State battles Maui man in domain name dispute
By John Duchemin
Advertiser Staff Writer
State attorneys will likely face an unusual and costly court battle as they attempt to wrest control of the Web address www.hawaiiconventioncenter.com from a Maui businessman accused of cybersquatting on the name.
The man accused of cybersquatting denies the allegation and says he'll fight to keep the domain name, which is sought by the Hawai'i Tourism Authority. He says the authority is trying to seize his legitimate property.
John Hendrickson, who in 1997 took ownership of the Web address www.hawaiiconventioncenter.com, says he registered that name to promote his destination management service — and not to illegitimately profit by reselling the name to the Hawai'i Convention Center, as the state agency asserts.
The authority on Jan. 10 sued Hendrickson, accused him of "cyberpiracy" and asked the state circuit court to compel him to forfeit his ownership of the Web address.
The state's lawsuit comes during an era when disputes over Internet domain names are common — but court cases are rare. It also shows the consequences if a business fails to protect its name on the Web.
Attorneys for the state admitted that tourism officials were tardy to act in registering the disputed domain name themselves.
Intellectual property lawyer Martin Hsia said that hundreds of companies are slow to register domain names — like the Convention Center, which was named in the mid-1990s but waited until 1998 to seek a dot-com Internet address — and therefore leave themselves vulnerable to cybersquatting.
The authority claims Hendrickson is violating the federal Anticybersquatting Consumer Protection Act of 1999, which bars people from profiting in bad faith from the purchase of Internet domain names associated with distinctive trademarks. The state says that after four years of negotiations, Hendrickson refused a "reasonable" purchase offer and said he would sell the domain name for $6 million.
But Hendrickson said he did that only to indicate the domain name is not for sale. "I know the state doesn't have $6 million" he said. "I just didn't want to give up the name. That was my way of saying, 'This is not for sale.' "
The authority seeks $100,000 in fines under Hawai'i's own Cybersquatting Act, which parallels the federal law, along with restitution, damages, and fees. Hendrickson promised to fight the charges.
"I have no choice but to defend myself," he said. "(The tourism authority) has been nasty and demanding throughout this process. Lawsuits against small businesses are not the way to build up tourism in Hawai'i."
Key to the lawsuit is the state's claim that Hendrickson has no legitimate reason to use an Internet domain name so similar to the Hawai'i Convention Center.
The state's lawyers said the Convention Center should still be able to claim the domain name under trademark laws.
Hendrickson, however, said he chose the name because his business plan "is to be in the center of the convention business." Hendrickson and wife Roxann say they started promoting meetings in 1993. Their Wailuku business, Hawaii Meeting Builders, works with companies holding conventions in the state, and has five permanent employees.
"I'm not just someone working from my house dialing up domain names," he said. "We're an active, live, people-employing business. I'm a promoter, not a squatter."
The state, however, argues that the center's name, chosen in the mid-1990s, had become a distinctive piece of intellectual property by 1997 — and that Hendrickson must have known so when he registered the domain name.
"I'm quite confident (Hendrickson) was very much aware that the convention center had trademark rights," said Seth Reiss, a lawyer with the Honolulu firm Watanabe Ing Kawashima & Komeiji, who was hired as the state's lead attorney for the lawsuit. "He could not have not been aware."
Hendrickson said this didn't cross his mind — and argued that many other businesses, including Hawaii Convention Center Concierge and Hawaii Convention Center Shuttle, have also adapted the center's name.
Hsia, an attorney with the Honolulu law firm Cades Schutte Fleming & Wright, said most such cases never become lawsuits. They are instead settled through arbitrations administered by the principal domain-name registering bodies.
Only the cases involving serious factual disputes end up in court, Hsia said.
Reiss acknowledged the state is avoiding an arbitration because its lawsuit is more complex than the usual cybersquatting case — and it didn't want to risk losing a decision.
"We didn't want to go through that proceeding only to find that we have to file a lawsuit in any case," he said.
Reach John Duchemin at jduchemin@honoluluadvertiser.com or 525-8062.
