Hallelujah Acres, Inc. v. Manila Industries,
Inc.
Claim Number: FA0609000805029
Complainant is Hallelujah Acres,
Inc. (“Complainant”), represented by Neil
M. Batavia, of Dority & Manning Attorneys at Law, P.A.,
Post Office Box 1449, Greenville, SC 29602-1449. Respondent is Manila
Industries, Inc. (“Respondent”), represented by Daniel G. Altman, of Shrull Altman LLP, 1701 River Run, Suite 1116, Fort
Worth, TX 76107.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hacrs.com>,
registered with Compana, Llc.
PANEL
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.
Beatrice Onica Jarka as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 26, 2006; the National Arbitration Forum received a
hard copy of the Complaint on September 29, 2006.
On October 1, 2006, Compana, Llc confirmed by e-mail to the National
Arbitration Forum that the <hacrs.com>
domain name is registered with Compana, Llc and that the Respondent is the
current registrant of the name. Compana,
Llc has verified that Respondent is bound by the Compana, Llc 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 October 2, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 23, 2006 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@hacrs.com by e-mail.
An electronic copy of the Response was received by October 23,
2006. However, the National Arbitration
Forum did not receive a hard copy of the Response. Thus, the National Arbitration Forum does not consider this
Response to be in compliance with ICANN Rule #5(a).
Additional Submission was received on October 30, 2006 and it was
timely.
On November 1, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
asserts that:
§
the
Respondent’s <hacrs.com> domain name is confusingly similar to
Complainant’s HALLELUJAH ACRES and HACRES trademarks as well as to the
Complainant’s domain name <hacres.com>, because it is a misspelling of
the HACRES mark;
§
the Respondent
does not have any rights or legitimate interests in the <hacrs.com>
domain name, since use of the domain name is merely to direct Internet users to
a website that features links to a variety of websites, including websites that
offer the same or similar types of goods and services that Complainant offers.
In addition, the Respondent is not commonly known by the <hacrs.com>
domain name;
§
the Respondent
registered and used the <hacrs.com> domain name in bad faith, as
it can be inferred that Respondent had actual or constructive knowledge of
Complainant’s rights in the HALLELUJAH ACRES trademark because the mark is
recognized worldwide and has been registered with the USPTO; and
§
the Respondent
is unfairly and opportunistically benefiting from the goodwill associated with
Complainant’s HALLELUJAH ACRES and HACRES marks, as it is using the <hacrs.com>
domain name to direct Internet users to links for nutritional products on the
Internet, which is among other things, the Complainant’s business.
B. Respondent
As described
in the Procedural History, National Arbitration Forum did not receive a hard
copy of the Response. Thus, the
National Arbitration Forum does not consider this Response to be in compliance
with ICANN Rule # 5(a). The Panel cannot decide a complaint on
the basis of the statements filed contrary to the Policy ICANN Rule # 15(a). Nevertheless,
in this particular case the Panel shall refer indirectly to the
contentions in the Response as the Additional submission filed by the
Complainant in time refers to them. In addition, by doing so, the Panel is
giving due consideration to ICANN Rule # 10(b). For this reason, the Panel
shall summarize these contentious below, as follows:
The Respondent contends by the written
Response that:
§
the Complaint’s
has no established rights in the word “hacres” and in any event the two words
“hacres” and “hacrs” are not identical or confusingly similar. On December 17,
2004 when Respondent registered the <hacrs.com> domain name there
was no federally registered trademark for “hacres” or “hacres.com” and no
application for registration has been filed. In addition, the alleged typo of deleting “e” from the
domain name <hacres.com>, does not create an unknown term, but a commonly
used acronym for “Heating, Air Conditioning and Refrigeration” and in the
credit industry for “Honor All Cards Rules” fact which can be demonstrated by a
simple Google search;
§
it has rights
and legitimate interests in the disputed domain name as the Respondent uses it as an advertising portal that provides
access to a broad range of services. In addition, the fact that advertising
revenues may be generated by Respondent’s activity demonstrates a legitimate
interest;
§
it registered
the disputed domain because it believed it was an acronym to which no party had
established secondary meaning. It is a practice of the Respondent to register
thousands of names, looking for commonly used, generic, descriptive terms to
which no party had exclusive rights, including acronyms in common industry
usage a practice which evidences Respondent’s good faith intent to
register non-protected words;
§
Complainant has
not demonstrated that the domain name was registered and is being used in bad
faith.
C. Additional Submissions
By additional
submission, the Complainant further asserts:
FINDINGS
The Complainant
has rights in both HALLELUJAH ACRES and HACRES trademarks. There is a
similarity between the HALLELUJAH ACRES and the disputed domain name and a
striking similarity between HACRES and the disputed domain name.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
a. Complainant has rights in the
HACRES mark
Complainant has submitted evidence of federal trademark registrations for
the HALLELUJAH ACRES mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 2,101,432 issued
September 30, 1997; Reg. No. 2,077,460 issued July 8, 1997). The Panel finds that Complainant’s
trademark registrations for the HALLELUJAH ACRES mark with the USPTO
sufficiently demonstrate Complainant’s rights in the mark under Policy ¶
4(a)(i). See Mothers
Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003)
(the panel found that the complainant’s registration of the MADD mark with the
United States Patent and Trademark Office established the complainant’s rights
in the mark for purposes of Policy ¶ 4(a)(i)).
