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The Hun, BV v. Hun.com [2005] GENDND 1304 (14 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Hun, BV v. Hun.com

Case No. D2005-0406

1. The Parties

The Complainant is The Hun, BV dba The Hun’s Yellow Pages, Wervershoof, Netherlands, represented by Idell, Berman, Seitel & Rutchik, LLP, United States of America.

The Respondent is Hun.com, in Dallas, Texas, United States of America, represented by ESQwire.com Law Firm, United States of America.

2. The Domain Name and Registrar

The disputed domain name <hun.com> is registered with eNom

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 15, 2005. On April 18, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On April 19, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the 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").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced April 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response June 1, 2005. The Response was filed with the Center June 2, 2005.

The Center appointed Daniel J. Gervais, David W. Quinto and Nelson A. Diaz as panelists in this matter on June 29, 2005. The Panel finds that it was properly constituted. Each member of 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.

On June 4, 2005 the Complainant filed a supplemental statement. The Respondent objected to the filing and requested, should the filing be admitted, permission to file a reply to said supplemental statement.

4. Factual Background

The Complainant is The Hun, BV, whose principal office is located in Wervershoof, the Netherlands. The Complainant is the owner and/or exclusive licensee of the marks THE HUN'S YELLOW PAGES, THE HUN'S, and HUN CARD. These marks are used in relation to the Complainant's business, which is offering the users a compilation of links to adult-oriented pre-existing URLs. Complainant maintains Internet websites located at "www.thehun.net" and "www.thehun.com" and has offered its goods and services since 1997. The Complainant applied for registration of his marks in 2000 and 2001. The marks were registered in 2003.

The Respondent operates a website at "www.hun.com", which was registered in 1999, where he promotes adult personals and web cams. The Respondent's website uses the following motto "Hun, Find your honey!"

On March 23, 2005, the Complainant sent a cease-and-desist letter to the Respondent at the contract address listed in the WhoIS database, and did not receive an answer.

5. Parties' Contentions

A. Complainant

The disputed domain name <hun.com> is identical and confusingly similar to the Complainant’s registered mark THE HUN’S, THE HUN’S YELLOW PAGES and HUN CARD. The Respondent has no rights or legitimate interests in the domain name. The Respondent is not commonly known or identified by the name Hun, nor is he affiliated or connected in any way with the Complainant. The Respondent is not making a legitimate noncommercial or fair use of the domain name. The Respondent is using the Complainant’s mark to divert traffic from the Complainant’s website for commercial gain. The Respondent has registered the disputed domain name in order to prevent Complainant from reflecting its mark in the corresponding domain name. The domain name has been registered and is being used in bad faith. The Respondent has registered and used the domain name with full knowledge of the rights of the Complainant in the marks THE HUN’S, THE HUN’S YELLOW PAGES and HUN CARD.

B. Respondent

The Respondent contests all of the Complainant’s statements. The Respondent registered the domain name in 1999, prior to the Complainant’s applications for registration of the marks, which were filed in 2000 and 2001. The Respondent, therefore, could not have known of the Complaint’s marks, because the domain name was registered before the Complainant had rights in the mark. Furthermore, the Complainant and its business are located in the Netherlands while the Respondent is located in the United States of America, which is another reason why the Respondent could not be aware of the existence of the Complainant’s marks. The disputed domain name incorporates a common (generic) and descriptive word “hun”. The word “hun” is common abbreviation of the word “honey”, and also the name of a nomadic tribe (as in “Attila the Hun”). The Complainant’s mark is THE HUN’S YELLOW PAGES and the word “hun” is an abbreviation of the Complainant’s mark. The Complainant is not known under the name “hun”. The Respondent is not using the disputed domain name in bad faith. The Respondent is using the dispute domain name for a legitimate offering of goods and services, using the motto “Hun – find your honey”. The disputed domain name has not created consumer confusion.

6. Preliminary Procedural Issues

First, the Response was received one day late. The Panel uses its discretion and possible delays caused by different time zones to allow the Response into the Record.

Second, the Panel must discuss the procedural issue of Complainant's supplemental filing of June 4, 2005.

There are two issues with respect to this supplemental filing. First, whether and under what circumstances the Rules permit such a filing and, second, if the Rules do allow the filing, whether the applicable conditions, if any, are met in this case.

