DECISION

Biologische Heilmittel Heel GmbH v. Chuck Crews

Claim Number: FA0203000105902

PARTIES

The Complainant is Biologische Heilmittel Heel GmbH, Baden-Baden, Germany (“Complainant”), represented by Donna J. Bunton, of Nixon & Vanderhye P.C.  The Respondent is Chuck Crews, Chapel Hill, NC (“Respondent”) represented by John R. Rittelmeyer, of Hartzell & Whiteman, LLP.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <heel.com>, registered with Network Solutions.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.

Linda M. Byrne, Esq. as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on March 15, 2002; the Forum received a hard copy of the Complaint on March 18, 2002.

On March 18, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <heel.com> is registered with Network Solutions and that the Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On March 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 9, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@heel.com by e-mail.

A timely Response was received and determined to be complete on April 9, 2002.

On April 25, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Linda M. Byrne as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that Respondent’s domain name <heel.com> is confusingly similar to its trademark “-HEEL;” that Respondent does not have any rights or legitimate interest with respect to the domain name; and that the domain name was registered and is being used by Respondent in bad faith.

B. Respondent

Respondent concedes that  <heel.com> is confusingly similar to the

“-HEEL” trademark, but contends that it has used the domain name <heel.com> in connection with a bona fide offering of listserv services, and that Respondent did not register and use the domain name in bad faith.

FINDINGS

Complainant uses the trademark “-HEEL” as the house mark for a full line of homeopathic pharmaceutical preparations.  Complainant owns a U.S. trademark registration for “-HEEL,” which alleges that Complainant has been using the “-HEEL” trademark since 1978.  In addition, Complainant owns 86 other trademark registrations for the mark “-HEEL” in countries outside the United States.  The word “Heel” is a part of Complainant’s trade name, and the trade name of Complainant’s U.S. affiliate is Heel, Inc.  Complainant operates a website at <heelbhi.com> and <heelusa.com>, which provides Internet users with a variety of information relating to Complainant’s products.

On October 31, 1997, Respondent registered the domain name <heel.com> to serve as a site for an e-mail listserv, a place where interested parties could share and exchange their thoughts via e-mail.  The listserv sponsored by Respondent concerned the basketball team of the University of North Carolina, the “Tarheels.”  Respondent operated the listserv at <heel.com> for approximately two years, until 1999.  Since 1999, Respondent has had no website at   <heel.com>, other than a statement that the domain name is for sale and that potential buyers should contact Respondent.

Between September 13, 2001 and January 29, 2002, the parties (Complainant, Complainant’s U.S. affiliate, and Respondent) exchanged e-mails about the possible sale of the domain name to Complainant or Complainant’s U.S. affiliate.  In this exchange of e-mails, Complainant did not assert its trademark rights in “-HEEL,” and Respondent did not indicate that it had a continuing interest to use the domain name as either a listserv or in connection with any type of commercial or fair use.

The first e-mail, on September 13, 2001, was from Complainant’s U.S. affiliate to Respondent, stating that it was interested in buying <heel.com> and asking “how much it would cost to acquire it.”  In an e-mail dated October 19, 2001, Respondent stated, “The local university’s athletic teams have the nickname ‘Tar Heels’…I’ve always assumed a local sports marketer would want ‘heel.com’, but so far none has made a serious offer.  Of course, if your company wants to make a reasonable offer, I will entertain it!”  The last e-mail between the parties, dated January 29, 2002, was from the Respondent to Complainant’s U.S. affiliate, stating Respondent’s “need to get $20,000 for heel.com.”

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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

The Panel concludes that <heel.com> is confusingly similar to Complainant’s –HEEL mark.  The Respondent does not dispute the confusing similarity between the domain name and Complainant’s trademark.  In fact, the domain name incorporates the Complainant’s mark in its entirety, and is identical except for the addition of a hyphen.  Even though the disputed domain name does not include a hyphen, <heel.com> is confusingly similar to Complainant’s –HEEL mark.  The exclusion of the hyphen in the disputed domain name does not create a distinction necessary to overcome the confusing similarity between the disputed domain name and mark.  See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738  (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to Complainant's mark); see also Ritz-Carlton Hotel Co. v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that the domain name, <tippex.com> is confusingly similar to Complainant’s mark, TIPP-EX and that use of a hyphen does not negate likelihood of confusion); see also Adamovske Strojirny v. Tatu Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding confusing similarity between the <adast.com> domain name and Complainant’s three different marks, consisting of a combination of a symbol with the words “ADAST”, “ADAST dominant” and “ADAST maxima”).

Accordingly, this Panel finds that the domain name <heel.com> is confusingly similar to Complainant’s registered mark “-HEEL.”

Rights or Legitimate Interests

This Panel concludes that Respondent has not established any right or legitimate interest in the domain name.  Respondent has made no apparent use of the disputed domain name other than connecting it to a website that states “This Domain Is for Sale” for the past three years, and other than a listserv that discontinued operation in 1999.  Since Respondent requested $20,000 from Complainant in exchange for the disputed domain name, is appears that Respondent’s only use of the domain name is to sell it.  Therefore, the Panel finds that Respondent’s intentions do not demonstrate a right or legitimate interest in <heel.com> pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see alsoHewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).

Respondent is not commonly known as <heel.com> and thus, does not have a right or legitimate interest in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

For the above reasons, this Panel concludes that Respondent has no rights or legitimate interest in respect to the domain name <heel.com>.

Registration and Use in Bad Faith

This Panel finds that, since Respondent attempted to sell the disputed domain name to Complainant for $20,000 after months of negotiations, Respondent has registered the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i).  See World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs); see also Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy paragraph 4(b)(i) where Respondent stated in communication with Complainant, “if you are interested in buying this domain name, we would be ready to sell it for $10,000”); see also Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the Respondent offered to sell the Domain Name to the Complainant for $10,000 when Respondent was contacted by Complainant); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)  (finding that the attempted sale of a domain name is evidence of bad faith).

Furthermore, Respondent’s website proclamation that “This Domain Is for Sale,” and Respondent’s statement that it hoped to sell the disputed domain name to a “Tar heel” basketball fan is further evidence that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i).  See Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where the Respondent’s WHOIS registration information contained the words, “This domain name is for sale.”).

For the foregoing reasons, theis Panel concludes that Respondent registered and used the domain name <heel.com> in bad faith.

In summary, this Panel finds that <heel.com> is confusingly similar to Complainant’s

“-HEEL” trademark, that Respondent has no rights or legitimate interest in the <heel.com> domain name, and that Respondent has registered and used <heel.com> in bad faith.

DECISION

It is the decision of this Panel that the domain name at issue, <heel.com>, be transferred from Respondent to Complainant.

Linda M. Byrne, Esq., Panelist
Dated: May 9, 2002

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