DECISION

The Hoover Company v. Anti-Globalization Domains

Claim Number:  FA0310000206360

PARTIES

Complainant is The Hoover Company (“Complainant”), 101 East Maple Street, North Canton, OH 44720.  Respondent is Anti-Globalization Domains (“Respondent”), 5444 Arlington Ave. #g14, Bronx, NY 10471.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hooverwindtunnel.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.

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.

James A, Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 30, 2003; the Forum received a hard copy of the Complaint on .

On October 30, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the Forum that the domain name <hooverwindtunnel.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.Com 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 November 7, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 28, 2003 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@hooverwindtunnel.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On December 4, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jmes A, Crary 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."  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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <hooverwindtunnel.com> domain name is confusingly similar to Complainant’s HOOVER and WINDTUNNEL marks.

2. Respondent does not have any rights or legitimate interests in the <hooverwindtunnel.com> domain name.

3. Respondent registered and used the <hooverwindtunnel.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has continuously and exclusively used the HOOVER mark since at least as early as 1920 in connection with goods and services related to appliances and cleaning.  Complainant has also used the WINDTUNNEL mark in connection with electric vacuum cleaners since at least as early as 1997.

In addition, Complainant is the holder of Registration No. 2,352,193 registered with the United States Patent and Trademark Office (“USPTO”) on May 23, 2000 for the WINDTUNNEL mark.  Complainant is also the holder of numerous registrations for the HOOVER mark with the USPTO including Registration No. 560,675 (registered on June 24, 1952) and Registration No. 2,687,985 (registered on February 18, 2003).

On July 26, 2003 Respondent registered the <hooverwindtunnel.com> domain name.  Respondent is using the domain name to redirect Internet users to an anti-abortion website located at the <abortionismurder.org> domain name, which features graphic anti-abortion images.  

 

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."

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.

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.

Identical and/or Confusingly Similar

Complainant has established rights in both the HOOVER and WINDTUNNEL marks through registration of the marks with the USPTO.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption). 

Respondent’s domain name is merely a combination Complainant’s two marks with the addition of the top-level domain “.com”.  For purposes of establishing confusing similarity between a domain name and a mark under the Policy, Respondent’s addition of the top-level domain “.com” is not a distinguishing difference.  Furthermore, Respondent’s combination of Complainant’s two marks, which are used to identify Complainant’s goods and services, only adds to the likelihood that Internet users will be confused by Respondent’s domain name.  Thus, the Panel finds that Respondent has combined both of Complainant’s marks in their entirety to create the confusingly similar domain name, <hooverwindtunnel.com>.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where Respondent combined Complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  As such, Respondent has not presented any circumstances evidencing that it has rights or legitimate interests in the <hooverwindtunnel.com> domain name.  In addition, the Panel accepts as true all allegations set forth in the Complaint.  Thus, the Panel finds that Respondent lacks rights and legitimate interests in the domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a Response or provided the Panel with evidence to suggest otherwise).

As there is no evidence before the Panel indicating that Respondent is commonly known by the <hooverwindtunnel.com> domain name, the Panel finds that Respondent is not commonly known by the domain name pursuant to Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).  

Respondent is using the <hooverwindtunnel.com> domain name to redirect unsuspecting Internet users to the politically-charged <abortionismurder.org> website.  Respondent’s use of the domain name to divert Internet users to the <abortionismurder.org> website is not in connection with a bona fide offering of goods or services.  Furthermore, Respondent is not making a legitimate noncommercial or fair use of the domain name by diverting Internet users to a website displaying political views that are not necessarily the views of Complainant.  Thus, the Panel finds that Respondent does not have rights or legitimate interests in the domain name pursuant to Policy ¶¶ 4(c)(i) or (iii).  See Rittehouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that, by linking the confusingly similar domain name to an “Abortion is Murder” website, Respondent has not demonstrated rights or legitimate interests in the domain name); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (finding that the appropriation of another’s mark to divert Internet traffic to <abortionismurder.org> is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the Policy).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered and is using the <hooverwindtunnel.com> domain name to further its own political agenda by diverting Internet users, who are looking for a website related to Complainant’s goods or services, to the <abortionismurder.org> website which features offensive images and anti-abortion propaganda.  The Panel finds that Respondent’s diversionary use of the domain name to promote its own political views, while subjecting Internet users to graphic images is evidence of bad faith in itself.  See McClatchy Mgmt Servs., Inc. v. Please DON'T Kill Your Baby, FA 153541 (Nat. Arb. Forum May 28, 2003) (“By intentionally taking advantage of the goodwill surrounding Complainant’s mark to further its own political agenda, Respondent registered the disputed domain names in bad faith”); see also Rittehouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (it has been consistently held that “when a party registers and uses a domain name that incorporates a well-known mark and connects the domain name with a website that depicts offensive images that…party has registered and used the domain name in bad faith”).

Furthermore, Respondent’s diversionary use of the <hooverwindtunnel.com> domain name is likely to cause confusion among Internet users as to the source, sponsorship, affiliation, or endorsement of the website.  The Panel infers that Respondent is receiving referral fees by diverting Internet traffic to the <abortionismurder.org> website.  Thus, the Panel finds that Respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).  See Journal Gazette Co. v. Domain For Sale Inc., FA 12202 (Nat. Arb. Forum Oct. 9, 2002) (finding bad faith where “Respondent chose the domain name to increase the traffic flowing to the <abortionismurder.org> and <thetruthpage.com> websites”); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

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 <hooverwindtunnel.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  December 18, 2003

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