DECISION

Hartmann, Incorporated v. R9.net

Claim Number: FA0404000263580

PARTIES

Complainant is Hartmann, Incorporated (“Complainant”), represented by Joan T. Pinaire, of McCarter & English, LLP, Four Gateway Center, 100 Mulberry Street, Newark, NJ 07102. Respondent is R9.net (“Respondent”), Post Office Box 795923, Dallas, TX 75379-5923.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <hartman.com>, registered with Tucows Inc.

PANEL

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.

Hugues G. Richard as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 28, 2004; the Forum received a hard copy of the Complaint on April 30, 2004.

On April 29, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name <hartman.com> 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-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On May 4, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 24, 2004 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@hartman.com by e-mail.

A Response was received and determined to be complete on May 25, 2004.

A timely Additional Submission was received and determined to be complete on May 28, 2004.

On June 3, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hugues G. Richard as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant is a leader in the travel goods industry and has done business in America since 1877. Complainant has used the HARTMANN mark since at least 1976 and has submitted evidence of secondary meaning in the mark. It registered the HARTMANN mark with the United States Patent and Trademark Office on December 16, 1986, in International Class 18 for use in connection with personal leather goods, namely wallets, billfolds, business card cases and credit card holders, key and passport cases and luggage. Complainant provided a list of numerous trademarks registrations it owns for the HARTMANN mark throughout the world. Complainant operates its main website at the <hartmann.com> domain name that offers leather wallets, luggage and other goods bearing the HARTMANN trademark.

Complainant contends that the disputed domain name, <hartman.com> is confusingly similar with its HARTMANN trademark. It contends that the omission of the letter “n” from the end of the term HARTMAN is not sufficient to render Respondent’s domain name distinguishable from its trademark. It has cited the decision Albertson’s, Inc. v. For Sale or Lease, FA 123865 (Nat. Arb. Forum Oct. 21, 2002), finding that the omission of the letter “s” at the end of a mark in a domain name does not create a distinct mark.

Complainant contends that according to its understanding, Respondent has never been known by or operated a business under the HARTMAN name. It also contends that Respondent’s sole intent in using the disputed domain name is to divert consumers and/or tarnish Complainant’s mark, and therefore is not making a legitimate noncommercial or fair use of the domain name. Complainant also affirms that it has no relationship with Respondent and has not, at any time, licensed or granted person related with Respondent to use the HARTMANN mark or a domain name incorporating that mark or variations thereof.

Complainant contends that until recently, Respondent was using the <hartman.com> domain name to steer consumers utilizing the Internet to an e-commerce site located at <ebags.com>. This website markets and sells luggage and leather goods to consumers via the Internet. This website was not authorized and did not sell Complainant’s products. Complainant alleges that this activity ceased when Complainant registered a complaint with the operators of <ebags.com>. Complainant contends that this activity constituted misappropriation and misrepresentation of its trademark. It adds that apart from this activity, it is possible that Internet users are attracted to Respondent’s website because they mistakenly believe that the website located at the disputed domain name is sponsored by Complainant. Complainant brings up the point that Respondent was also Respondent in Philip Morris, Inc. v. r9.net, Case No. D2003-0004 (WIPO Feb. 28, 2003). In this decision, the Panelist considered that Respondent registered and used the <marlboro.com> domain name in bad faith based on the pre-existing registration and the fame of the MARLOBORO mark. The Panelist in the Philip Morris case also found that Respondent’s registration of 100 other domain names containing well-known marks and using them to direct traffic to other sites for commercial gain, was evidence of bad faith. Complainant has shown that Respondent has a history of registering famous trademarks owned by entities such as <schlitz.net>, <pillsbury.net>, <biltmore.net> and <honeywell.net>.

