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Halcyon Yarn, Inc. v. Henry Chan [2004] GENDND 899 (14 July 2004)

1. The Parties

The Complainant is Halcyon Yarn, Inc., a Maine business corporation, Bath, Maine, United States of America. It is represented by Perkins, Thompson, Hinckley & Keddy, PA., Portland, Maine, United States of America.

The Respondent is Henry Chan, Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <halcyonyarns.com> is registered with iHoldings.com, Inc., d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed by email on May 7, 2004, and in hard copy on May 12, 2004, with the WIPO Arbitration and Mediation Center (the “Center”). The Complaint was filed pursuant to Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On May 7, 2004, the Center acknowledged receipt of the Complaint and transmitted by email to iHoldings.com, Inc. doing business as DotRegistrar.com a request for registrar verification in connection with the domain name at issue.

On May 28, 2004, iHoldings.com transmitted by email and hard copy to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules and the WIPO Supplemental Rules.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2004.

The Center appointed Christopher Thomas, Q.C. as the sole panelist in this matter on July 5, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant was the only party to file evidence in support of its case. In each instance, the Panel has satisfied itself that the evidence supports the Complainant’s allegations of fact.

The Complainant, Halcyon Yarn, Inc., is a Maine-based corporation that does business worldwide. HALCYON YARN is a well-known trademark that has been in use by the Complainant and its predecessors in connection with the sale of yarn and related goods and services since 1979.

The Complainant is also the Registrant of the <halcyonyarn.com> domain name which was registered and has been used since February 13, 1996.

The Respondent registered the <halcyonyarns.com> domain name on December 12, 2003. The domain name <halcyonyarns.com> is identical to the Complainant’s domain name except for the addition to the common plural signifier “S”.

The Respondent does not have any state or federal United States trademark rights regarding the use of the HALCYON YARN mark and is making no business use of the mark.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that:

The disputed domain name <halcyonyarns.com> registered by the Respondent is identical and confusingly similar to the trademark held by the Complainant. The Respondent has taken the Complainant’s HALCYON YARN mark and <halcyonyarn.com> domain name and merely added the common plural signifier “S”.

The Respondent has no rights or legitimate interests in respect of the domain name. The Complainant notes that there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to it in connection with a bona  fide offering of goods or services. The Respondent is using the name for commercial gain to divert traffic away from the Complainant and redirect it to the Respondent’s website, where the Respondent advertises websites of the Complainant’s competitors. During this process, windows containing third-party advertisements pop up on screen. The Complainant believes that the Respondent earns revenue or other commercial gain for each diversion of Internet users to the Complainant’s competitors and from the pop-up advertising windows.

The Respondent registered the domain name and is using it in bad faith. On December 12, 2003, the Respondent registered the confusingly similar domain name <halcyonyarns.com> and has since made no legitimate use of the <halcyonyarns.com> domain name. The Complainant asserts that the Respondent is using <halcyonyarns.com> to disrupt the Complainant’s business and to attempt to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order for the Panel to decide to grant the remedy requested by the Complainant under the Policy, it is necessary that the Complainant prove, as required by paragraph 4(a) of the Policy, that:

(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

In the present case the Panel is of the view that the record contains sufficient evidence of each of the three requisite elements.

First, the Complainant claims and the Panel has verified to its satisfaction that the Complainant is the owner of the trademark HALCYON YARN since 1979, and the <halcyonyarn.com> domain name since February 13, 1996.

The domain name in dispute, <halcyonyarns.com>, is confusingly similar and identical to it the Complainant’s trademark HALCYON YARN and the <halcyonyarn.com> domain name. The Respondent has taken the Complainant’s HALCYON YARN mark and the <halcyonyarn.com> domain name and merely added the common plural signifier “S”.

The contested domain name is confusingly similar to a mark in which the Complainant has rights. The Complainant has fulfilled the requirements of paragraph 4(a)(i) of the Policy.

Second, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name. The Complainant has proven that the Respondent has no rights to the domain name. There is no evidence of the Respondent’s 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. The Respondent’s domain name serves merely to divert consumers to links of the Complainant’s competitors for advertising revenue from such redirection. This disrupts the Complainant’s business.

The Panel agrees with the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.

Third, it must be shown that the domain name at issue has been registered and is being used in bad faith.

The Respondent does not have any state or federal United States trademark rights regarding the use of the HALCYON YARN mark and is making no business use of the mark and has no cognizable rights or legal interest in the <halcyonyarns.com> domain name. A copy of the printout of the Respondent’s website obtained on April 15, 2004, shows that there is no activity at the Respondent’s domain name address at “www.halcyonyarns.com”. The Respondent is merely using the domain name to divert consumers to its website, where it provides links to the websites of the Complainant’s competitors and earns advertising revenue from such redirection.

In the circumstances, the Panel has no doubt in concluding that the domain name was registered and used in bad faith.

7. Decision

For the reasons stated above, the Complainant’s request that the domain name <halcyonyarns.com> be transferred to it is granted.

J. Christopher Thomas, Q.C.
Sole Panelist

Dated: July 14, 2004