Hennessy Industries, Inc. v. Private Whois Service c/o ammco.com
Claim Number: FA 1360143
Complainant is Hennessy Industries, Inc. (“Complainant”), represented by R. Parrish Freeman of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Private Whois Service c/o ammco.com (“Respondent”), represented by James Martinson, Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ammco.com>, registered with Internet.bs Corp.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.)as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 23, 2010; the National Arbitration Forum received payment on November 23, 2010.
On November 25, 2010, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <ammco.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 December 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 2010 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@ammco.com. Also on December 2, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 December 7, 2010.
A timely Additional Submission by Complainant was received and determined to be complete on December 10, 2010.
A timely Additional Submission by Respondent was received and determined to be complete on December 13, 2010.
All submissions were considered by the Panel.
On December 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Hennessy Industries, Inc. (“Hennessy” or “Complainant”) is an international aftermarket wheel service manufacturer.
Complainant has registered the AMMCO mark with the U.S. Patent and Trademark Office under 7 Registration Numbers. Complainant had been using the AMMCO trademark in the United States and around the world since at least 1930 and has invested substantially in marketing the goods its sells under the AAMCO brand name. As a result, the AMMCO trademark has become synonymous with quality wheel service products.
Respondent registered the domain name on February 6, 2006. It is currently active and resolves to a pay-per-click (”PPC”) page featuring under the heading “Sponsored Listings for AAMCO” several hyperlinks to the websites of parties who are not affiliated with Complainant.
Respondent’s domain name contains the word “ammco” in its entirety and is therefore identical to the AMMO trademark.
Respondent has no rights or legitimate interest in the domain name. Respondent is neither a licensee of Complainant nor is it otherwise authorized to use the AMMCO mark.
Respondent cannot contend that it is commonly known by or identified with the domain name. AMMCO is an invented word that has no meaning other than to serve as a trademark.
Respondent is not commonly known by the name AMMCO, is not engaged in a bona fide commercial use or a non-commercial fair use of Complainant’s mark, and Complainant has not in any manner authorized Respondent to use its mark.
At the time Respondent registered the domain name, Respondent was aware of Complainant’s trademarks. Given the federal registrations and the renown of the AMMCO mark, there can be no question of Respondent’s bad faith in registering the domain name at issue, one that is comprised solely of Complainant’s AMMCO mark.
Respondent uses the domain name to resolve to a pay-per-click search site that diverts Internet users searching for Complainant’s AAMCO brand goods to the sites of retailers offering other, sometimes competing goods.
Respondent may attempt to argue that the Registrar, not the Respondent, posted the PPC site and that the Respondent does not collect and click-through fees. This contention, even if true, does not cure Respondent’s bad faith, because Respondent, as the registrant, is the party ultimately responsible for the content of the site to which the domain name resolves.
B. Respondent
The Respondent concedes that the domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Respondent acquired the subject domain name at a Snapames.com domain name auction on February 9, 2006 for the amount of $1050.00 after it expired and was deleted and was then re-registered by Snapnames.com and placed for auction. Complainant took no action until now – almost five years later – to enforce its purported trademark rights.
AMMCO is a common generic term composed of the three letters “amm” and “co”, which is an abbreviation for the common generic word “company”. The mere registration of domain names that contain generic terms establishes a legitimate interest under the Policy, provided the domain was not registered with a trademark in mind. The case for legitimate interest is even stronger where, as here, the following Google search is performed “ammco –brake –tire –car –tool –coats –wheel –hennessy” (ammco removing references to brake, tire, car, tool, coats, wheel, and hennessy).
There is no evidence the disputed domain was registered with Complainant’s trademark in mind. Respondent’s legitimate interest is also supported by the fact that Respondent has registered a number of domain names which like <ammco.com> incorporate generic letters and words together with the abbreviation “co” for the word “company”.
Links related to Complainant’s goods and services have appeared on Respondent’s web site. But these were not intended by Respondent and, thus, do not make Respondent’s interest illegitimate. Respondent did not select the links and was unaware of the links until it received this complaint.
Respondent hosts the disputed domain with HitForm.com, a domain name monetization service, which displays pay-per-click advertising links on hosted domain names and shares advertising revenues earned from the ads with the domain name owners. HitFarm populates the links on the domain names it hosts with a sponsored advertising feed from Yahoo. The links are generated automatically by Yahoo and HitFarm’s technology based on the contextual meaning of the terms within the domain name.
After Respondent became aware of the links from this complaint, it took action to have them removed by converting the site to a generic search page.
