WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Moana Pacific Fisheries Limited v. Turner New Zealand
Case No. D2000-0139
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:
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 firstname.lastname@example.org 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
Digiweb New Zealand Limited,
PO Box 25-129
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:
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
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.
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:
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@example.com 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.
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.
April 26, 2000