Miami Skyline Cruises, a Florida sightseeing operator, filed a UDRP against Savy Grant of the U.S. over skylinemiamicruises.com, claiming confusion with its own miamiskylinecruises.com and registered marks.
The Complainant owns a U.S. registration for MIAMI SKYLINE CRUISES, but only on the USPTO Supplemental Register, along with two Florida state registrations, all carrying disclaimers on the words “Miami” and “cruises.” It offered no evidence of sales, advertising, or public recognition sufficient to establish secondary meaning.
WIPO Panelist David H. Bernstein held that a Supplemental Register entry is not proof of distinctiveness or enforceable trademark rights under the UDRP. Likewise, Florida state registrations are largely administrative and do not create presumptive rights. The Complainant’s unsupported claim of “robust common law rights” failed for lack of evidence. Because the phrase Miami Skyline Cruises is descriptive of the services offered, the Panel found no protectable trademark rights.
The Panel also noted that the Respondent’s website promotes genuine boat tours and has been operating under the disputed domain since early 2024. Without proven trademark rights, that use could not be considered infringing or illegitimate under the Policy. Allegations of deception, ex-employee misconduct, and fake reviews were introduced only in the Reply and were not considered.
Finding no trademark rights, no bad faith registration, and no UDRP violation, the Panel denied the complaint outright. Moreover, it ruled that the case constituted Reverse Domain Name Hijacking, noting the Complainant’s failure to disclose that its U.S. registration was only on the Supplemental Register and its attempt to mislead the Panel about its rights.
Final decision: the UDRP was denied, and Miami Skyline Cruises was found guilty of Reverse Domain Name Hijacking.
Copyright © 2025 DomainGang.com · All Rights Reserved.ARBITRATION AND MEDIATION CENTER – ADMINISTRATIVE PANEL DECISION
Miami Skyline Cruises v. savy grant
Case No. D2025-31631. The Parties
The Complainant is Miami Skyline Cruises, United States of America (“United States” or “U.S.”), internally represented.
The Respondent is savy grant, United States, represented by AbrahamsenGrant L.L.C., United States.
2. The Domain Name and Registrar
The disputed domain name skylinemiamicruises.com is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2025. On August 13, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 14, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 14, 2025.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 15, 2025. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2025.
The Center appointed David H. Bernstein as the sole panelist in this matter on September 12, 2025. 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.
On September 16, 2025, the Respondent’s representative submitted a letter to the Center stating that the Respondent “received notifications but has not received proper notification of the claims of the claimant which [it] require[s] in order to file a detailed response.” In light of the Respondent’s representative’s September 16, 2025, letter, the Panel issued an order requesting that (1) the Center share its Notification of Complaint email (with its attachments) sent to the Parties on August 15, 2025, with the Respondent through its representative; (2) the Respondent provide a response by October 2, 2025; and (3) the Complainant provide any reply to the Respondent’s submissions by October 7, 2025.
The Respondent filed a 2-page letter response on October 2, 2025 (the “Response”). The Complainant filed a reply on October 6, 2025 (the “Reply”).
4. Factual Background
The Complainant, Miami Skyline Cruises, is a Florida corporation established on August 11, 2023. It is engaged in the provision of sightseeing and boat tour services in Miami, Florida.
The Complainant is the owner of the service mark MIAMI SKYLINE CRUISES (Reg. No. 7,628,367), which is registered on the Supplemental Register in the United States Patent & Trademark Office (“USPTO”), The registration certificate was issued on December 24, 2024 with a claimed date of first use of January 1, 2023, covering class 39, with a disclaimer to the exclusive right to use of “cruises” apart from the mark as shown. The Complainant is also the owner of the following Florida state trademark registrations:
– MIAMI SKYLINE CRUISES, Florida State Registration No. T24000001139, registered on October 1, 2024, covering class 39, with a disclaimer to the exclusive right to use of “miami” and “cruises” apart from the mark as shown.
– MIAMI SKYLINE CRUISES, Florida State Registration No. T24000001202, registered on October 10, 2024, covering class 41, with a disclaimer to the exclusive right to use of “miami” and “cruises” apart from the mark as shown.The Complainant owns the domain name miamiskylinecruises.com, registered on March 1, 2023, which resolves to a website at which the Complainant promotes its sightseeing and boat tour services.
