national arbitration forum

 

DECISION

 

Harken, Inc. v. Cat Bitz

Claim Number: FA1105001387129

 

PARTIES

Complainant is Harken, Inc. (“Complainant”), represented by Andrew C. Landsman of Godfrey & Kahn, S.C., Wisconsin, USA.  Respondent is Cat Bitz (“Respondent”), represented by Andrew Morse, Malta.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <harken-online.com> ("the Domain Name"), registered with Tucows, Inc.

 

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.

 

Dawn Osborne of Palmer Biggs Legal as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 4, 2011; the National Arbitration Forum received payment on May 4, 2011.

 

On May 5, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <harken-online.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 May 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 2011 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@harken-online.com.  Also on May 5, 2011, 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 May 25, 2011.

 

An Additional Submission of the Complainant was received on May 31, 2011 in a timely manner in accordance with Supplemental Rule 7.

 

On June 1, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

The Complainant's submissions can be summarised as follows:

 

The Complainant, founded in 1967, is a manufacturer of quality sailboat hardware and accessories and has used the HARKEN mark in connection with its products and services and promoted that mark extensively since 1968. It has offices in 48 countries.

 

The Complainant owns registered trademarks for HARKEN for, inter alia, sail boat equipment in over twenty five countries including the USA and the European Community. It also owns several domain names including HARKEN including harken.com operated since 1997 and <harkenstore.com> and <harkensport.com>, as well as country specific HARKEN web sites.

 

Respondent registered the Domain Name on December 16, 2010 for a one year period. The site contains a small disclaimer, but the web site contains a very similar colour scheme and layout as the Complainant's web site and uses the Complainant's logo mark at the top of the web site (using an (R) symbol) as a banner without permission. The web site also uses images from the Complainant's current catalogue without permission.

 

The Complainant did sell to the Respondent in the past but not since 2008, two years before the Domain Name was registered.

 

The Domain Name is confusingly similar to the Complainant's HARKEN mark. It incorporates the HARKEN mark in its entirety save for the addition of a hyphen and the generic word "online". This does not sufficiently distinguish the Domain Name from the trade mark.

 

Respondent is passing itself off as the Complainant or its authorised distributor and, therefore, cannot have any rights or legitimate interests in the Domain Name. The Respondent has never been known itself as "Harken". Complainant has given no permission for use of its HARKEN mark. By using the Complainant's logo and trade dress and using photos from the Complainant's catalogue the Respondent is suggesting an endorsement or authorisation by the Complainant and has gone far further than is necessary to identify genuine products from the Complainant.  

 

The Respondent registered and used the Domain Name in bad faith. It has chosen a confusingly similar domain name and attached it to a site with similar trade dress and the Complainant's logo and photographs in order to confuse internet users.

 

B. Respondent

 

The Respondent's contentions can be summarised as follows:

 

The Domain Name is not confusingly similar to the HARKEN trade mark.

 

The layout of the site is a standard "Actinic ecommerce" template and there are several differences from the Complainant's site.

 

The images were obtained from suppliers, have been used on the Respondent's other websites since 2008 and are used by other re-sellers.

 

The Respondent still has stock of goods from the sale to it of goods in 2008 from the Complainant and buys the Complainant's goods from other distributors. The Respondent only sells the Complainant's goods.

 

The website makes it clear from the postal address, the disclaimer, the terms and conditions and the checkout page that the users are buying from the Respondent and not the Complainant.

 

The Respondent is not attempting to pass itself off as the Complainant in any way. It has a bona fide business selling genuine HARKEN products.

 

The Respondent is not a cybersquatter and is not trying to disrupt the business of the Complainant.

 

There is no confusion and the name has not been registered or used in bad faith.

 

C. Additional Submissions

 

The Complainant's Additional Submissions can be summarised as follows:

 

Whilst there are differences between the Respondent's web site and the Complainant's site, an unknowing consumer would readily be misled. There is use on the home page of the image of the front of the Complainant's catalogue and when clicked on this goes to the actual catalogue, the Respondent clearly intends to pass itself off as the Complainant.

 

Only authorised dealers can use the Complainant's trade mark as a domain name.

 

The disclaimer was only added after the Complainant contacted the Respondent to complain and is very small compared with the prominent use of the Complainant's trade mark and catalogue on the home page.

 

The Respondent's terms and conditions are difficult to find and do not disclose the lack of relationship between the Complainant and the Respondent. Harken Online appears 6 times in the terms and condition whereas Bitz Brands only appears twice. Users could well assume that Bitz Brands is part of the Complainant's group of companies.

 

The Complainant does not know if the Respondent is selling only products of its manufacture or if it is also selling products manufactured by others.