Respondent has acted in good faith at all times and because they were unintended, the links do not make Respondent’s interest illegitimate.
There is absolutely no evidence of bad faith registration or use. Respondent had no knowledge of Complainant’s alleged mark when it registered the disputed domain. Respondent simply registered the domain because it incorporated a common generic term and because it was offered for sale at a SnapNames.com expired domain name auction.
The term “ammco” is subject to substantial third party use. This includes 33,400 third party Google search results. Absent direct proof that a common term domain name was registered solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration and use.
Respondent should also be found to have registered the disputed domain in good faith since it was purchased at a public SnapNames expired domain name auction. The expiration of a domain name is a signal that any trademark claim to the domain name was abandoned and that the domain name could be registered in good faith.
The delay in taking action raises an inference that the Complainant did not believe Respondent engaged in bad faith registration.
C. Additional Submissions
Complainant
AMMCO is not a “common generic term” or “common dictionary term” to use the language of established UDRP precedent.
Internet search results Respondent provides underscore the fact that AMMCO is not a common dictionary term but rather is a trademark. None of Respondent’s evidence supports its contention of commonality.
Respondent’s admitted inclusion of links about Complainant’s goods and services provide the best evidence that AMMCO is best known as a trademark, not as a common dictionary term.
There is no evidence to suggest that Respondent makes any good faith effort to avoid registering and using domain names that are identical or confusingly similar to trademarks held by others. On thirty-four separate occasion over the part two years previous UDRP Panels have found Respondent to have registered and used domain names in bad faith. The list of domain names targeted by Respondent includes some of the most famous trademarks in the world: HILTON, DISNEY, BUDWEISER, DIRECTV, RALPH LAUREN, and HARLEY DAVIDSON.
Respondent has serially registered trademarked domain names and is subject to an inference of knowledge of Complainant’s trademarks. The interference is strongly supported by the admitted fact that Respondent paid $1,050 for the <ammco.com> domain name. Any domain name priced this high should alert anyone who has ever registered an Internet domain name, not to mention a practiced and sophisticated domainer such as the Respondent, of the existence of trademark rights.
Complainant took action shortly after learning of Respondent’s registration and of the existence of the UDRP procedure.
Respondent
AMMCO can be broken into 2 parts. AMM which is a pronounceable generic 3 letter acronym which has 44 verified meanings at http://www.acronymfinder.com/AMM.html and an additional 177 meanings from their “Acronym Attic” located at http://www.acronymattic.com/AMM.html. The second part of AMMCO is the 2 pronounceable letters “CO” which is an abbreviation for the generic dictionary word “Company”. There is no proof that Respondent targeted Complainant’s mark when bidding on this domain, Respondent was purchasing a pronounceable generic 3 letter acronym followed by the letters “CO” with hundreds of possible meanings and tens of thousands of third party uses as a simple Google search shows.
Respondent’s company “Domain Kingdom” registers its domain at several different registrars. There is no proof that any of the UDRP’s in Complainant’s supplemental Annex 1 were against “Domain Kingdom” which is the actual Respondent in this case.
Domains such as AMMCO.COM attract many bidders and their cost is high at auction because of their generic nature. Because they could have so many different meanings and third party uses it is impossible to have any trademark issues. This domain was expired, deleted and re-registered by Snapnames when it was placed up for auction. These are additional reasons why the Respondent targeted acquiring this domain name at auction.
The circumstances of this case support a decision for the Respondent based on laches.
For the reasons set forth below the Panel finds Complainant is entitled to the relief requested.
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, Hennessy Industries, Inc., claims to own rights in its AMMCO mark under Policy ¶ 4(a)(i). Previous panels have held that a complainant may establish rights in a mark by registering the mark with a federal trademark agency, even if the trademark is not registered within the country that the respondent resides in. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Complainant provides evidence of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its AMMCO mark (e.g., Reg. No. 933,943 issued May 16, 1972) in connection with wheel service products. Thus, the Panel finds that Complainant has established rights in its AMMCO mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <ammco.com> domain name is identical to Complainant’s AMMCO mark. Past panels determined that a disputed domain name is identical to a complainant’s mark even after the addition of a generic top-level domain (“gTLD”). 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); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that the respondent’s <treeforms.com> domain name is identical to the complainant’s TREEFORMS mark). Complainant alleges that the only difference between the disputed domain name and Complainant’s mark is the addition of the gTLD “.com.” Consequently, the Panel concludes that Respondent’s <ammco.com> domain name is identical to Complainant’s AMMCO mark pursuant to Policy ¶ 4(a)(i).