With respect to the first issue, the Rules provide for the submission of a Complaint by the Complainant (Paragraph 3 of the Rules) and a Response by the Respondent (Paragraph 5 of the Rules). Paragraph 12 of the Rules provides that "[i]n addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties". The Rules are, therefore, silent with respect to unsolicited supplemental and additional filing and evidence.

As the panel in Ravissant Limited. v. Vama Inc., Mehul Kotecha, WIPO Case No. D2003-0747 noted: "no party has the right to insist upon the admissibility of additional evidence". Based on the lack of explicit reference to additional unsolicited filings in the Rules, numerous panels in the past refused to consider supplemental filings, additional evidence and amendments to the Complaint. See, inter alia, Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; PepsiCo, Inc. v. "The Holy See", WIPO Case No. D2003-0229; Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Kirkbi AG v. Michele Dinoia, WIPO Case No. D2003-0038; Helsingin yliopiston ylioppilaskunta and HYY Group Ltd. v. Paul Jones, WIPO Case No. D2002-1164; Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635; Victor Chandler Limited and International Sports Marketing Limited v. Thierry Leray, WIPO Case No. D2002-0624; VISIVA S.r.l. v. VISIVA di Rocca Sergio, WIPO Case No. D2001-1130; AT&T Corp. v. Randy Thompson, WIPO Case No. D2001-0830; Avanade Inc. v. Robert Tansey, WIPO Case No. D2001-0824; Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd., WIPO Case No. D2001-0398; Telstra Corporation Limited v. Heaydon Enterprises, WIPO Case No. D2000-1672; Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151; Parfums Christian Dior S.A. v. Jadore, WIPO Case No. D2000-0938; Viz Communications, Inc. v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662; AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416; Plaza Operating Partners, Ltd.; Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Easyjet Airline Company Ltd v. Andrew Steggles, WIPO Case No. D2000-0024.)

Several panels in the past accepted supplemental filings, but only as an exception based on the particular circumstances of the case, as well as the quality and importance of the supplemental filings and evidence. (See e.g., Wollongong City Council v. Viva La Gong, WIPO Case No. D2003-0113; SES Astra S.A. v. Design Technology Ltd. (t/a Transcom ISP), WIPO Case No. D2002-1078; Nabor B.V. Stanhome S.P.A., v. Organization Francisco Vicente, WIPO Case No. D2000-0757; HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organizations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc, WIPO Case No. D2002-0754).

In this Panel's view, the circumstances of the current case do not reach the required level, because the Respondent had an opportunity to address the Complainant's allegations in its Response and because there were no additional facts or a change of factual situation that rendered such supplemental filing necessary. The Complainant did not justify its supplemental filing; it was simply sent to the Center. As a rule, such filings may be relevant when the party submitting the filing can show that it is responding to facts it could not have been reasonably expected to address in its initial filing. In addition, as is discussed briefly below, admitting that filing in this case would not have changed the result.

Another relevant matter is whether the doctrine of laches might apply. The Complainant waited several years before taking action. The doctrine was described as follows by Sam Ricketson in a 2003 panel decision (Iogen Corporation v. IOGEN, WIPO Case No. D2003-0544):

1. Some unjustified delay on the part of a person in taking a particular step, e.g. in issuing proceedings or prosecuting a complaint. In some instances, delay alone may be sufficient, e.g. in the seeking of interlocutory injunctive relief or in a defendant seeking security for costs in the running of an action. The most extreme case here is some limitation period that applies to cut off a particular proceeding once the time limit in question has passed. In this regard, […] the Policy and Rules do not provide for any specified limitations period for the bringing of a complaint.

2 Other cases, the effect of the delay must be such that it would be unjustifiable for the party now to take the step in question, because the other party has taken some action in reliance upon what appears to have been the acquiescence of the first party in that action.

3. Circumstances other than delay from which it can be inferred that the complainant has consented to or acquiesced in conduct of another person that would otherwise be an infringement of the rights of the complainant. In general, this will require that the other party has relied upon the conduct of the first party and has acted to his or her detriment on the basis of that reliance, e.g. through investing in a particular business or taking steps to pursue a particular course of action.

