Huntsman Corporation and Huntsman International, LLC v. VistaPrint Technologies Ltd
Claim Number: FA1610001700564
Complainant is Huntsman Corporation and Huntsman International, LLC (“Complainant”), represented by Steven M. Espenshade of Pirkey Barber PLLC, Texas, United States. Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <huntsmancorporation.com>, registered with Tucows Domains 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 31, 2016; the Forum received payment on October 31, 2016.
On October 31, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <huntsmancorporation.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 October 31, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 2016 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@huntsmancorporation.com. Also on October 31, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 23, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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" 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 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.
Preliminary Issue: Multiple Complainants
In the instant proceeding, there are two Complainants: Huntsman Corporation and Huntsman International, LLC. Complainant asserts that Huntsman International, LLC is a wholly-owned subsidiary of Huntsman Corporation. Complainants share the same address, telephone number, and e-mail address. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. See Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006) (“It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.”) See also Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), ( (The panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the domain names). See also Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004) ( the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark).
The Panel has determined that the evidence in the Complaint establishes a sufficient nexus or link between the Complainants and therefore, will treat them all as a single entity in this proceeding.
A. Complainant
Complainant is a leading global chemical producer and manufactures products for a variety of global industries, including plastics, chemicals, automotive, aviation, textiles, footwear, paints and coatings, construction, technology, agriculture, health care, detergent, personal care, furniture, appliances, and packaging. Complainant has registered the HUNTSMAN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,039,875, registered Feb. 25, 1997), which demonstrates Complainant’s rights in its mark.. Respondent’s <huntsmancorporation.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the generic term “corporation” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name at issue, and Complainant has not licensed or otherwise permitted Respondent to use its mark. Further, Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s domain name resolves to a page featuring the message “Websites are FREE at www.vistaprint.com/websites,” which links to Respondent’s homepage.
Respondent registered and is using the domain name in bad faith. First, Respondent has been the subject of over thirty adverse UDRP decisions. Second, Respondent uses its domain name to divert Internet users from the website of Complainant to that of Respondent. Third, based on Complainant’s numerous trademark registrations for the HUNTSMAN mark, it is clear that Respondent registered the domain name with at least constructive knowledge of Complainant’s mark and rights therein.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <<huntsmancorporation.com> domain name.
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(f), 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 (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 is a leading global chemical producer and manufactures products for a variety of global industries, including plastics, chemicals, automotive, aviation, textiles, footwear, paints and coatings, construction, technology, agriculture, health care, detergent, personal care, furniture, appliances, and packaging. Complainant has registered the HUNTSMAN mark with the USPTO (e.g., Reg. No. 2,039,875, registered Feb. 25, 1997), which Complainant contends demonstrates its rights in the mark. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i), with respect to the geographic disparity of the parties. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Therefore, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <huntsmancorporation.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the generic term “corporation” and the “.com” gTLD. Panels have agreed. See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved 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 (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 (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 alleges that Respondent has no rights or legitimate interests in the domain name. According to Complainant, Respondent is not commonly known by the domain name, and Complainant has not licensed or permitted Respondent to use its mark. The WHOIS information merely lists “VistaPrint Technologies Ltd” as registrant and Respondent has failed to provide evidence for the Panel’s consideration. As such, the Panel finds no basis in the record to find Respondent commonly known by the domain name per Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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 argues that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant maintains that Respondent’s domain name resolves to a page featuring the message “Websites are FREE at www.vistaprint.com/websites,” which links to Respondent’s homepage. Panels have decided that a respondent’s use of a domain name to divert Internet users searching for a complainant’s website to that of the respondent does not constitute 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). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Thus, the Panel finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant has proved this element.
Complainant asserts that Respondent has been the subject of over thirty adverse UDRP decisions. Panels have held that prior UDRP proceedings against a respondent are sufficient evidence of a pattern of bad faith under Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)). Therefore, the Panel finds that Respondent has engaged in a pattern of bad faith under Policy ¶ 4(b)(ii).
Complainant claims that Respondent uses its domain name to divert Internet users searching for the website of Complainant to that of Respondent. Panels have determined that such use of a domain name by a respondent is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). As such, the Panel finds that Respondent registered and is using the domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant contends that, based on its numerous trademark registrations for the HUNTSMAN mark, it is clear that Respondent registered the domain name with at least constructive knowledge of Complainant’s mark and rights therein. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant has proved 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 <huntsmancorporation.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: December 1, 2016
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