Respondent, Private Whois Service c/o ammco.com, makes no contentions with regards to Policy ¶ 4(a)(i) and concedes that the disputed domain name is identical to Complainant’s mark.
Complainant has proven this element.
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 argues that Respondent has no rights or legitimate interests in the <ammco.com> domain name under Policy ¶ 4(c)(ii). Previous panels have found that even if the WHOIS information is similar to the disputed domain name, a respondent is still not commonly known by the disputed domain name if the respondent fails to present any further evidence and the complainant asserts that it has not authorized the respondent to use the complainant’s mark. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”). The WHOIS information identifies the domain name registrant as “Private Whois Service c/o ammco.com.” Complainant asserts that Respondent is not a licensee of Complainant and that Respondent is not authorized to use Complainant’s AMMCO mark. Based on past precedent, the Panel finds that Respondent is not commonly known by the <ammco.com> domain name, and therefore lacks rights and legitimate interests, under Policy ¶ 4(c)(ii).
According to Complainant, Respondent uses the <ammco.com> domain name to resolve to a website that features hyperlinks resolving to Complainant’s competitors. Complainant contends that Respondent commercially benefits from the hyperlinks. Prior panels have held that a respondent’s use of an identical or confusingly similar disputed domain name to resolve to a website featuring hyperlinks to a complainant’s competitors is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name 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).”); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel finds that Respondent is not using the domain name to make a bona fide offering of goods or services.
While Respondent claims that it did not intend the website resolving from the <ammco.com> domain name to feature competing hyperlinks, Complainant argues that Respondent is ultimately responsible for the use of the disputed domain name. Previous panels have found similarly. See St. Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); see also Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (“The respondent contends that the advertisements in this case were ‘generated by the parking company’. The implication is that the respondent was not responsible for the content of these advertisements. This may well be correct but in the panel’s view this makes no difference. The respondent placed the Domain Name with a parking company in circumstances where it would have been aware that those using the Domain Name were likely to have mistyped the complainant’s name.”). The Panel finds that Respondent is responsible for the content found on the resolving website.
Complainant has proven this element.
Complainant alleges that Respondent’s use of the <ammco.com> domain name disrupts Complainant’s business by featuring hyperlinks to Complainant’s competitors. Prior UDRP panels have held that a respondent’s use of a disputed domain name to resolve to a website containing hyperlinks to a complainant’s competitors disrupts a complainant’s business and constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors). The Panel agrees with the decisions of prior panels and finds that Respondent’s use of the <ammco.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
According to Complainant, Respondent is attempting to commercially benefit from the aforementioned hyperlinks which is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). Past panels have concluded that a respondent’s use of a disputed domain name to feature hyperlinks to a complainant’s competitors constitutes bad faith registration and use under Policy ¶ 4(b)(iv), if the respondent attempts to commercially benefit by creating confusion among Internet users as to the complainant’s affiliation with the disputed domain name. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Complainant alleges that Respondent does receive click-through fees from the featured hyperlinks and that Internet users may become confused as to Complainant’s affiliation with the disputed domain name and resolving website. Thus, the Panel finds that Respondent’s registration and use of the <ammco.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Just as the Panel has found above that Respondent is responsible for the content of the resolving website, the Panel finds similarly under Policy ¶ 4(a)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent. [The] respondent has given those service providers permission to use the Disputed Domains . . . . [The] respondent has expressly authorized the activities being carried on by the domain parking service providers, either specifically or by carte blanche. It must be presumed that [the] respondent is aware of the general nature of the services provided by those organizations and the business model that they employ . . . . The key fact here is that [the] respondent, in collaboration with the domain parking service providers, is exploiting [the] complainant's goodwill.”); see also Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (Nat. Arb. Forum Dec. 3, 2007) ( “Respondent has established that it does not receive any of the revenues from the click-through fees from the links displayed on the websites that resolve from sites associated with the domain names at issue. These revenues accrue to the domain name registrar who offers a "parking service" for domain holders until they are ready to post their own content. However, [the] respondent has a choice to resolve the domains to blank or noncommercial pages and has chosen not to do so. In doing so, [the] respondent is spared the cost of website hosting fees, which inures to [the] respondent's commercial benefit. Therefore, [the] respondent has allowed the domains to be used to attract, for commercial gain, Internet users who may be confused as to [the] complainant’s affiliation with those sites. To a majority of the Panel, this is sufficient evidence of [the] respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ammco.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: January 17, 2011
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