domain name <hinanobeer.com> is identical to the trademark HINANO, in which the Complainant has shown that it has exclusive rights.

It should not be overlooked that the Policy does not require identity between trademark and domain name, rather, confusing similarity is sufficient.

The fact that the contested domain name ends with the label “.com”, which simply indicates the top-level domain, and that it also contains the word “beer” , which simply describes the product for which the trademark HINANO is famous, is in no way sufficient to remove said confusing similarity.

The Panel is thus of the opinion that the first of the requirements laid down under the Policy has been met.

B. Rights or Legitimate Interests

The absence of any response to the Complaint from the Respondent means that the Panel does not have the Respondent’s account of the legitimate interests or rights it might have in respect of the domain name <hinanobeer.com>.

Although the Complainant has alleged that written contacts with the Respondent were made in October 2005, contacts which, according to the Complainant, led to the Respondent requiring the granting of a license to use the trademark HINANO in exchange for the transfer of the domain name, no evidence whatsoever of said contacts has been submitted. Consequently the Panel will not assess said circumstance vis-à-vis the second element of paragraph 4(a) of the Policy.

Nonetheless, the Panel is of the opinion that the Complaint has established a prima facie case that the Respondent lacks any rights or legitimate interests in the domain name because:

- It appears that the trademark HINANO was already reputed, at the very least in the place of origin of the Respondent (which, according to the registration extract, is Hawaii, U.S.), at the time the domain name was registered. The Panel concludes that the Respondent did not have any legitimate rights or interests in the term Hinano, nor has it ever had any such rights. This conclusion is further strengthened by the fact that the contested domain name is made up of the terms “Hinano” and “beer”, which proves that the Respondent was not only aware of the trademark when registering said domain name but also of the product in relation to which the mark had reached such a level of repute in its place of origin.

- In previous UDRP decisions it has been held that the absence of a reply from the Respondent may be regarded as a tacit acceptance of the respondent’s lack of legitimate rights or interests. Examples of such decisions are, inter alia, Hipercor, S.A. v. Miguel González, WIPO Case No. D2000-0045 and UNICAJA - Montes de Piedad y Cajas de Ahorro de Ronda, Cádiz, Almeria, Málaga y Antequera (Diego Ribera) v. Fernando Labadía Pardo, WIPO Case No. D2000-1402.

The Panel thus holds that the second element required under paragraph 4(a) of the Policy is likewise present here and that the Respondent does not have rights to or legitimate interests in the registration of the domain name in dispute.

C. Registered and Used in Bad Faith

The Respondent has not submitted any response to the Complaint or any evidence of its intentions in applying for and registering the domain name in dispute.

The Panel considers, in view of the allegations and documents on file that the circumstances described in this particular case do not squarely fall within the examples of paragraph 4(b) of the Policy.

Having said that, the four circumstances described under paragraph 4(b) of the Policy are not exhaustive, which means that circumstances of a different nature may be present and may be considered by the Panel to be sufficient evidence of the registration and use of the domain name in bad faith.

Such a circumstance is indeed present here, namely, that the repute of the trademark HINANO is not only limited to Tahiti, it also extends to the United States (and, more specifically, Hawaii), the place of residence of the Respondent, as ’shown in the Whois database, where the Complainant has proved it has registered trademarks for HINANO and HINANO TAHITI.

The Panel holds that it is not possible for the Respondent to have been unaware of the existence of said mark and of its reputation in relation to beer, which has been built up as a result of the time, money and effort invested by the Complainant, Brasserie de Tahiti. Considering that the Respondent added the word “beer” after HINANO to the domain name, the Panel finds it more likely than not that the Respondent knew the Complainant, its trademark and products.

The Panel therefore holds that the domain name <hinanobeer.com> was registered in bad faith.

The Panel wishes to cite in full the statement (made originally in Spanish but translated here by the Panel) made in J. García-Carrión, S.A, v. Ma José Catalán Frías, WIPO Case No. D2000-0239 in which it was held that:

“Whosever acts in bad faith when registering a domain name will inevitably use it in bad faith, because bad faith is linked to the perpetrator’s awareness at the time of registration that a third party’s rights would be damaged”.

This criteria is also fully applicable here in view of the conclusion reached by the Panel that the Respondent was aware of the existence and expansion of the trademark HINANO and of the beer products sold under said mark.

Further, the Respondent’s holding of the contested domain name has been relatively passive, in that the corresponding website contains but a simple text with two images and the odd comment regarding the origin and meaning of the term Hinano. The possibility of accessing further information or of purchasing any product or service is completely absent.

The Panel also notes the Complainant’s contentions on the eventual connection between the prior and the current registrant of the domain name, the fictitious character of the name of the Respondent, and that a transfer from the prior registrant to the Respondent took place after the Complainant had sent a warning letter to the prior registrant of the disputed domain name. These circumstances, without a rebuttal by the Respondent, are further indications of registration and use of the domain name in bad faith.

In view of the above the Panel holds that the third element required under paragraph 4(a) of the Policy is likewise present here.

7. Decision

For all the foregoing reasons the Panel finds that the Complainant has proved the three elements of paragraph 4(a) of the Policy. The Panel therefore orders that the disputed domain name <hinanobeer.com> be transferred to the Complainant.

Alberto de Elzaburu
Sole Panelist

Dated: February 20, 2006