The Hoover Company v. Anti-Globalization
Domains
Claim
Number: FA0310000206360
Complainant is The Hoover Company (“Complainant”), 101 East Maple Street, North Canton,
OH 44720. Respondent is Anti-Globalization Domains
(“Respondent”), 5444 Arlington Ave. #g14, Bronx, NY 10471.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <hooverwindtunnel.com>, registered with Intercosmos
Media Group, Inc. d/b/a Directnic.Com.
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.
James A, Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on October 30, 2003; the Forum received a hard copy of the
Complaint on .
On
October 30, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed
by e-mail to the Forum that the domain name <hooverwindtunnel.com>
is registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that
Respondent is the current registrant of the name. Intercosmos Media Group, Inc.
d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos
Media Group, Inc. d/b/a Directnic.Com registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
November 7, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of November 28, 2003 by which Respondent could file a Response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@hooverwindtunnel.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
December 4, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Jmes A, Crary 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hooverwindtunnel.com>
domain name is confusingly similar to Complainant’s HOOVER and WINDTUNNEL
marks.
2. Respondent does not have any rights or
legitimate interests in the <hooverwindtunnel.com> domain name.
3. Respondent registered and used the <hooverwindtunnel.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
continuously and exclusively used the HOOVER mark since at least as early as
1920 in connection with goods and services related to appliances and
cleaning. Complainant has also used the
WINDTUNNEL mark in connection with electric vacuum cleaners since at least as
early as 1997.
In addition,
Complainant is the holder of Registration No. 2,352,193 registered with the
United States Patent and Trademark Office (“USPTO”) on May 23, 2000 for the
WINDTUNNEL mark. Complainant is also
the holder of numerous registrations for the HOOVER mark with the USPTO
including Registration No. 560,675 (registered on June 24, 1952) and
Registration No. 2,687,985 (registered on February 18, 2003).
On July 26, 2003
Respondent registered the <hooverwindtunnel.com> domain name. Respondent is using the domain name to
redirect Internet users to an anti-abortion website located at the
<abortionismurder.org> domain name, which features graphic anti-abortion
images.
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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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 has
established rights in both the HOOVER and WINDTUNNEL marks through registration
of the marks with the USPTO. See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
Respondent’s
domain name is merely a combination Complainant’s two marks with the addition
of the top-level domain “.com”. For
purposes of establishing confusing similarity between a domain name and a mark under
the Policy, Respondent’s addition of the top-level domain “.com” is not a
distinguishing difference. Furthermore,
Respondent’s combination of Complainant’s two marks, which are used to identify
Complainant’s goods and services, only adds to the likelihood that Internet
users will be confused by Respondent’s domain name. Thus, the Panel finds that Respondent has combined both of
Complainant’s marks in their entirety to create the confusingly similar domain
name, <hooverwindtunnel.com>.
See 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); see
also Nintendo of Am. Inc v. Pokemon,
D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where Respondent
combined Complainant’s POKEMON and PIKACHU marks to form the
<pokemonpikachu.com> domain name).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to submit a Response in this proceeding. As such, Respondent has not presented any circumstances
evidencing that it has rights or legitimate interests in the <hooverwindtunnel.com>
domain name. In addition, the Panel
accepts as true all allegations set forth in the Complaint. Thus, the Panel finds that Respondent lacks
rights and legitimate interests in the domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no
rights or legitimate interests with respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Bayerische Motoren
Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding
that in the absence of a Response the Panel is free to make inferences from the
very failure to respond and assign greater weight to certain circumstances than
it might otherwise do); see also Geocities
v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent
has no rights or legitimate interests in the domain name because Respondent
never submitted a Response or provided the Panel with evidence to suggest
otherwise).
As there is no
evidence before the Panel indicating that Respondent is commonly known by the <hooverwindtunnel.com>
domain name, the Panel finds that Respondent is not commonly known by the
domain name pursuant to Policy ¶ 4(c)(ii).
See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16,
2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has
been commonly known by the domain name prior to registration of the domain name
to prevail"); see also CBS
Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding
that Respondent failed to demonstrate any rights or legitimate interests in the
<twilight-zone.net> domain name since Complainant had been using the
TWILIGHT ZONE mark since 1959).
Respondent is
using the <hooverwindtunnel.com> domain name to redirect
unsuspecting Internet users to the politically-charged
<abortionismurder.org> website.
Respondent’s use of the domain name to divert Internet users to the
<abortionismurder.org> website is not in connection with a bona fide
offering of goods or services.
Furthermore, Respondent is not making a legitimate noncommercial or fair
use of the domain name by diverting Internet users to a website displaying
political views that are not necessarily the views of Complainant. Thus, the Panel finds that Respondent does
not have rights or legitimate interests in the domain name pursuant to Policy
¶¶ 4(c)(i) or (iii). See Rittehouse
Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8,
2002) (finding that, by linking the confusingly similar domain name to an
“Abortion is Murder” website, Respondent has not demonstrated rights or
legitimate interests in the domain name); see also Am. Nat’l Red Cross v.
Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (finding that the
appropriation of another’s mark to divert Internet traffic to
<abortionismurder.org> is neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use under the Policy).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered and is using the <hooverwindtunnel.com> domain name to
further its own political agenda by diverting Internet users, who are looking
for a website related to Complainant’s goods or services, to the
<abortionismurder.org> website which features offensive images and
anti-abortion propaganda. The Panel
finds that Respondent’s diversionary use of the domain name to promote its own
political views, while subjecting Internet users to graphic images is evidence
of bad faith in itself. See
McClatchy Mgmt Servs., Inc. v. Please DON'T Kill Your Baby, FA 153541 (Nat.
Arb. Forum May 28, 2003) (“By intentionally taking advantage of the goodwill surrounding
Complainant’s mark to further its own political agenda, Respondent registered
the disputed domain names in bad faith”); see
also Rittehouse Dev. Co. v. Domains For Sale, Inc., FA 105211
(Nat. Arb. Forum Apr. 8, 2002) (it has been consistently held that “when a
party registers and uses a domain name that incorporates a well-known mark and
connects the domain name with a website that depicts offensive images
that…party has registered and used the domain name in bad faith”).
Furthermore,
Respondent’s diversionary use of the <hooverwindtunnel.com> domain
name is likely to cause confusion among Internet users as to the source,
sponsorship, affiliation, or endorsement of the website. The Panel infers that Respondent is
receiving referral fees by diverting Internet traffic to the
<abortionismurder.org> website.
Thus, the Panel finds that Respondent registered and used the domain
name in bad faith under Policy ¶ 4(b)(iv).
See Journal Gazette Co. v. Domain For Sale Inc., FA 12202 (Nat.
Arb. Forum Oct. 9, 2002) (finding bad faith where “Respondent chose the domain
name to increase the traffic flowing to the <abortionismurder.org> and
<thetruthpage.com> websites”); see also Bank of Am. Corp. v. Out
Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that
“[s]ince the disputed domain names contain entire versions of Complainant’s
marks and are used for something completely unrelated to their descriptive
quality, a consumer searching for Complainant would become confused as to
Complainant’s affiliation with the resulting search engine website” in holding
that the domain names were registered and used in bad faith pursuant to Policy
¶ 4(b)(iv)).
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established
all three elements required under the ICANN Policy, the Panel concludes that
relief shall be GRANTED.
Accordingly, it
is Ordered that the <hooverwindtunnel.com> domain name be TRANSFERRED
from Respondent to Complainant.
James
A. Crary, Panelist
Dated:
December 18, 2003
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