The Respondent, savy grant, registered the disputed domain name, skylinemiamicruises.com, on February 17, 2024. The website to which the disputed domain name resolves promotes sightseeing and boat tour services, including those that compete with the Complainant’s cruises.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
First, the Complainant is the owner of the above-listed trademark registrations for MIAMI SKYLINE CRUISES and these registrations affirm the Complainant’s exclusive rights to the trademark. The Complainant has operated a website reachable through the domain name miamiskylinecruises.com since May 31, 2023. The Complainant has made substantial investments in developing its brand identity; these efforts demonstrate extensive use and recognition of the mark and establish robust common law rights. The disputed domain name, skylinemiamicruises.com, includes identical key terms “skyline,” “miami,” and “cruises,” and the structural alternation of the terms does not dispel the likelihood of confusion given that both Parties operate in the same industry and geographic location.
Second, the Respondent has no rights or legitimate interests in the disputed domain name because the Complainant has not licensed, permitted, or otherwise authorized the Respondent to use its trademark, the Respondent is not commonly known by the name “Skyline Miami Cruises,” and there is no evidence that the Respondent holds any rights to the name. Additionally, the Respondent’s use of the disputed domain name to promote the same services as the Complainant is not a bona fide offering of goods and services.
Third, the Respondent’s conduct constitutes bad faith registration and use for the following reasons: (1) the disputed domain name is a near-identical imitation of the Complainant’s mark and creates an overwhelming likelihood of consumer confusion; (2) the Respondent is offering identical sightseeing cruise services in the same geographic market; (3) the Respondent did not use or brand itself as “Skyline Miami Cruises” prior to the Complainant’s establishment of its brand and digital presence; (4) the Respondent’s intent appears to be to mislead the public into believing the site is affiliated with the Complainant, thereby exploiting the Complainant’s goodwill and reputation; and (5) the Respondent is benefiting from diverted traffic and potential bookings, causing economic harm and brand dilution for the Complainant. Further, there has been one instance of actual confusion. In July 2025, the Complainant received a misdirected inquiry from Expedia’s Credit Card Dispute Department regarding a cruise charge the Complainant had no record of. The only explanation for this incident is the similarity between the disputed domain name and the Complainant’s branding.
B. Respondent
The Respondent contends that it has been using the SKYLINE trademark since 2020 and was the first to use the MIAMI SKYLINE trademark in commerce.
The Respondent also contends that Junior Dominiguez, a principal of the Complainant, is a former employee of the Respondent. While Mr. Dominiguez was employed by the Respondent, he misappropriated the SKYLINE trademark and improperly registered the mark in his name in violation of his employment agreement. The SKYLINE MIAMI domain and trademark belong to the Respondent.
C. Complainant’s Reply
Through its Reply, the Complainant addressed the arguments raised by the Respondent. In addition, the Complainant reargued the contentions described above and introduced new evidence including evidence regarding alleged improper one star Google reviews of the Complainant’s services posted by individuals associated with the Respondent.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, to obtain transfer of a domain name, a complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the respondent’s domain name has been registered and is being used in bad faith
A. Identical or Confusingly Similar
The Complainant has not proven that it owns trademark rights in the mark MIAMI SKYLINE CRUISES. The Complainant’s service mark is registered on the USPTO Supplemental Register. Such a registration reflects a finding by the USPTO that, as of the time of the application, the mark was merely descriptive and lacked secondary meaning. Under United States law, marks that are merely descriptive, and that have not been shown to have acquired distinctiveness, may be registered on the Supplemental Register, but that registration does not evidence trademark rights and does not confer any of the usual presumptions that accompany a mark registered on the Principal Register (such as prima facie evidence of validity, ownership, and distinctiveness). Thus, the fact of a Supplemental Registration is no evidence whatsoever that the Complainant owns trademark rights in the name MIAMI SKYLINE CRUISES. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.2 (“under US law a supplemental registration does not by itself provide evidence of distinctiveness to support trademark rights.”).