Also, Complainant has held the registration for the <hacres.com>
domain name since June 11, 1997. As a
result of this registration and use of the <hacres.com> domain name in
directing Internet users to Complainant’s website, it is the opinion of the Panel that the Complainant has
established common law rights in the HACRES mark pursuant to Policy ¶ 4(a)(i),
as the Complainant’s evidenced use of the HACRES mark sufficiently demonstrates
continuous and substantial use and that such use has established sufficient
secondary meaning in the mark. See Winterson v. Hogarth,
D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a
complainant’s trademark be registered by a government authority or agency in
order for the complainant to establish rights in the mark); see also Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL
BANK] in connection with its banking business, it has acquired rights under the
common law.”). Prior
panels have recognized “common law” trademark rights as appropriate for
protection under the Policy if the complainant can establish that it has done
business using the name in question in a sufficient manner to cause a secondary
meaning identifiable to Complainant’s goods or services. See
Molecular Nutrition, Inc. v. Network News & Publ'ns, FA 156715 (Nat.
Arb. Forum June 24, 2003) (finding that mere assertions of such rights are
insufficient without accompanying evidence to demonstrate that the public identifies
the complainant’s mark exclusively or primarily with the Complainant’s
products).
b. The Respondent’s <hacrs.com> domain name is confusingly similar to
Complainant’s HACRES mark
The Panel considers that Respondent’s <hacrs.com> domain name is confusingly
similar to Complainant’s HACRES mark, as the disputed domain name omits the letter
“e” to Complainant’s HACRES mark, and adds the generic top-level domain “.com.”
The Panel also finds that the disputed domain
name is similar to the HALLELUJAH ACRES mark as it comprises the first letter of the
first word of the mark and a misspelling of the last word of the mark. Is is
the opinion of the Panel that due to the similarity between the HALLELUJAH ACRES and the disputed domain name, any of Complainant’s
current and potential customers who have never visited Complainant’s web site
could mistype the domain name and arrive at <hacrs.com> and may
reasonably but erroneously believe that they have reached Complainant’s true
website.
In addition, despite the fact that
the disputed domain name may stand as an acronym for different issues, it is
the opinion of the Panel that as such does not convey a distinct and new meaning
from Complainant’s purported common law mark.
It is the Panel’s opinion that the
Complainant established a prima
facie case that Respondent lacks
rights or legitimate interests in connection with the disputed domain name
pursuant to Policy ¶ 4(a)(ii), as:
§
the Respondent
is not commonly known by the <hacrs.com> domain name
pursuant to Policy ¶ 4(c)(ii). See
M. Shanken Commc’ns, Inc. v. WORLDTRAVELERSONLINE.COM, FA 740335
(Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent is not commonly
known by the <cigaraficionada.com> domain name because the WHOIS
information lists the registrant of the domain name as as
“WORLDTRAVELERSONLINE.COM,” and no other evidence exists in the record
indicating that the respondent is known by the domain name); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name).
§
the Respondent
has not used the <hacrs.com> domain name in connection with either a bona
fide offering of goods or services in accord with Policy ¶ 4(c)(i), or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), because
the disputed domain name resolves to a website that provides links to
third-party websites that directly compete with Complainant’s business. See TM Acquisition Corp. v. Sign
Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (the panel found that the
respondent’s diversionary use of the complainant’s marks to send Internet users
to a website which displayed a series of links, some of which linked to the
complainant’s competitors, was not a bona fide offering of goods or
services). Moreover, in Ticketmaster
Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001), the panel did
not find rights or legitimate interests where the respondent generated
commercial gain by intentionally and misleadingly diverting users away from the
complainant’s website to a competing website).
The Panel considers that the
Respondent registered and is using the <hacrs.com> domain name for
the purpose of diverting Internet users to Respondent’s website for
Respondent’s commercial gain. Furthermore, The
Panel agrees to the Complainant’s allegations that the Respondent is using the <hacrs.com> domain name to direct Internet users to links for nutritional products
similar to those offered by Complainant’s business, and by this is disrupting
Complainant’s business. See Red
Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding
that the respondent engaged in bad faith registration and use pursuant to
Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial
search engine with links to the products of the complainant and to
complainant’s competitors, as well as by diverting Internet users to several
other domain names); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii)
[and] (iv).”).
In addition the many decisions of WIPO and NAF under the Policy that found Respondent to have registered and used domain names in bad faith is further indication of bad faith registration and use in this case which establishes in the opinion of the Panel a pattern of cybersquatting. (See Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
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 <hacrs.com>
domain name be TRANSFERRED from Respondent to Complainant.
Beatrice Onica Jarka Panelist
Dated: November 15, 2006
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