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Thomson v. Out-Site [2005] GENDND 327 (13 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

HBH, Limited Partnership v. Michele Dinoia/ SZK.com

Case No. D2005-1159

1. The Parties

The Complainant is HBH, Limited Partnership, Norcross, of United States of America, represented by Kilpatrick Stockton, LLP, United States of America.

The Respondent is Michele Dinoia/ SZK.com, Pineto, Italy.

2. The Domain Name and Registrar

The disputed domain name <honeybakeham.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2005. On November 8, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On November 9, 2005, OnlineNic, Inc. d/b/a China-Channel.com 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 on November 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2005.

The Center appointed Gabriel F. Leonardos as the Sole Panelist in this matter on December 13, 2005. 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

As early as 1949, the Complainant has been using continuously and extensively throughout the United States and worldwide trademarks “HONEY BAKED HAM”, “HONEY BAKED”, “HONEYBAKED”, and other variations thereof, for foods and related products and services.

The Complainant secured and maintains several United States and international registrations for its trademarks, for instance the following registrations US Reg. No. 1,384,504; 1,519,978 and 1,553,044. Moreover, the Complainant is the owner of numerous domain names incorporating its trademarks, namely “HONEY BAKED”; “HONEY BAKED HAM”, such as <honeybaked.com>; <honeybakedham.com>; <honeybakedham.net>; <honeybakedhamonline.com>; <honeybakedonline.com>; <honeybaked.net>; <honeybakedhamco.com>; <honeybakedham.org>; <honeybakedhamcompany.org>.

The Complainant has indicated several WIPO administrative panel decisions in which the Respondent was also a respondent.

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of several trademark registrations in the United States and internationally, as shown in the table below:

Trademark	Registration number	Issuance date
HONEY BAKED HAM	U.S. 1,384,504	Feb. 25, 1986
HONEY BAKED HAM design	U.S. 1,519,978	Jan. 10, 1989
HONEYBAKED and design	U.S 1,553, 044	Aug. 22, 1989
HONEYBAKED and design	U.S 1,861,924	Nov. 8, 1994
HONEYBAKED and design	U.S 1,883,717	March 14, 1995
THE HONEY BAKED HAM COMPANY EST. 1975 AUTHENTIC SPIRAL SLICED and design	U.S 2,026,371	Dec. 31, 1996
THE HONEYBAKED HAM COMPANY and design	U.S 2,045,359	March 18, 1997
THE HONEYBAKED HAM COMPANY	U.S 2,126,500	Jan. 6, 1998
THE HONEY BAKED HAM COMPANY EST 1957 and design	U.S 2,136,466	Feb. 17, 1998
THE HONEYBAKED HAM COMPANY EST 1957 and design	U.S 2,150,993	April 14, 1998
THE HONEYBAKED CAFÉ	U.S 2,524,038	Jan. 1, 2002
THE HONEYBAKED HAM CO. AND CAFÉ	U.S 2,534,573	Jan. 29, 2002
THE HONEYBAKED HAM COMPANY EST. 1957 and design	CTM 000256750	Oct. 10, 1998

The disputed domain name is a confusingly similar variation of all Complainant’s registered trademarks “HONEY BAKED” and “HONEY BAKED HAM”. In effect the disputed domain name <honeybakeham> contains in its entirety the Complainant’s trademarks with the exception of the letter “d” found in the word “baked”. Moreover, the disputed domain includes exactly in its entirety Complainant’s registered domain names. Therefore, the requirement of the Policy, paragraph 4(a)(i) is fully met.

Before bringing the case to the WIPO administrative panel the Complainant notified the Respondent on October 29, 2004, based on the Complainant’s rights and demanded that the Respondent would transfer the disputed domain name to the Complainant and would stop all infringing actions. On November 12, 2004, Respondent’s attorney sent to the Complainant’s attorney an e-mail stating that his client did not intend to infringe other parties’ trademarks and that he registered the domain name in good faith; being an Italian citizen, he was not aware either of the existence of any third parties’ trademark or of the likelihood of confusion of the Complainant’s marks. The Complainant’s attorney responded on March 7, 2005, and the Respondent made no further comments.

Complainant argues that by the time the Respondent registered the disputed domain name, it was impossible for the Respondent to be unaware of the Complainant’s trademarks. In fact, the Complainant’s first use of the mark “HONEY BAKED HAM” occurred as early as 1949. Besides the Complainant has been selling its products over the Internet since at least 1995.

The Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services, is not commonly known by the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name without the intent for commercial gain. The Complainant is the only entity entitled to use the expressions “HONEY BAKED” and “HONEY BAKED HAM” in the United States and in other countries, it is clear that the use of the disputed domain by the Respondent is illegitimate.

According to the Complaint, the reputation of the Complainant’s trademark lured the Respondent to generate and redirect Internet traffic by creating and exploiting a likelihood of confusion with Complainant’s mark.

The Respondent registered the disputed domain name to increase hits to its website and therefore, increase its revenue, profiting every time a user by mistake omits the letter “d” when typing the complainant’s domain, such as <honeybakedham.com>.

The Complainant contends that the disputed domain name was registered in bad faith and has been used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. The Complainant argued that the Respondent intentionally attempted, by using the disputed domain name, to attract for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the disputed domain name. The Complainant further alleges that Respondent registered the domain name in bad faith because Respondent was necessarily aware of Complaint’s trademarks. In addition, the Complainant also states that Respondent also used the domain name in bad faith because Respondent is a known cyber squatter and typo squatter, as shown by the various WIPO decisions involving the Respondent, as well as numerous proceedings against Respondent brought before the National Arbitration Forum.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy the Complainant must prove each of the following:

(i) That the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and

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

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

A. Identical or Confusingly Similar

The Complainant has many registered trademarks formed by the expressions “HONEY BAKED” and “HONEY BAKED HAM” which substantially pre-date the Respondent’s registration of the Domain name. Furthermore, although not necessary for the purposes of the Policy, besides its home-country trademark registration the Complainant also owns a registration for a Community Trademark (CTM) in Europe (Exhibit C), valid in all member- countries of the European Union, including Italy where the Respondent resides.

The only difference, between the disputed domain name and the Complainant’s “HONEY BAKED” and “HONEY BAKED HAM” trademarks, is the lack of the letter “d” which is part of the word “baked”. Therefore, there is no doubt that Respondent’s domain name is confusingly similar.

In this context, the Panel finds that the domain name <honeybakeham.com> is confusingly similar to Complainant’s trademarks “HONEY BAKED” and “HONEY BAKED HAM”.

B. Rights or Legitimate Interests

The Respondent of the disputed Domain Name has not filed any Response to the Complaint and thus has not alleged any facts or elements to justify any rights or legitimate interest in connection with the disputed domain name. Therefore, the Panel has found no indication that any of the exculpatory circumstances described in paragraph 4(c)(i)-(iii) could apply to the present matter.

Complainant contention that its first use of trademarks “HONEY BAKED” and “HONEY BAKED HAM” pre-dates the Respondent’s registration of the Domain Name is accurate. Thus, the Panel agrees that it was indeed highly unlikely that the Respondent was unaware of the Complainant’s trademarks. Moreover, even if Respondent were unaware – something discussed herein only for the sake of argumentation –, Respondent must bear the burden for failing to act with as little diligence as performing a trademark or website search (at no cost at all) that would have disclosed the existence of Complainant.

Accordingly, the use of the domain name <honeybakeham.com> is not considered legitimate use in connection with bona fide offering of goods and services.

All this leads Panel to find that Respondent has no right or legitimate interest in respect to the Domain Name (the Policy, paragraph 4(a)(ii)).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the policy specifies certain non exhaustive circumstances which, if found by the Panel to be present, are evidence of the registration and use of the Domain Name in bad faith.

The Complainant’s trademarks are indeed distinctive and the Panel considers that the Respondent had knowledge of the trademarks owned by the Complainant when registered the disputed domain name on July 17, 2003. This knowledge of the Complainant’s trademark is confirmed by the fact that the disputed domain <honeybakeham.com> contains in its entirety the Complainant’s trademarks “HONEY BAKED” and “HONEY BAKED HAM” with the exception of the letter “d” in the word “baked”.

Furthermore, the Panel understands that in using the Domain Name, the Respondent has intentionally attempted to attract for commercial gain, Internet uses to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. The fact that “honeybake” has no particular meaning in the English language (language in which the expression is written) is evidence that the Respondent is engaged in so-called “typo squatting” and that Respondent, by registering the disputed domain name, hoped to receive some Internet traffic from people trying to access the Complainant’s website.

Moreover, the Respondent was also a party in a number of other proceedings, within which the domain names of concern were transferred by UDRP decisions (Exhibit H). The Respondent has for several times incurred in the same conduct of registering domain names which contained registered trademarks with an attempt to profit from Internet traffic.

Therefore the Panel determines that Respondent has acted in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <honeybakeham.com> be transferred to the Complainant.

Gabriel F. Leonardos
Sole Panelist

Dated: December 23, 2005