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HBH, L.P. v. LaPorte Holdings [2005] GENDND 45 (23 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

HBH, L.P. v. LaPorte Holdings

Case No. D2004-0864

1. The Parties

The Complainant is HBH, L.P., C/O Linda van Rees, The Original Honey Baked Ham Co. of Georgia, Inc., Norcross, Georgia, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.

The Respondent is LaPorte Holdings, Los Angeles, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names, <honeybakedstore.com>, <honeybakeonline.com>, <thehoneybakedhamcompany.com>, and <thehoneybakedhamstore.com> are registered with NameKing.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2004. On October 21, 2004, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain names at issue. On October 22, 2004, and again on November 2, 2004, NameKing.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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 9, 2004. The Center verified that the Complaint, together with the amendment to 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 15, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2004.

The Center appointed Terrell C. Birch as the Sole Panelist in this matter on January 10, 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

The Panel finds the following facts from the Complaint, Respondent having failed to respond and being in default:

Complainant is the record owner of the following trademarks:

HONEY BAKED HAM

Registration Number: 1,384,504

Registration Issued: February 25, 1989

Goods: Spiral sliced glazed hams.

HONEY BAKED HAM and Design

Registration Number: 1,519,978

Registration Issued: January 10, 1989

Goods: Spiral sliced glazed hams.

HONEYBAKED and Design

Registration Number: 1,861,924

Registration Issued: November 8, 1994

Goods: Poultry and meats, namely, turkey and pork, including ham and pork ribs; vegetable salads, namely, three-bean salad and cole slaw, and potato salad; confectionaries, namely, cheesecakes, fruit and nut pies; condiments, namely horseradish sauce, relishes, and mustards, barbecue sauce, and chili sauce; salads, namely, macaroni salad.

HONEYBAKED and Design

Registration Number: 1,883,717

Registration Issued: March 14, 1995

Goods and Services: Poultry and meats, namely, turkey and pork, including ham and pork ribs; vegetable salads, namely three-bean salad and cole slaw, and soup mixes and potato salad; in International Class 29.

Confectionaries, namely cheesecakes, fruit and nut pies; condiments, namely, horseradish sauce, relishes, and mustards, barbecue sauce, and chili sauce; salads, namely, macaroni salad; Mail order services for prepared foods; in International Class 42.

THE HONEYBAKED HAM COMPANY EST. 1957 AUTHENTIC SPIRAL SLICED

Registration Number: 2,026,371

Registration Issued: December 21, 1996

Goods and Services: Paper goods, namely, cups, napkins and plates; clothing, namely, polo shirts, sweatshirts, sweaters and smocks; poultry, namely, chicken and turkey; beef, namely beef ribs and roasts; pork, namely, hams, bacon, pork loins, pork ribs and Canadian bacon; vegetable salads, namely, potato salad, three-bean salad and cole slaw; and soup mixes; confectionaries, namely, cheesecakes and fruit and nut pies; condiments, namely, horseradish sauce, relishes and mustards; sauces, namely, barbecue sauce and chili sauce; macaroni salad; and coffee and tea; soft drinks for consumption on and off the premises; mail order services for prepared foods and restaurant services.

THE HONEY BAKED HAM COMPANY

Registration Number: 2,126,500

Registration Issued: January 6, 1998

Goods and Services: Poultry, namely, chicken and turkey; beef, namely beef ribs and roasts; pork, namely ham, bacon, pork loins, pork ribs and Canadian bacon; vegetable salads, namely, potato salad, three-bean salad and cole slaw; and soup mixes; confectioneries, namely, cheesecakes and fruit and nut pies; condiments, namely, horseradish sauce, relishes and mustards; sauces, namely barbecue sauce and chili sauce; macaroni salad; and coffee and tea; mail order services for prepared foods and restaurant services.

