Kingshawaiians.com

The timeline behind kingshawaiians.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION King's Hawaiian Holding Company, Inc. v. Van Thanh / kingshawaiians.com Claim Number: FA2602002204933 PARTIES Complainant is King's Hawaiian Holding Company, Inc. ("Complainant"), represented by Brian M. Wheeler of Atkinson, Andelson, Loya, Ruud & Romo, California, USA. Respondent is Van Thanh / kingshawaiians.com ("Respondent"), Vietnam. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <kingshawaiians.com>, registered with Squarespace Domains II LLC. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Debrett G. Lyons as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on February 11, 2026; Forum received payment on February 11, 2026. On February 12, 2026, Squarespace Domains II LLC confirmed by e-mail to Forum that the <kingshawaiians.com> domain name is registered with Squarespace Domains II LLC and that Respondent is the current registrant of the name. Squarespace Domains II LLC has verified that Respondent is bound by the Squarespace Domains II LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On February 18, 2026, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 10, 2026 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@kingshawaiians.com. Also on February 18, 2026, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts. Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default. On March 11, 2026, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Complainant asserts trademark rights in KING'S HAWAIIAN which it uses in connection with the provision of baked goods and bakery and restaurant services. Complainant states that the disputed domain name is at least confusingly similar to its trademark. Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it is not known by the same name; has not been authorized to use the trademark; and has not used the domain name to date for any bona fide purpose. Complainant alleges that Respondent registered the disputed domain name in bad faith having targeted Complainant and its trademark. B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS The factual findings pertinent to the Decision in this case are that: 1. Complainant is the owner of, inter alia, United States Patent and Trademark Office ("USPTO") Reg. No. 4,868,957, registered December 15, 2015, for KING'S HAWAIIAN; 2. the disputed domain name was registered on January 17, 2026, using a privacy service to shield the name of Respondent; and 3. the disputed domain name is not in use. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant provides evidence of registration of KING'S HAWAIIAN in its name with the USPTO, a national trademark authority, and so the Panel finds that Complainant has trademark rights. Complainant reasons that its trademark: "remains clearly recognizable as the dominant element of the Disputed Domain Name. The inclusion of a generic plural "s" increases the likelihood of confusion by suggesting an association with Complainant's branded goods and services under the King's Hawaiian Trademarks. The generic top-level domain ".com" is irrelevant to the analysis. Accordingly, the Disputed Domain Name is identical or, at a minimum, confusingly similar to Complainant's KING'S HAWAIIAN Mark within the meaning of the UDRP." For the purpose of comparison of the domain name with the trademark, the gTLD, ".com", can be disregarded (see, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as ".net" or ".com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The domain name then differs from the trademark by omission of the possessive apostrophe and addition of the letter "s" to pluralise the word, "Hawaiian". The Panel finds the domain name to be confusingly similar to the trademark (see, for example, Coinbase, Inc. v. gary gay, FA 1983825 (Forum Mar. 8, 2022) finding <coins-base.net> confusingly similar to complainant's COINBASE trademark; Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("… the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them."). The Panel therefore finds that the requirements of paragraph 4(a)(i) of the Policy are satisfied. Rights or Legitimate Interests Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to you 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 (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 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. Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)). The name of Respondent was shielded by a privacy service. Forum issued a Deficiency Notice and the Amended Complaint then named "Van Thanh" as Respondent. Nothing in the evidence indicates that Respondent might be commonly known by the domain name (see, for example, Tercent Inc. v. Lee Yi, FA 0139720 (Forum Feb. 10, 2003) stating "nothing in [the respondent's] WHOIS information implies that [the respondent] is 'commonly known by' the disputed domain name" as one factor in determining that Policy ¶ 4(c)(ii) does not apply"). There is no evidence that Respondent has any trademark rights. Complainant states that Respondent has no authority to use the trademark and the Panel accepts that statement. Complainant states that the domain name has not been used and provides evidence that it does not resolve to an active website. A prima facie case has been made that Respondent lacks rights or a legitimate interest in the domain name (see, for example, Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) finding that the respondent's non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii); Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) ("Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent's <kohler-corporation.com> resolves to an inactive webpage displaying the message "website coming soon!")). The onus shifts to Respondent to rebut that case by demonstrating rights or interests. Absent a Response, the onus is not met and so the Panel finds that Complainant has satisfied the second limb of the Policy. Registration and Use in Bad Faith Complainant must prove both that the disputed domain name was registered in bad faith and used in bad faith. Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. The four specified circumstances are: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or (ii) the 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the site or location. Complainant does not argue for the application of any of those scenarios, nor does the Panel find that any one or more has obvious application to the facts of the case. Accordingly, Complainant must establish, as separate matters, registration in bad faith and use in bad faith. Complainant's relevant submissions are that: "The domain names (sic) should be considered as having been registered and being used in bad faith for additional myriad reasons, including, inter alia, (i) Respondent's targeting Complainant's distinctive mark; (ii) Respondent's passive holding and concealment; and (iii) the likelihood of confusion and deception. … The Disputed Domain Name has been passively held as a blank landing page since registration, with no plausible legitimate purpose. Given the distinctiveness of the King's Hawaiian Trademarks, the absence of any conceivable good faith use by an unaffiliated party, and Respondent's concealment of identity via privacy services, the totality of circumstances supports bad faith registration and use." In view of Respondent's failure to submit a response, the Panel may draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. Other than as a reference to Complainant and its business, the trademark has no ordinary meaning which would render it capable of nominative, fair use. Accordingly, in the absence of a Response, and having regard to what has been said in relation to the second element, the Panel draws the inference that Respondent was aware of Complainant and its trademark when it registered the domain name and did so in bad faith. Complainant faces the hurdle that it must prove use in bad faith in circumstances where, as stated, there is no evidence of use of the domain name. The highest case Complainant has put forward is that based on so-called, passive holding in bad faith. The Panel treats the issue of use in bad faith in line with the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The panelist there posed the question: "what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith?", concluding that "the question can only be answered in respect of the particular facts of a specific case", whereafter he paid regard to circumstances showing that (i) the complainant's trademark was widely known, (ii) the respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name, (iii) the respondent has taken active steps to conceal its identity and had provided false contact details, and (iv) it was not possible to conceive of any plausible use of the domain name by the respondent that would not be illegitimate in the sense of infringing complainant's rights. The Complaint does not carry any evidence to show that the trademark is widely known. It states that: "King's Hawaiian goes to great efforts to preserve its image and identity and the image and identity of its high-quality products and the King's Hawaiian brand, including the King's Hawaiian Trademarks and their associated goodwill. The King's Hawaiian Trademarks serve to identify King's Hawaiian as the source of the products with which they are used, and the relevant consuming public recognizes the King's Hawaiian Trademarks as distinguishing those products from the goods and services of others. … King's Hawaiian has heavily promoted the King's Hawaiian Trademarks through various marketing channels and operates its official website at kingshawaiian.com. … Complainant has been using the King's Hawaiian Trademarks for nearly half a century." In so many words, Complainant asserts common law trademark rights in KING'S HAWAIIAN. In the case of Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) the panel found that the complainant had established common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including "longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising." The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, (WIPO Overview 3.1) explains at #1.3 that: "To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant's goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys." Here, there is no such evidence. The Complaint states that KING'S HAWAIIAN "was registered in 1983 with a 1979 date of first use". On the evidence, Reg. No. 4,868,957 is the earliest word mark registration in the name of Complainant. The Panel notes USPTO Reg. No. 1,228,641, for the word mark registered in 1983 but the registration certificate shows another owner. In any event, even assuming that if USPTO records were included with the Complaint which reflected current ownership of that registration, its mere reference to a 1979 first use date of the trademark is not, without more, proof of common law rights, or of the mark being "widely known". Nevertheless, all of the remaining factors set out in Telstra Corporation Limited v. Nuclear Marshmallows are met. Moreover, as noted above, that decision observed that proof of use in bad faith is case specific, and the Panel here is influenced by the fact that it is difficult to conceive of any good faith use that could be made of the domain name. For these reasons the Panel finds that Complainant has shown passive holding in bad faith and so has not shown "use" in bad faith (see, for example, King's Hawaiian Holding Company, Inc. v. Glen Demiri, FA 2204938 (Forum March 12, 2026)). The Panel finds that Complainant has satisfied the third and final element of the Policy. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <kingshawaiians.com> domain name be TRANSFERRED Respondent to Complainant. Debrett G. Lyons, Panelist Dated: March 13, 2026 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.