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Volvo Trademark Holding AB v. Auto Shivuk [2005] GENDND 504 (8 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Robert H. Ham Associates, Limited v. Laporte Holdings, Inc.

Case No. D2004-1051

1. The Parties

The Complainant is Robert H. Ham Associates, Limited, Winston-Salem, North Carolina, United States of America, represented by Robert W. Pitts, United States of America.

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

2. The Domain Name and Registrar

The disputed Domain Name <roberthamm.com> (the “Domain Name”) is registered with NameKing.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2004. On December 14, 2004, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the Domain Name at issue. On December 30, 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 January 5, 2005. 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 January 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2005.

The Center appointed Thomas D. Halket as the Sole Panelist in this matter on February 25, 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

These are the facts as alleged by Complainant. They have not been disputed by Respondent. The Panel concludes there is a reasonable basis for them. Complainant, Robert H. Ham, Associates, Limited is the owner of the common law trademark ROBERT H. HAM, which has been used in commerce at least since 1961, and has been used in that precise form since at least 1983. Complainant is also the owner of the common law trademark ROBERTHAM, which has been employed as part of Complainant’s domain name at least since 1996.

The trademark ROBERT H. HAM has been used on Complaint’s website “www.robertham.com” and in regularly distributed catalogs. This trademark has been used to identify Robert H. Ham Associates Limited as the source of goods in the store fixtures and store merchandising supplies industry and marketplace.

The goods with which this mark has been used include bags, racks, mannequins, hangers, gift bags, display cases, shopping bags, showcases and bows, among other items. Complainant’s customers are primarily retail and wholesale stores, who purchase Complainant’s products to display and package the merchandise that they in turn sell to their customers, who primarily comprise consumers. Complainant does not sell directly to consumers. The primary means of marketing store fixtures and store merchandising supplies employed by Complainant and Complainant’s competitors is through catalogs, principally print and more recently online catalogs. Complainant supplies print catalogs to customers and potential customers in all of the states of the United States as well as in foreign countries, including Canada and Mexico. Since 1998, Complainant has maintained an online catalog at a website at “www.robertham.com”.

Respondent’s Domain Name <roberthamm.com> is a simple misspelling of Complaint’s domain name <robertham.com>. Complainant registered the domain name <robertham.com> in 1996, eight years before Respondent registered the Domain Name. Prior to registered the Domain Name, Respondent had not used the phrase roberthamm or Robert Hamm to market store fixtures and store merchandising supplies, and Respondent was unknown to Complainant. Respondent has not approached Complainant to seek a license to use Complainant’s mark. No entity other than Complainant had used these or similar names in competition with Complainant.

Respondent’s website consists of only links to other websites, especially websites offering store fixtures and store merchandising supplies. Respondent offers no products of its own on this website. When the viewer accesses the website for the Domain Name, the viewer is offered only the option of clicking on other websites, most of which are direct competitors of Complainant, to find websites offering specific products.

5. Parties’ Contentions

A. Complainant

Complainant alleges:

(a) The Domain Name is identical and confusingly similar to a trademark in which the Complainant has rights; and

(b) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(c) The Domain Name was registered and is being used by Respondent in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: “(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.”

A. Identical or Confusingly Similar

Complainant has established to the satisfaction of the Panel that it owned and was using the trademark “ROBERT HAM” on or before the date Respondent registered the Domain Name. The fact that the registration has not yet been granted is irrelevant. Common law rights in a trademark are sufficient for this purpose. The Panel also finds that the Domain Name is identical, or for all practical purposes relevant here identical, to Complainant’s Trademark.

Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

There is no evidence that Respondent is or was commonly known by the Domain Name, as an individual, business or otherwise. The sole use the Respondent seems to be making of the Domain Name is to use it to redirect business to competitors of Complainant. The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and used of a Domain Name in bad faith:

(i) circumstances indicating that you [the Respondent] have registered or you have 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 your documented out-of-pocket costs directly related to the Domain Name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your web sit or location.

Based on the undisputed allegations of Complainant which are described in more detail above, the Panel finds there is sufficient evidence to support a finding that Respondent violated subsection (iv). Respondent is clearly typosquatting on Complainant’s mark for commercial gain. Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.

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, <roberthamm.com> be transferred to the Complainant.

Thomas D. Halket
Sole Panelist

Dated: March 4, 2005