Panelist sinks cruise company’s case, rules reverse domain name hijacking

Cruise operator relied on mark on the Supplemental Register.

A cybersquatting dispute between two sightseeing cruise operators in Miami has resulted in a reverse domain name hijacking decision (pdf).

Miami Skyline Cruises, which uses the domain name MiamiSkylineCruises.com, filed the dispute against a rival cruise company that uses the domain name SkylineMiamiCruises.com.

The Complainant cited a U.S. Trademark Registration in its dispute. However, this registration was on the Supplemental Register. UDRP precedent does not consider Supplemental registrations as trademarks.

The cruise operator failed to submit sufficient evidence to demonstrate that it had common law rights in the name, and therefore did not establish that the domain was confusingly similar to a mark in which it has rights.

There were allegations of other issues between the companies, but they did not impact the decision in the case.

World Intellectual Property Organization panelist David Bernstein found that Miami Skyline Cruises filed the case in bad faith, constituting an abuse of the policy. He recognized that the Complainant was not represented by counsel, but noted:

The UDRP is more than a quarter century old, and there are substantial educational materials available to educate participants about the requirements of a successful UDRP complaint, including the WIPO Overview 3.0. Even a cursory review of these materials would have educated the Complainant about the weakness of its claims.

Bernstein took the Complainant to task for not clarifying that its trademark was on the Supplemental Register. He also said the case:

…was so devoid of factual support that it crosses the line from zealous advocacy to reverse domain name hijacking. The Complainant had to know, or at least should have known, that it had no prospect of success given its failure to establish relevant trademark rights under the Policy.

AbrahamsenGrant L.L.C. represented the Respondent.