The Complainant also owns two Florida state registrations for the mark MIAMI SKYLINE CRUISES. However, United States state registrations are not accorded the same deference as national trademark registrations and most often do not, on their own, satisfy the “rights in a mark” standing test of the Policy. Id. This is because most states offer trademark registrations as a simple ministerial or administrative function and do not conduct a thorough and substantive examination of applied-for marks. See Id. (“panels tend to carefully review certain types of automatic/unexamined registered trademarks such as US state registrations”).
The Complainant also claims “robust common law” trademark rights, but submits virtually no evidence to support that assertion. To establish common law rights, the Complainant would need to show that its mark has acquired distinctiveness through secondary meaning. Id. (“Complainants relying on trademark registrations listed solely on the USPTO Supplemental Register are expected to show secondary meaning in order to establish trademark rights under the Policy because under US law a supplemental registration does not by itself provide evidence of distinctiveness to support trademark rights.”). Secondary meaning can be demonstrated through 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.” Id., section 1.3. Where, as here, the mark is comprised solely of descriptive terms, “there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.” Id.
The Complainant has not demonstrated the requisite secondary meaning to establish trademark rights. The totality of the Complainant’s allegations of secondary meaning in the Complaint are as follows: “the Complainant has made substantial investments in developing its brand identity, including securing the ‘Miami Skyline Cruises’ name on major social media platforms such as Instagram, Facebook, YouTube, TikTok and Pinterest (Annex 5). These efforts demonstrate extensive use and recognition of the mark and establish robust common law rights.” Other than these conclusory allegations, the Complainant has not alleged or submitted factual evidence sufficient to establish secondary meaning. For example, the Complainant has not submitted evidence of sales revenues, advertising, unsolicited media attention, or brand recognition surveys to establish that consumers interpret the phrase MIAMI SKYLINE CRUISES as a designation of source as opposed to a descriptor. While the Complainant has provided some evidence of its presence on social media, this evidence merely shows that the Complainant operates several social media accounts, many of which have a limited number of followers. This evidence does not establish that the MIAMI SKYLINE CRUISES name has become a distinctive identifier. The absence of evidence sufficient to establish secondary meaning is fatal to an attempt to establish common law rights in a descriptive phrase. See WIPO Overview 3.0, section 1.3.
Given that the Complainant has failed to establish trademark rights, the Panel finds the first element of the Policy has not been established.
To be clear, the Panel is not finding that the Respondent has any rights in the mark MIAMI SKYLINE. Although the Respondent claimed common law rights in the MIAMI SKYLINE trademarks, the Respondent submitted no evidence or factual allegations in support of that bald claim. Nor did the Respondent submit any evidence to support its assertion that one of its former employees misappropriated the SKYLINE trademark and improperly registered the mark in his name in violation of his employment agreement. Furthermore, the Response did not include a certification as required by the paragraph 5(c)(viii) of the Rules, which, among other things, certifies that “the information contained in this Response is to the best of Respondent’s knowledge complete and accurate,” and that “this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law.” Given the absence of any supporting evidence or certified assertions of fact, the Panel disregards the unsupported allegations in the Response.
B. Rights or Legitimate Interests
The Complainant has not shown that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant bears the burden of proving that the Respondent lacks rights or legitimate interests in the disputed domain name. The evidence submitted by the Complainant undermines the Complainant’s assertions in this regard because it supports a finding that the Respondent was using the disputed domain name in connection with a bona fide offering of services since 2024. WIPO Overview 3.0, section 2.2. Specifically, the record supports a finding that the Respondent has been offering sightseeing and boat tour services through the disputed domain name. Although a use cannot be deemed bona fide if it constitutes trademark infringement, Nara Aziza Smith v. Vanessa Clarke, WIPO Case No. D2025-1839 (“an infringing use cannot be bona fide”), the Complainant has not made a showing of trademark infringement given that the Complainant has not shown that it owns relevant trademark rights that could be infringed.
The Complainant argues that the Respondent has no rights or legitimate interests because the Complainant never licensed, permitted, or otherwise authorized the Respondent to use its MIAMI SKYLINE CRUISES mark. However, as explained above, the Complainant has not shown that it has any trademark rights to license, permit, or otherwise authorize the Respondent to use. That the Respondent is using the disputed domain name to advertise services that compete with those offered by the Complainant does not, on its own, show that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has not established the second element of the Policy.
