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Early Learning Centre Limited v. Kiansu Thoi [2005] GENDND 630 (12 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hunter Douglas Industries, BV, and Hunter Douglas Window Fashions, Inc.

v. Erik Little

Case No. D2005-0460

1. The Parties

The Complainants are Hunter Douglas Industries, BV, of the Netherlands, and Hunter Douglas Window Fashions, Inc., of Colorado, United States of America, represented by Holland & Hart, LLP, United States of America.

The Respondent is Erik Little, of McKinney, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <hunterdouglad.com> (the “Domain Name”) is registered with Abacus America Inc. dba Names4Ever.com / Aplus.Net (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2005. On April 29, 2005, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On April 29, 2005, the Registrar transmitted by e-mail 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 the Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for the 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 May 2, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2005.

The Center appointed Douglas M. Isenberg as the Sole Panelist in this matter on June 7, 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

Complainants assert that Hunter Douglas Industries, BV, is a duly organized and existing Dutch corporation operating in the United States and internationally and that Hunter Douglas Window Fashions, Inc., is a duly organized and existing Delaware corporation with its principal place of business in Colorado. Complainants further assert that while Hunter Douglas Industries, BV, is the registrant of the U.S. trademarks at issue, Hunter Douglas Window Fashions, Inc., “has full rights to use and enforce the trademarks registered to Hunter Douglas Industries, B.V.”

Complainants assert that Hunter Douglas Window Fashions, Inc., produces and sells window fashions such as window blinds under the “Hunter Douglas” name. Complainants further assert that they are “long-standing companies providing, among other products, blind and shade products often used as window coverings in the United States and internationally”.

Complainants assert that they have been using the HUNTER DOUGLAS trademark since at least as early as 1984, in connection with window fashions. In support of this assertion, Complainants cite 13 U.S. trademark registrations that are comprised in whole or part of the HUNTER DOUGLAS mark. Complainant asserts that these 13 registrations are owned by Hunter Douglas Industries, BV.

Complainants assert that they use the HUNTER DOUGLAS trademarks on the Internet and the World Wide Web and that they maintain an official website using the domain name <hunterdouglas.com>.

Complainants assert that they sent a letter to Registrant on March 7, 2005, a copy of which letter Complainants attached as an appendix to their Complaint. The letter states in part: “Our records do not indicate that you are authorized to use or register a domain name containing or similar to the mark HUNTER DOUGLAS. This letter is to request that you explain how you are involved with Hunter Douglas, if you are, or why you feel you are entitled to register the… domain name [<hunterdouglad.com>] with the Hunter Douglas trademark. Please provide us with any documentation that you believe establishes your right to include the HUNTER DOUGLAS brand in your domain name.”

Complainants assert that, in response to their letter, Respondent responded by telephone on March 14, 2005, “stating his belief that Complainants’ trademarks do not prohibit his use of the domain name at issue”.

Complainants assert that they sent a second letter to Respondent, on March 17, 2005, a copy of which letter Complainants attached as an appendix to their Complaint. In the letter, Complainants informed Respondent that, among other things, his registration of the Domain Name violates trademark infringement and dilution laws, the U.S. Anticybersquatting Consumer Protection Act, and the Policy. In the letter, Complainants demanded that Respondent transfer the Domain Name and respond by April 8, 2005. Complainants assert that they received no response to this letter.

5. Parties’ Contentions

A. Complainants

Complainants contend that Hunter Douglas Industries, BV, is the owner of 13 federal trademark registrations in the United States that consist of or contain the mark HUNTER DOUGLAS, and that they have used the HUNTER DOUGLAS mark in the United States since at least 1984.

Complainants contend that, despite the difference of a single letter, the Domain Name is “substantially similar and/or confusingly similar” to Complainant’s trademarks.

Complainants contend that Respondent “has no relationship to Complainants and is not authorized to use the HUNTER DOUGLAS mark or any variation thereof. On information and belief, Respondent has not been commonly known by the domain name. On information and belief, Respondent has no intent to make legitimate non-commercial or fair use of the domain name at issue”.

