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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Harsco Corporation v Wesselius
Claim Number: FA0007000095295
PARTIES
The Complainant is Harsco Corporation, Camp Hill, PA, USA ("Complainant"). The Respondent is Wesselius ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain names at issue are "HECKETT.COM," "HECKETT.NET," and "HECKETT.ORG," registered with Network Solutions Inc. ("NSI").
PANELIST(s)
The Panelist 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 the panelist in this proceeding.
Judge Irving H. Perluss (Retired) is the Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/27/2000; The Forum received a hard copy of the Complaint on 07/25/2000.
On 07/28/2000, NSI confirmed by e-mail to The Forum that the domain names, "HECKETT.COM", "HECKETT.NET", and "HECKETT.ORG", are registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Dispute Resolution Policy ("Policy").
On 08/02/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/22/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail. It was also e-mailed to postmaster@heckett.com, postmaster@heckett.net, and postmaster@heckett.org.
On 09/11/2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Judge Irving H. Perluss (Retired) as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain names be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. The domain names "HECKETT.COM," "HECKETT.NET," and "HECKETT.ORG" are confusingly similar to the Complainant’s famous and distinctive marks. The name "HECKETT" was used in commerce by one of the predecessor companies of Complainant since the 1930s, and Complainant "HECKETT MULTISERVE" itself has been operative after merger since 1993. Complainant has registered or has pending registrations of at least 25 of its trademarks in South America, Mexico, Trinidad and the United States, long before Respondent registered the domain names in issue on March 28, 2000.
2. Respondent has no rights or legitimate interest in the domain names because the names consist predominantly of Complainant’s world-famous and distinctive marks.
3. Respondent has registered and used the domain names in bad faith because he is holding the domain names for sale and he is "shopping around" to obtain the best price for them.
B. Respondent
1. The domain names in issue are not identical or confusingly similar to Complainant’s marks. The Complainant’s name is not "HECKETT", but "HECKETT MULTISERVE."
2. Respondent does have rights and a legitimate interest in the domain names because the name "HECKETT.COM" was registered at the Amsterdam Chamber of Commerce on May 22, 2000.
3. The names were not registered and will not be used in bad faith. Respondent planned a website where foreign customers could register domain names. He chose an American name "HECKETT" not knowing there was a company with that name. On discovery, he tried to contact Complainant. Failing to receive an ultimate response, he has incurred expenses in preparing to establish a website.
FINDINGS
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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.
Identical and/or Confusingly Similar
In the Panelist’s opinion, Complainant’s trademarks, while in some instances not identical, are confusingly similar. Each mark contains the name "HECKETT." Moreover, the marks have acquired a famous world wide and distinctive secondary meaning, certainly in the world wide steel and metallurgical industries.
Rights or Legitimate Interests
The "Policy" in Paragraph 4(c) informs a Respondent that, without limitation, rights to and legitimate interest in the domain name may be demonstrated, for purposes of Paragraph 4(a)(ii), as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Panelist cannot find that Respondent could demonstrate any of the factors listed, nor can he establish any other basis for finding that he has rights and a legitimate interest in the domain names.
The recently enacted Anticybersquatting Consumer Protection Act (‘ACPA") [15 U.S.C. §1125(d)] protects owners of a famous mark (as here) from a person who registers or uses a domain name that is confusingly similar to the mark or dilutive of the mark, if such person has a bad faith intent.
Registration and Use in Bad Faith
It is difficult to determine credibility from only a written record. Nevertheless, in the Panelist’s view, it simply is unreasonable, objectively, to believe that Respondent did not know of Complainant’s famous and distinctive trademark when he registered the domain names. In any event, a simple trademark check would have informed him.
Professor McCarthy in his treatise 4 McCarthy, Trademarks and Unfair Competition (4th ed. updated 6/2000) at pages 25-211, speaks of the analogous "Reasonable Belief Defense" set forth in ACPA, 15 U.S.C. §1125(d)(1)(B)(ii), as follows:
The ‘Reasonable Belief’ Defense. Lanham Act §43(d)(1)(B)(ii) creates an unusual defense to cybersquatting liability if the court determines that the defendant ‘believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.’ This might be dubbed the ‘pure heart and empty head defense’ because it might appear to reward the cybersquatter who intended no harm and mistakenly thought that his or her conduct was lawful. This defense has the potential to reward both the ignorance of the law and unawareness of the fact that cybersquatting violates widely accepted standards of fair competition. Therefore, a court should, in the author’s view, make use of this ‘reasonable belief’ defense very sparingly and only in the most unusual cases. That is, the court should place emphasis on the phrase ‘had reasonable grounds to believe’ that the conduct was lawful, focusing primarily upon the objective reasonableness and credibility of the defendant’s professed ignorance of the fact that its conduct was lawful. Otherwise, every cybersquatter would solemnly aver that its conduct was lawful. [Emphasis in original.]
Respondent has offered to sell the domain names in issue to Complainant. He, indeed, is "shopping around" for the best price.
This is classic "cybersquatting" demonstrating bad faith registration and use condemned by court decisions. [Panavision Int’l, L.P. v. Toeppen (9th Cir. 1998) [1998] USCA9 991; 141 F.3d 1316, 1325); by "ACPA" [15 U.S.C. §1125(d)(1)(A) and (1)(B)(i)(vi), and by the "Policy" [Paragraph 4b(i).]
DECISION
Based on the above findings and conclusions, and pursuant to Rule 4(i), it is decided that the domain names "HECKETT.COM," "HECKETT.NET," and "HECKETT.ORG" registered by Wesselius shall be transferred to Complainant Harsco Corporation.
Judge Irving H. Perluss (Retired)
Dated: September 25, 2000
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URL: http://www.worldlii.org/int/other/GENDND/2000/1146.html