THE HONEY BAKED HAM COMPANY EST. 1957 AND Design

Registration Number: 2,136,466

Registration Issued: February 17, 1998

Goods and Services: Clothing, namely, polo shirts, sweatshirts, sweaters and jackets, smocks and aprons; poultry, namely, chicken and turkey; beef, namely beef ribs and roasts; pork, namely, hams, bacon, pork loins, pork ribs and Canadian bacon; vegetable salads, namely, potato salad, three-bean salad and cole slaw; and soup mixes; confectionaries, namely, cheesecakes and fruit and nut pies; condiments, namely, horseradish sauce, relishes and mustards; sauces, namely, barbecue sauce and chili sauce; macaroni salad; and coffee and tea; mail order services for prepared foods and restaurant services.

THE HONEYBAKED CAFÉ

Registration Number: 2,524,038

Registration Issues: January 1, 2002

Services: Dine-in and take-out restaurant services.

THE HONEYBAKED HAM CO. AND CAFÉ

Registration Number: 2,534,573

Registration Issued: January 29, 2002

Goods and Services: Retail store services in the field of processed meats, namely: poultry, namely, chicken and turkey; beef, namely, beef ribs and roasts; pork, namely, ham, bacon, pork loins, pork ribs and Canadian bacon; vegetable salads, namely, potato salad, three-bean salad and cole slaw; baked beans; soup mixes; confectionaries, namely, cheesecakes and fruit and nut pies; condiments, namely, horseradish sauce, relishes and mustards; sauces, namely, barbecue sauce and chili sauce; macaroni salad; coffee and tea; and prepared food trays comprised of pork, poultry, beef and vegetable sandwiches; sliced pork, poultry and beef; meat, vegetable, fruit and pasta salads; cheeses; fresh vegetables; fresh fruits; baked beans; pickles; olives; relishes; breads, cookies, cakes and pies; and condiments; restaurants services.

Complainant has also registered the following domain names;

<honeybaked.com> Registered by HBH on November 21, 1995

<honeybakedham.com> Registered by HBH on December 22, 1996

<honeybakedham.net> Registered by HBH on January 30, 1997

<honeybakedhamonline.com> Registered by HBH on February 24, 1999

<honeybaked.com> Registered by HBH on February 25, 1999

<honeybaked.net> Registered by HBH on February 25, 1999

<honeybakedhamco.com> Registered by HBH on April 14, 2000

<honeybakedham.org> Registered by HBH on October 8, 2002

<honeybakedhamcompany.org> Registered by HBH on October 8, 2002

Upon simple comparison, the Disputed Domain Names are confusingly similar variations of all of Complainant’s registered HONEYBAKED Marks and Complainant’s registered domain names, each of which contains the words “honey baked” or “honeybaked”.

The domain name <honeybakedstore.com> (i) includes exactly and in its entirety Complainant’s registered HONEYBAKED Mark, and (ii) includes exactly and in its entirety Complainant’s registered domain name <honeybaked.com>. Respondent has simply added the generic word “store” to Complainant’s registered mark and domain name.

The domain name <honeybakedonline.com> (i) includes Complainant’s HONEYBAKED Mark, with the difference of only one letter and the addition of the generic word “online”, and (ii) is identical to Complainant’s registered domain name <honeybakedonline.com> with the difference of only one letter.

The domain name <thehoneybakedhamstore.com> (i) includes exactly and in its entirety Complainant’s HONEYBAKED and HONEY BAKED Marks, and (ii) includes exactly and in its entirety Complainant’s registered domain names <honeybaked.com> and <honeybakedham.com>. Respondent has simply added the generic words “the” and “store” to Complainant’s registered marks and domain names.

The domain name <thehoneybakedhamcompany.com> (i) includes exactly and in its entirety Complainant’s THE HONEY BAKED HAM COMPANY Mark, without changes or additional generic words, and (ii) is confusingly similar, upon similar comparison, to Complainant’s registered domain names <honeybakedhamco.com> and <honeybakedhamcompany.org>.

