Delta T. Corporation v. Tina Grace
Claim Number: FA1507001629654
Complainant is Delta T. Corporation (“Complainant”), represented by Andrew D. Dorisio of KING & SCHICKLI, PLLC, Kentucky, USA. Respondent is Tina Grace (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <haikuhome.com>, registered with Webfusion Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Henrik af Ursin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 20, 2015; the Forum received payment on July 20, 2015.
On July 21, 2015, Webfusion Ltd. confirmed by e-mail to the Forum that the <haikuhome.com> domain name is registered with Webfusion Ltd. and that Respondent is the current registrant of the name. Webfusion Ltd. has verified that Respondent is bound by the Webfusion Ltd. 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 July 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 2015 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@haikuhome.com. Also on July 22, 2015, 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.
A timely Response was received and determined to be complete on August 10, 2015.
On August 13, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Henrik af Ursin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant has rights in the HAIKU mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,122,086, filed June 13, 2008, registered April 3, 2012). Respondent’s disputed <haikuhome.com> domain name is confusingly similar to Complainant’s HAIKU mark. The addition of the generic term “home” and the generic top-level domain (“gTLD”) “.com” do not distinguish the domain from Complainant’s HAIKU mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor is Respondent a licensee of Complainant. Further, Respondent’s use of the disputed domain name, to display advertisements for various third-party webpages, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and is using the domain name in bad faith. Respondent’s operation of the disputed domain name to direct internet users to third party advertisements including some relating to Complainant’s business, demonstrates that Respondent confuses and attracts internet users for commercial profit.
B. Respondent
Respondent contends as follows:
Respondent’s domain <haikuhome.com> is not confusingly similar because the word “haiku” is a generic word.
Respondent does not lack rights or legitimate interests in the disputed domain name because Respondent has no control over the use or the content of the <haikuhome.com> domain name.
Respondent’s registration is not in bad faith because Respondent registered the disputed domain name on June 24, 2011 which is almost a year before Complainant registered the HAIKU mark with the USPTO.
The Panel notes that the Complainant has rights in the HAIKU mark through its Federal US trademark registration (Reg. No. 4,122,086), which was filed prior to the registration of the at-issue domain name. The Panel also notes that the Complainant's trademark was first used in commerce on 20 January, 2012, as per the information provided on the USPTO trademark register.
Respondent has registered the domain name on June 24, 2011, prior to the first use in commerce by the Complainant.
There does not appear to be a connection between Respondent and Complainant nor are the parties affiliated. The Respondent is not authorized to use the Complainant's trademark nor is the Respondent known by the at-issue domain name.
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.
Complainant claims that Respondent’s disputed domain name is confusingly similar to the HAIKU mark in which it claims to have rights. Complainant contends that it has rights in the HAIKU mark based on registration of the mark with the USPTO (Reg. No. 4,122,086, filed June 13, 2008, registered April 3, 2012). Panels have consistently held that a complainant has adequately demonstrated rights in a mark based on registration with the USPTO. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)). Panels have also seen rights which date back to a mark’s filing date. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). The Panel finds that Complainant has rights in the HAIKU mark under Policy ¶ 4(a)(i).
Complainant also claims that Respondent’s domain <haikuhome.com> is confusingly similar to the HAIKU mark in which Complainant claims to have rights. Respondent’s domain differs from the HAIKU mark through the addition of the gTLD “.com” and the generic term “home.” As a general rule, the presence of a gTLD does not affect an analysis of confusing similarity. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
It has also been generally held that if a domain name is comprised of a mark and a generic term it is still confusingly similar to the mark. See Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to the complainant’s marks and likely to mislead Internet users into believing that products and services offered by the respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered).
The Panel concludes that Respondent’s disputed <haikuhome.com> domain name is confusingly similar to the Complainant's HAIKU mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent has no rights or legitimate interests in the <haikuhome.com> domain name. To support this claim Complainant contends that Respondent is not commonly known by the disputed domain name, nor is Respondent a licensee of Complainant. Indeed, Respondent’s WHOIS information identifies Respondent as Tina Grace, a name which bears no resemblance to the <haikuhome.com> domain name.