 

The Complainant has recently come across two instances of confused customers who contacted the Complainant after getting poor service from the Respondent and both of these occurred after the disclaimer was in place.

 

FINDINGS

 

The Complainant is a manufacturer of sailboat hardware and accessories and has used the HARKEN mark in connection with its products and services since 1968. The Complainant owns registered trademarks for HARKEN for sail boat equipment in more than twenty five countries including the USA and the European Community.

 

The Complainant did sell to the Respondent in the past but not since 2008.

 

Respondent registered the Domain Name on December 16, 2010. The Respondent put a disclaimer on the site. However, the web site uses the Complainant's logo mark at the top of the web site (using an (R) symbol) as a banner without permission. The web site also uses images from the Complainant's catalogue without permission.

 

The Complainant has put forward the names and details of two customers who have been confused by the Respondent's web site and contacted the Complainant in that regard.

 

DISCUSSION

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:

 

the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

Respondent has no rights or legitimate interests in respect of the domain name; and

the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Apart from the .com suffix which is not taken into account for the purposes of the Policy, the Domain Name consists of the Complainant’s HARKEN registered trade mark, a hyphen and the generic word “online”. The addition of a hyphen and the word “online” does not serve to distinguish the Domain Name from the Complainant’s mark. See Broadcom Corp v. Domain Depot FA 96854 (Nat. Arb. Forum Apr. 23 2001) (finding the broadcomonline.com domain name is confusingly similar to the complainant's BROADCOM mark); see also Jerry Damson Inc. v. Tex Intl Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) ("The mere addition of a generic top-level domain ("gTLD") ".com" does not serve to adequately distinguish the Domain Name from the mark.").

The Respondent does not appear to dispute the Complainant's Rights, but denies that the Domain Name is confusingly similar to the HARKEN trade mark under the terms of the Policy. The Panelist finds that the Domain Name is confusingly similar to the Complainant’s registered trade mark HARKEN for the reasons given above and as such the Complainant satisfies para 4(a) (i) of the Policy.

 

 

Rights or Legitimate Interests

 

The Panelist has had an opportunity to review the Respondent's web site and is of the opinion that it gives the impression that it is an official site of the Complainant. It was not clear to the panelist upon a quick review of the site that it was not the site of the Complainant or authorised. The use of the Domain Name in relation to a site using the Harken logo, a similar colour scheme to the Complainant's website and the Complainant's catalogue on the home page all give the impression that the user has found the Complainant. As such the disclaimer is not effective and nor would the postal address, the terms and conditions or the paypal screens be effective to avoid this confusion. See DaimlerChrysler Corp v. Bargman D2000-0222 (WIPO May 29, 2000) finding that addition of a disclaimer when the domain name consists of the complainant’s trade mark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant); see also Alta Vista Co. v. AltaVisa FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not and could not accompany the domain name the "domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer").

 

This opinion of the Panelist is reinforced by the details given by the Complainant of two customers confused into thinking the Respondent's site was linked to the Complainant.

 

As such the web site must be considered to be misleading and the Respondent passing itself off as connected with the Complainant. Passing off is evidence that the Respondent lacks rights or legitimate interests in the Domain Name. See Am. Int'l Group Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent's attempts to pass itself off as the Complainant online was evidence that the Respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v. Mosely FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding that the respondent's attempts to pass itself off as the complainant by implementing a color scheme identical to the Complainant's was evidence that the respondent lacked rights and legitimate interests.) As such the panellist finds that the Respondent lacks any rights or legitimate interests in the Domain Name. 

 

Registration and Use in Bad Faith

 

Having found that the Respondent's web site is confusing and misleading customers into believing it is associated with the Complainant and noting the details put forward by the Complainant of two customers confused by the Respondent's web site, the panelist believes that the Respondent is attempting to pass itself off as the Complainant and has intentionally attempted to attract for commercial gain internet users to its web site by creating a likelihood of confusion by using the Complainant's mark and logo as to the source or endorsement of its web site under Para 4 (b) (iv) of the Policy. As such the panellist finds that the Domain Name has been registered and used in bad faith.

 

The panelist finds as a matter of fact that the disclaimer and other uses of the Respondent's name on the web site do not mitigate this confusion.  See Continental Airlines Inc. v. Vartanian FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (Respondent's use of a disclaimer on its web site does not mitigate evidence of bad faith registration and use under the Policy); see also Auxilium Pharm Inc v. Patel,  FA 642141 (Nat. Arb Forum Apr. 6, 2006) (Respondent's use of a disclaimer on its web site does not mitigate evidence of bad faith registration and use under the Policy).

 

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 <harken-online.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Dawn Osborne, Panelist

Dated:  June 9, 2011