Respondent registered the domain name <honeybakedstore.com> on or about December 29, 2002 and the domain name >honeybakedonline.com> on or about December 18, 2003, long after Complainant first began use of the HONEYBAKED Marks in connection with food products and services. Complainant’s first use of the HONEY BAKED HAM Mark is recorded on the registration certificate as December 15, 1949. Use by Respondent apparently took place only after Respondent had knowledge of Complainant’s use and registration of (i) the HONEYBAKED Marks, and (ii) the <honeybaked.com>, <honeybakedham.com>, <honeybakedham.net>, <honeybakedhamonline.com>, <honeybaked.com>, <honeybaked.net>, <honeybakedhamco.com>, <honeybakedham.org>, and <honeybakedhamcompany.org> domain names registered by Complainant.

Respondent uses the Disputed Domain Names to misleadingly redirect visitors to the following websites:

“http://dp.information.com/?a_id35&domainname=honeybakedstore.com”,

“http://dp.information.com/?a_id35&domainname=honeybakeonline.com”,

“http://dp.information.com/?a_id35&domainname=thehoneybakedhamstore.com”and

“http://dp.information.com/?a_id35&domainname=thehoneybakedhamcompany.com”

which contain sponsored links and trigger pop-up advertisements. The content of the “dp.information.com” sites is not specific to the Disputed Domain Names. Thus, use of the Disputed Domain Names does not constitute a bona fide offering of goods or services. In addition, Respondent (LaPorte Holdings) is not commonly known by the names “honey baked store”, “honey bake online”, “the honey baked ham store”, or “the honey baked ham company”. Respondent does not have any affiliation, association, or connection with Complainant, or any of its subsidiaries or affiliates, and has not been authorized to use the HONEYBAKED Marks. Finally, Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain. Rather, Respondent earns a commission by redirecting Internet traffic.

Respondent’s Predecessor’s Commercial Gain

Respondent’s predecessor, Horoshiy, Inc., has been misleadingly using the Disputed Domain Names to divert traffic to the following web pages:

“http://dp.information.com/?a_id35&domainname=honeybakedstore.com”,

“http://dp.information.com/?a_id35&domainname=honeybakeonline.com”,

“http://dp.information.com/?a_id35&domainname=thehoneybakedhamstore.com” and

“http://dp.information.com/?a_id35&domainname=thehoneybakedhamcompany.com”

These <dp.information.com> sites contained sponsored links and triggered pop-up advertisements. Horoshiy, Inc.’s deliberate use of a confusingly similar imitation of Complainant’s famous HONEYBAKED Marks was calculated to increase hits to Horoshiy, Inc.’s websites and increase Horoshiy, Inc. revenue. Horoshiy, Inc. was encouraging and taking advantage of visitor’s confusion between the Disputed Domain Names and Complainant’s registered HONEYBAKED Marks. In particular, Horoshiy, Inc. was benefiting from Internet users’ typographical errors, profiting every time a user accidentally omitted a “d” when intending to type <honeybakedonline.com>.

Respondent’s Predecessor’s Pattern of Abuse

Respondent’s predecessor, Horoshiy, Inc., has been involved in four recent domain name disputes, each of which was resolved by the National Arbitration Forum (hereinafter referred to as “NAF”) against Horoshiy, Inc. and in favor of the complainants. See Infospace, Inc. v. Horoshiy, Inc., NAF Claim No. FA00282775; Avery Dennision Corp. v. Horoshiy, Inc., NAF Claim No. FA000289048; Citigroup Inc. v. Horoshiy, Inc., NAF Claim No. FA00290633; ADP of North America Inc. v. Horoshiy, Inc., NAF Claim No. FA00304896.