Complainant states that it has repeatedly advised Respondent to cease and desist from using the <hartman.com> domain name. Respondent did not reply to any of the letters sent by Complainant. Moreover, Complainant contends that Respondent has engaged in bad faith by providing incomplete contact information to the registrar, Tucows. Complainant has cited the decision Park Place Entertainment Corp. v. Bowno, Case No. D2001-1410 (WIPO Jan. 29, 2001), whereby it was found that this behavior could be considered as evidence of bad faith.

B. Respondent

Respondent, R9.net, filed no Response. However, Sheila Hartman, “for the Hartman Family”, filed a Response which was received by the Forum after the deadline for response in both electronic and hard copy form. Therefore, this Response is not in compliance with ICANN Rule 5(a)[1].

Furthermore, this Response was made “for the Hartman Family”; the Hartman Family is not Respondent according to the definition of “Respondent” provided by ICANN Rule 1. Therefore, given these circumstances, the Panel has decided not to accept this Response.

C. Additional Submissions

Complainant contends that Respondent’s submission, namely the Response, should not be considered at issue as it was submitted one day after the date it was due. It also contends that Sheila Hartman, who submitted the Response, has no standing in this matter as it is not Respondent, R9.net, who is the registered owner of the disputed domain name.

Complainant argues that there is no evidence that the <hartman.com> domain name was registered before March 7, 2000 and was owned by any person or entity other than R9.net.  Complainant stresses that Ms. Hartman did not submit any evidence of who she claims to be or evidence of a contractual relationship between the parties to support her position.

Complainant claims that according to the case Philip Morris Inc. v. R9.net, D2003-0004 (WIPO Feb. 28, 2003), using an infringing domain name constitutes bad faith when the website runs advertising banners and other types of advertising. Complainant contends that Respondent’s bad faith was established with the diversion of Internet users to a competing website, and this bad faith is not eliminated by the cessation of this diversion.

FINDINGS

Having reviewed the evidence submitted by Complainant and its written representations, the Panel makes the following findings:

· Respondent’s domain name <hartman.com> is confusingly similar to the HARTMANN mark in which Complainant has rights;

· Respondent has no rights or legitimate interests in the <hartman.com> domain name; and

· Respondent has registered and used the domain name <hartman.com> in bad faith.

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.”

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 finds that Complainant established its right in the HARTMANN mark, as it owns several trademark registrations throughout the world including the United States of America. Furthermore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s HARTMANN mark. The omission of the “n” at the end of the mark does not create a distinguishable name and does not change the consonance or the pronunciation of these words. The similarity of these words is therefore likely to confuse a reasonable Internet user.  See 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); see also Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).

Rights or Legitimate Interests

The Panel finds that Complainant has shown sufficient evidence that Respondent has no rights or legitimate interests in the disputed domain name. The Panel points out that no evidence has been submitted by Respondent to show its rights or legitimate interests in the domain name. The Panel visited the website located at <hartman.com> and noticed no use of the disputed domain name, proving therefore no demonstrable preparations of use by Respondent. The Panel therefore concludes that Respondent has no rights or legitimate interests in the <hartman.com> domain name.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).

Registration and Use in Bad Faith

Complainant has established that Respondent has engaged in a pattern of registering domain names containing well-known marks such as <schlitz.net>, <pillsbury.net>, <biltmore.net>, <honeywell.net>. The Panel visited the websites located at these domain names, and noticed that Respondent is using them to list links to other websites, in accordance with the evidence in the Complaint. Complainant alleged, and not denied by Respondent, that the disputed domain name redirected Internet users to the <ebags.com> website which offered goods directly competing with Complainant’s goods.  Respondent’s behavior evidences use of the domain name with the intention for commercial gain, to attract Internet users by creating a likelihood of confusion with Complainant’s HARTMANN mark, as to the source, sponsorship, affiliation, or endorsement pursuant to Policy ¶ 4(b)(iv). Given these circumstances, the Panel finds that Complainant has shown sufficient evidence that Respondent registered and used the disputed domain name in bad faith.  See Bank of America 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)); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

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

Hugues G. Richard, Panelist
Dated: June 17, 2004

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