C. Registered and Used in Bad Faith
Because the Complainant has no trademark rights, it follows that the Respondent did not register the disputed domain name in bad faith targeting of the Complainant’s trademark rights. WIPO Overview 3.0, section 3.8.1 (“where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.”).
It may be that the Respondent has targeted the Complainant with its registration of the disputed domain name, which takes the three words of the Complainant’s domain name and presents them in a different order. To the extent the Respondent’s use of so similar a domain name has caused confusion, that is unfortunate. Any such confusion, though, may be the consequence of the fact that the Parties are using merely descriptive names for their competing businesses, each of which appears to lack trademark significance.
The Panel notes that, if the allegations made by the Complainant in its Reply are true, they suggest that the Respondent is engaged in unfair competition. It appears that the Respondent is engaged in a deliberate scheme to confuse consumers, to divert customers from the Complainant to the Respondent, and is posting false and deceptive fake reviews. As despicable as such conduct may be, such unfair competition falls outside of the purview of the Policy. It may be bad faith in a broader sense, or in a different forum, but it is not bad faith use of the disputed domain name to target the Complainant’s trademark rights. In any event, the Panel declines to consider this evidence because this evidence all could have been included in the Complaint, but it was only raised for the first time in the Complainant’s Reply, which meant that the Respondent did not have an opportunity to address this evidence in its Response.
Accordingly, the Panel finds that the Complainant has failed to establish the third element of the Policy.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that, if, after considering the submissions, the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
The Complainant represented in its Complaint that it owns a federal registration for the MIAMI SKYLINE CRUISES mark, but it did not clarify in the Complaint that the MIAMI SKYLINE CRUISES mark is registered only on the USPTO Supplemental Register. As explained above, and as the WIPO Overview 3.0 makes clear, the distinction between a U.S. registration on the Principal Register and the Supplemental Register is critical to the assessment of trademark rights. By failing to disclose that the MIAMI SKYLINE CRUISES registration is only on the Supplemental Register, the Complainant attempted to mislead the Panel as to its rights in the MIAMI SKYLINE CRUISES trademark.
Moreover, the Complaint in this case was extraordinarily weak. It is true that the mere lack of success of a complaint is not, on its own, sufficient to constitute Reverse Domain Name Hijacking. WIPO Overview 3.0, section 4.16. But, as demonstrated through the discussion above, this Complaint 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.
The Panel is cognizant of the fact that the Complainant is self-represented, and was not represented in these proceedings by counsel. That, however, cannot excuse an effort to abuse the UDRP process. 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.
The Panel also is aware of the principle that Reverse Domain Name Hijacking “is an equitable remedy that should not be granted in situations where the Respondent itself has engaged in questionable conduct.” Premium Blend, Inc. v. Michael Eymer, WIPO Case No. D2025-3012. Here, the Respondent may well have engaged in questionable conduct outside of the UDRP proceeding, but the Complainant failed to adequately allege that conduct in its Complaint under the Policy and only raised those issues for the first time in its Reply. As noted above, because the Complainant should have raised those issues in its Complaint, the Panel has declined to consider that evidence. Even if the Panel had considered this evidence, it would not have changed the Panel’s finding that there was no bad faith targeting of the Complainant’s trademark, nor would it have raised equitable issues related to the Respondent’s conduct in this proceeding or with respect to the Disputed Domain Name that undermine the basis for a finding of Reverse Domain Name Hijacking.
The Panel therefore finds that the Complainant’s attempt to mislead the Panel and its knowledge (or willful blindness) that it could not succeed as to the three elements support a finding of Reverse Domain Name Hijacking. WIPO Overview 3.0, section 4.16.
7. Decision
For the foregoing reasons, the Complaint is denied. The Panel further finds that the Complaint has been brought in bad faith and constitutes an attempt at Reverse Domain Name Hijacking.
/David H. Bernstein/
David H. Bernstein
Sole Panelist
Date: October 9, 2025