As Mr. Ricketson also noted in that case, it is unclear whether such an equitable claim (as it is understood in common law jurisdictions) can be made here given that the jurisdiction stems from contractual arrangements. In addition, the Complainant is not based in a common law jurisdiction. For those reasons, the Panel does not make a finding that the complaint is barred under said doctrine.

7. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 7.1);
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 7.2); and
3. The domain name has been registered and is being used in bad faith (see below, section 7.3).

Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.

Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.

A. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As to the first question, the record confirms that the Complainant has an interest in the marks THE HUN'S YELLOW PAGES and THE HUN'S, because the Complainant is the exclusive licensee of those marks. The Complainant need not be the owner of the mark to show the rights in the mark. See inter alia DigiPoll Ltd. v. Raj Kuma, WIPO Case No. D2004-0939, American Civil Liberties Union of New Mexico v. Vilma Morales/e:bOOm, S.A., WIPO Case No. D2004-0473, Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796, and Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756, The marks THE HUN'S YELLOW PAGES and "THE HUN'S" were registered in the United States of America since 2003 and 2004 respectively. According to the record the Complainant used the marks since 1995. Registration of a common law mark after the registration of the domain name is akin to a confirmation of title. The Complainant has rights in the mark, even though it was registered after the acquisition of the domain name by the Respondent. At common law, the trademark owner's rights stem from use, which, according to the Record, started in 1995 or 1996, i.e., prior to registration of the domain name. Absence of registration is relevant, however, when considering the Respondent's bad faith.

The Panel finds that the Complainant has rights in the mark THE HUN'S YELLOW PAGES and THE HUN'S.

The Respondent's objection to the mark - that it is a generic word - is relevant. According to the Oxford Dictionary, "hun" is defined as follows:

Hun

1. One of an Asiatic race of warlike nomads, who invaded Europe c A.D. 375, and in the middle of the 5th c., under their famous king Attila (styled Flagellum Dei, the scourge of God), overran and ravaged a great part of this continent.
2. poet. (and in U.S. vulgarly) A Hungarian.
3. transf. A reckless or wilful destroyer of the beauties of nature or art: an uncultured devastator: cf. 'Goth', 'Vandal'.
4. a. gen. A person of brutal conduct or character; esp. during and since the war of 1914-18 applied, often without animus, to the Germans (or their allies); a German. Also attrib. b. A flying cadet: see quots. Air Force slang (in the war of 1914-18).
5. Comb., as Hun-folk, -hater, -land, -talk; Hun-eating, -hunting, -pinching.

Hence (esp. in sense 4) Hundom, the state of being a 'Hun'; Hunless a., lacking Germans, Hun-like a., like a Hun, impiously destructive; Hunnian, Hunnic, Hunnican, Hunnish adjs., of, pertaining to, or like the Huns; Hunnish a., whence Hunnishness.

hun

colloquial abbreviation of HONEY. (emphasis added)

hun

variation of HOON n.

Yet, the presence of a common word does not defeat a finding of confusing similarity. What matters is the impression of an average Internet user. The similarity between the type of goods or services and the marketing method(s) used are other relevant factors. The previous administrative decisions cited by they Respondent involve the combination of a famous mark (PEPSI, PORSCHE, etc) and a generic word, or a combination of two generic words indicative of the Complainant's services.

Given the high degree of similarity between the services offered, the Panel finds that the domain name is confusingly similar to the Complainant's mark. The disputed domain name consists of the word "hun" which is the abbreviation of the Complainant's marks THE HUN'S YELLOW PAGES and THE HUN'S and is therefore confusingly similar to the Complainant's mark. See Banque Saudi Fransi v. ABCIB, WIPO Case No. D2003-0656. This is further heightened by the fact that the Complainant itself uses the abbreviation " the hun", instead of the possessive form of the word "the hun's" in its domain names and .

The Panel finds for the Complainant on this first part of the test.

B. Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in the domain name based on Complainant's right in the marks THE HUN'S YELLOW PAGES and THE HUN'S. The Respondent contends that he has right and legitimate interests to use of the disputed domain name because the word "hun" is a generic word and a common abbreviation for the word "honey", and because he is using the domain name as bona fide offering of goods or services.