Further, Respondent has submitted no information indicating that it is commonly known by the disputed domain name. Panels have routinely held that a Respondent is not commonly known by a disputed domain name based on WHOIS and other information. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Further, Complainant argues that Respondent’s use of the disputed domain name, to display advertisements for various third-party webpages, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent appears to be using the disputed domain name to resolve to a parked webpage that displays a myriad of advertisements including some related to Complainant’s business. Panels have found that a respondent’s use of a parked website to display advertisements, including advertisements that compete with a complainant, is not a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
A domain name resolving to a landing page with links can be permissible, but such an arrangement does not automatically confer rights or legitimate interests arising from a bona fide offering of goods or services or from legitimate noncommercial or fair use of the domain name. The rights or legitimate interests are less likely conferred when the landing page contains links to third party websites with trademark holder's competitors' products or services.
An arrangement, in which a domain name resolves to a landing page, is usually considered permissible if the domain name consists of a generic term and it resolves to a landing page with links having a real and genuine connection to the generic term forming a part of the domain name. However, if the links derive value from a connection to the trademark in question, UDRP panels have often considered such use of a domain name to be unfair and creating misleading diversion.
As the contested domain name is used in connection with a landing page with links to third-party websites, some of which may be in direct competition with Complainant and the said landing page does not appear to have links or other relevant materials that have a real and genuine connection to the generic term in the domain name, the Panel concludes that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use.
Respondent contends that it has no control over the content of the <haikuhome.com> domain name, and does not commercially profit from its parking. However, it has been the opinion of several Panels that a domain name registrant is normally responsible for the content appearing on the website where the contested domain name resolves to, also in circumstances where the registrant may not be in direct control of the content. There is no reason in the present matter to not hold Respondent responsible for the content on the landing page where the contested domain name resolves to.
Considering the foregoing, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Complainant claims that Respondent’s registration and use of the disputed domain name is in bad faith. Complainant contends that Respondent’s operation of the disputed domain name, to direct internet users to third party advertisements including some relating to Complainant’s business, demonstrates that Respondent confuses and attracts internet users for commercial profit. Respondent’s <haikuhome.com> domain name displays several advertisements including links to “fans” and other related products.
Respondent contends that a finding of bad faith would be inappropriate because Respondent’s registration of the <haikuhome.com> domain name predates the registration of the HAIKU mark.
Complainant must demonstrate that the respondent both registered and
used the disputed domain name in bad faith. The Panel notes from the WHOIS information for the contested domain name that Respondent’s registration for the disputed domain name occurred on June 24, 2011 whereas Complainant’s HAIKU trademark was registered on April 3, 2012.
The Panel notes that Complainant's trademark application was filed on June 13, 2008, predating the contested domain name, which was registered on June 24, 2011. However, as per Complainant's trademark registration, the HAIKU trademark was first used in commerce on January 20, 2012 and subsequently registered on April 3, 2012. The Complainant has not demonstrated that it had used the trademark HAIKU prior to January 20, 2012, the date set forth in the USPTO trademark registration. In other words, when Respondent filed the contested domain name, Complainant only had a pending trademark application for the HAIKU trademark in the US and Complainant did not commence the use of the trademark until nearly a year later.
To satisfy the requirements set forth in the ¶ Policy 4(a)(iii) it is crucial that Respondent's awareness of Complainant's trademark is demonstrated as the essence of Complainant's allegations under ¶ Policy 4(a)(iii) must be an allegation of bad faith from the part of Respondent, targeted at Complainant. To be acting in bad faith, Respondent must have actual knowledge of the existence of the Complainant's trademark rights. Complainant's trademark was merely an application at the time when Respondent registered the contested domain name and the HAIKU trademark was not even in commercial use. There is no evidence to show that Respondent had actual knowledge of Complainant's trademark at the time when the contested domain name was registered nor are there any facts present which would make the Panel presume so.
The Panel finds that Respondent’s registration and use of the disputed domain name is not in bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <haikuhome.com> domain name REMAIN WITH Respondent.
Henrik af Ursin, Panelist
Dated: August 27, 2015
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