In each of the NAF decisions, as in the case at hand, Horoshiy, Inc. registered and used domain names that were confusingly similar to Complainant’s registered domain names, for the purpose of diverting Internet users to search engine websites unrelated to Complainants’ marks. The NAF Panels consistently have determined that the confusion created by Respondent is evidence that Respondent registered and used the domain names in bad faith. See, e.g., Infospace, Inc. at 5. (“[T]he Panel determines that the initial user confusion that the domain names cause is evidence that Respondent registered and used the domain names in bad faith pursuant to Policy paragraph 4(a)(iii)”.); Avery Dennision Corp. at 5 (“Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy paragraph 4(b)(iv)”.); Citigroup Inc. at 5 (“Respondent registered . . . domain names for the primary purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s website . . . “.); ADP of North America Inc. at 5 (“Using a domain name that is confusingly similar to a third party’s mark to link Internet users to commercial websites is neither a bona fide offering of goods or services under Policy paragraph 4(c)(i) nor a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii)”.).

Prior to bringing this action, Complainant notified Horoshiy, Inc. of Complainant’s rights and demanded that Respondent transfer the <honeybakedstore.com> domain name to Complainant and stop all infringing acts. At the time, Complainant was unaware of Horoshiy, Inc.’s registration of the <honeybakeonline.com>, <thehoneybakedhamstore.com>, and <thehoneybakedhamcompany.com> domain names. Complainant, by its attorneys, sent a demand letter by e-mail to Horoshiy, Inc. on September 10, 2004 and a follow-up e-mail on September 22, 2004. As of the date of the Complaint, Complainant had received no response from Horoshiy, Inc.

5. Parties’ Contentions

A. Complainant

Complainant, pursuant to Paragraph 4(a) of the Policy, contends the Disputed Domain Names adopted by Horoshiy, Inc., Respondent’s predecessor:

(1) are identical or confusingly similar to the Complainant’s HONEYBAKED Marks (Policy, paragraph 4(a)(i));

(2) Horoshiy, Inc. has no full rights or legitimate interests in respect of the Disputed Domain Names (Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2));

(3) Horoshiy, Inc. registered and was using the Disputed Domain Names in bad faith (Policy, paragraph 4(a)(iii); Rules, paragraph 3(b)(ix)3)); and

(4) Respondent, as successor in interest (albeit by improper transfer) from Horoshiy, Inc. of the Disputed Domain Names, stands in the shoes of Horoshiy, Inc. with regard to the foregoing contentions.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Based on the foregoing facts, the Panel finds that the Disputed Domain Names are confusingly similar to Complainant’s registered HONEYBAKED Marks in that the Disputed Domain Names are either identical to or insignificant variations of those HONEYBAKED Marks.

B. Rights or Legitimate Interests

Based on the foregoing facts, the Panel finds that Horoshiy, Inc., had no use of the Disputed Domain Names, which qualifies under Paragraph 4(c) of the Policy, as a use that demonstrates rights and a legitimate interest in the Disputed Domain Names. As those facts further show, the Panel finds that Horoshiy, Inc. was and is not using the Disputed Domain Names in connection with a bona fide offering of goods or services, is not commonly known by the Disputed Domain Names, and is not making legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain.

As a result, the Panel finds that Horoshiy, Inc. could not and did not convey any rights to or legitimate interests in the Disputed Domain Names to Respondent. Therefore, the Panel finds that Respondent has no rights to or legitimate interests in the Disputed Domain Names.

C. Registered and Used in Bad Faith

Based on the foregoing facts, the Panel finds that Horoshiy, Inc. has engaged in a flagrant pattern of bad faith registration and use. This pattern of abuse is further evidenced by Horoshiy, Inc.’s registration and use of the four Disputed Domain Names, all of which are confusing similar to Complainant’s HONEYBAKED Marks and redirect Internet traffic to unrelated websites for its commercial gain, all prior to the last minute transfer of such Disputed Domain Names to Respondent with full knowledge of Complainant’s demands and claims of ownership of HONEYBAKED Marks.

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 names, <honeybakedstore.com>, <honeybakeonline.com>, <thehoneybakedhamcompany.com>, and <thehoneybakedhamstore.com>, be transferred to the Complainant.

Terrell C. Birch
Sole Panelist

Dated: January 23, 2005