According to Paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

"(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

There are no elements showing that the Respondent is or was commonly known by the domain name. The Respondent is not making a legitimate non commercial use of the domain name. To the contrary, the domain name is being used for commercial purposes to generate income for the Respondent. The only option available to the Respondent is thus subparagraph (i) above.

It has been established by numerous panels in the past that providing links to pornographic websites, at least without any additional fact to support a finding of legitimate interest, does not constitute a bona fide offering of goods or services. See Microsoft Corporation v. Phayze Inc., WIPO Case No. D2003-0750; Microsoft Corporation v. Party Night, Inc. d/b/a Peter Carrington, WIPO Case No. D2003-0501; Ferrero S.p.A. v. Alexander Albert W. Gore, WIPO Case No. D2003-0513; Goodrich Corporation v. bfg-fus.com, WIPO Case No. D2003-0477; Dell Computer Corporation v. Clinical Evaluations, WIPO Case No. D2002-0423; Club Monaco Corporation v. Charles Gindi, WIPO Case No. D2000-0936. Here, however, "adult" services are offered by both parties and it would seem illogical to hold it against the Respondent that he is offering services similar to those offered by the Complainant. The question, therefore, boils down to whether the use of the domain name was bona fide, which is related, indirectly at least, to the discussion on bad faith below. The Panel does not need to make a finding on legitimate interest at this stage.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to 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.

There is no evidence to support a claim under subparagraphs (ii) or (iii). As to (i), there is evidence that the domain name may have been or will be offered for sale (the transfer to DomainGrabber), but no evidence to suggest it was registered for that purpose.

The Panel must then proceed under subparagraph (iv) and any other material factor.

The Respondent contends that he registered the domain name in good faith, in 1999, which is 4 (or 5) years prior to the Complainant's (Mr. Ter Wee's) registration of the marks. The record indicates that the Complainant (Mr. Ter Wee) filed for the registration in 2000 and 2001 respectively, and that the marks were registered in 2003 and 2004.

It is difficult to prove bad faith registration in this case because the mark was registered after the domain name. See Swissvoice ag v. Chan chin sung, WIPO Case No. D2004-0672, Nãofumomais, Clínica de Homeopatia Antitabágica, Lda. v. Re-Surgir - Consultores em Desenvolvimento Individual e Organizacional, Lda., WIPO Case No. D2004-0399, John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074; Digital Vision, Ltd. v. Advanced Chemill Systems WIPO Case No. D2001-0827; PrintForBusiness B.V v. LBS Horticulture, WIPO Case No. D2001-1182.

The fact that the Complainant had not registered its mark or even applied for registration at the time of registration of the domain name bars any finding of constructive knowledge. Did the Respondent otherwise have actual knowledge of the Complainant's mark? The Complainant's applications mentioned that the marks have been in use since 1995, and their domain names (, and ) were registered in 1996, which is prior to the registration of the disputed domain name in 1999.

The Panel must thus only weigh the possibility that the Respondent knew of the Complainant's mark and registered the domain name to intentionally 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", against the possibility that he registered a short form of the common word "honey" in relation with an adult website (the Panel does not give much credence to the Respondent's claim that "Hun" was used to refer to Attila's nomadic tribe).

In its supplemental filing, which the Panel does not consider as forming part of the record for the reasons already mentioned, the Complainant asserts that the Respondent's bad faith is "blatant" and "obvious" and notes that the Panel would come to this conclusion if it had access to previous versions of the Respondent's website. The Panel does not. In court proceedings, with access to discovery and depositions, the conclusions reached as to the alleged bad faith of the Respondent may indeed favor the Complainant. However, in the supplemental filing the Complainant does not indicate that it could provide this information to the Panel and instead challenges the Respondent to do so, which points to the need for provide evidence in a judicial proceeding rather than in an administrative proceeding under the Policy.

In sum, in the absence of any sufficient evidence filed by either party on this point, the Panel has no clear basis to favor either party on the third part of the test. Because the Complainant has the burden of proof, the Panel must thus find for the Respondent. The Panel notes, however, that because a likelihood of confusion seems to exist, the Complainant may have additional rights and remedies under national trademark law if it can provide actual evidence of the assertions made in its Complaint and the supplemental statement.

8. Decision

For all the foregoing reasons, the Complaint is denied.

Dated: July 14, 2005