Hennecke GmbH v. RadCom Domain Department
Claim Number: FA1209001463233
Complainant is Hennecke GmbH (“Complainant”), represented by William P. Glenn of Royston, Rayzor, Vickery & Williams, LLP, Texas, USA. Respondent is RadCom Domain Department (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <heneka.cc>, registered with Tucows, Inc.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 18, 2012; the National Arbitration Forum received payment on September 18, 2012.
On September 19, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <heneka.cc> 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 September 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 9, 2012 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@heneka.cc. Also on September 19, 2012, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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’s Allegations
1) Complainant owns a trademark registration with the United States Patent and Trademark Office ("USPTO") for the HENNECKE mark (Reg. No. 2,687,937 registered Feb. 18, 2003).
2) Respondent’s <heneka.cc> domain name is phonetically identical to the HENNECKE mark in German, and is an intentional misspelling of Complainant’s mark. The addition of the top-level domain “.cc” is irrelevant to distinguish the disputed domain name from Complainant’s mark.
3) Respondent is not commonly known by the disputed domain name and does not own any trademark or service mark encompassing the disputed domain name.
4) Respondent copied the substance of Complainant’s official website and replaced “most instances of ‘Hennecke’ with ‘Heneka.’” However, the website contact information has been changed.
5) Respondent registered and is using the disputed domain name in bad faith.
i. Respondent’s use of Complainant’s website information makes it clear that Respondent registered the disputed domain name primarily to disrupt the business of a competitor.
ii. Respondent’s mimicking of Complainant’s website is also evidence of bad faith under Policy ¶ 4(b)(iv).
B. Respondent
1) Respondent failed to submit a Response in this proceeding. The Panel notes that the Respondent registered the <heneka.cc> domain name on December 17, 2011.
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.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant asserts that it owns a trademark registration with the USPTO for the HENNECKE mark (Reg. No. 2,687,937 registered Feb. 18, 2003). The Panel finds that Complainant’s trademark registration with the USPTO is sufficient for Complainant to have established its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant also contends that Respondent’s <heneka.cc> domain name is phonetically identical to the HENNECKE mark as it is pronounced in German, and is an intentional misspelling of Complainant’s mark. Complainant argues that the addition of the top-level domain “.cc” is irrelevant to distinguish the disputed domain name from Complainant’s mark. The Panel notes that the “.cc” extension is actually a country-code top-level domain (“ccTLD”) for the Cocos Islands, but that in either case the addition of a top-level domain is irrelevant. See Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). See Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Nat. Arb. Forum July 15, 2004) (“Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).”).
Thus, Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent is not commonly known by the disputed domain name and does not own any trademark or service mark encompassing the disputed domain name. The Panel notes that Respondent is identified through the WHOIS registrant information as “RadCom Domain Department”, which the Panel notes is completely dissimilar to the <heneka.cc> domain name. Based upon such information, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent copied the substance of Complainant’s official website and replaced “most instances of ‘Hennecke’ with ‘Heneka.’” Further, Complainant contends that many of the hyperlinks on the resolving website actually remain as live links to Complainant’s <hennecke.com> website. Complainant states that Respondent’s website uses Complainant’s website information, but that the contact information has been changed. Even assuming that the disputed domain name provides links to Complainant’s official website, the Panel finds that Respondent is not making 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 Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (“[A]n unconnected party has no right or legitimate interest to use an otherwise deceptive trademark . . . even if it is directed to the legitimate owner of the trademark . . . .”). The Panel also finds that Respondent is attempting to pass itself off as Complainant and finds that such use is not 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 Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s mimicking of Complainant’s website, while substituting contact information, is evidence of bad faith under Policy ¶ 4(b)(iv). Complainant also asserts that Respondent’s attempts to pass itself off as Complainant is evidence of bad faith under Policy ¶ 4(b)(iv). The Panel agrees, and finds that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <heneka.cc> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: November 8, 2012
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