Complainants contend that Respondent registered and used the Domain Name in bad faith, in part because “the misspelled domain name is nonsensical except if confused with the well known HUNTER DOUGLAS mark”. Complainants further contend that Respondent is the owner of a competitive company called America’s Finest Construction Company, Inc., and that Respondent has apparently attempted “to use the domain name to capitalize on Complainants’ mark to sell competing products”.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (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. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the 13 federal trademark registrations in the United States cited by Complainants, and Complainants’ stated usage of the HUNTER DOUGLAS trademark since at least 1984, it would appear that Complainants have rights in the HUNTER DOUGLAS trademark. Although not required by the Policy, the Rules or the Supplemental Rules, the Panel would have preferred to see as an appendix to the Complaint copies of registration certificates or printouts from the U.S. Patent and Trademark Office’s website showing the validity of these registrations and identifying one of the Complainants as the registered trademark owner – rather than only a table of registrations in the body of the Complaint. Such evidence would have been compelling.

Given the absence of any supporting evidence of the 13 cited trademark registrations, the Panel independently visited the website of the U.S. Patent and Trademark Office (USPTO) to review the status of the oldest registration cited by Complainants, U.S. Reg. No. 1,384,964.1 The Panel observed that, according to a “Trademark Assignment Abstract of Title” available from the USPTO’s website, “Hunter Douglas Industries B.V.” is, by assignment recorded February 24, 1992, the registrant of this registration. Therefore, the Panel is satisfied that Complainants have rights in the HUNTER DOUGLAS trademark.

As to whether the Domain Name is identical or confusingly similar to Complainants’ HUNTER DOUGLAS trademark, the relevant comparison to be made is with the second-level portion of the Domain Name only (i.e., “hunterdouglad”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”); See also United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor the TLD have any source-indicating significance”).

The domain name is not identical to a trademark in which Complainant has rights, as the second-level portion of the Domain Name (“hunterdouglad”) differs by one letter from Complainants’ HUNTER DOUGLAS trademark. However, Complainants need prove only that the Domain Name is “confusingly similar” to a mark in which Complainants have rights. Although the panel disagrees with Complainants’ observation that the “pronunciation” of the Domain Name is identical to the HUNTER DOUGLAS trademark, the Panel agrees with Complainants’ conclusion that the Domain Name is confusingly similar to the HUNTER DOUGLAS trademark, as the difference of a single letter in a 13-character domain name – particularly where, as here, the difference is only a single key apart on a U.S. keyboard and the difference creates a Domain Name that appears to be nonsensical – is insignificant for purposes of confusing similarity. See, e.g., Expedia Inc v. Momm Amed Ia, WIPO Case No. D2002-0157 (transferring registration of the domain name <expida.com> to the owner of the trademark EXPEDIA); DaimlerChrysler Corporation and DaimlerChrysler Services North America LLC v. LaPorte Holdings, Inc., WIPO Case No. D2005-0070 (transferring registration of the domain name <chrystlerfinancial.com> to the owner of the trademark CHRYSLER FINANCIAL). The registration of domain names with such minimal differences is widely known as “typosquatting”.

B. Rights or Legitimate Interests

Complainants have stated that they have no relationship with Respondent and that Respondent is not authorized to use the HUNTER DOUGLAS mark or any variation thereof. Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1, (Visited June 13, 2005).

Accordingly, as a result of Complainants’ unrebutted allegations and without any evidence of Respondent’s rights or legitimate interests in the Domain Name, the panel is satisfied that the Complainant has proven the second of the three elements required by the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is used in bad faith for purposes of the Policy may be determined by evaluating four factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainants have not alleged with specificity in their Complaint which, if any, of these four factors may exist and evidence bad faith. Seemingly with respect to factor (iv) above, Complainants state that Respondent is “the owner of a company called America’s Finest Construction Company, Inc.” (AFCC) a company that “sells window blinds in direct competition with Complainants”. However, the Texas corporate records referenced by Complainants in support of Respondent’s ownership were not included in the Complaint. And, although Complainants provide printouts of the AFCC website, which apparently uses the domain name <afcc1.com>, and Respondent’s e-mail address as listed in the Whois record for <hunterdouglad.com> also uses the domain name <afcc1.com>, this information is insufficient evidence that Respondent is the owner of AFCC (just as, for example, a registrant whose e-mail address uses the <aol.com> domain name is clearly not necessarily an “owner” of America Online, Inc.). Further, while Complainants’ letter to Respondent dated March 17, 2005, refers to Respondent’s hope “that someone will mistype the domain: “www.hunterdouglas.com”, and be redirected to your site”, Complainants nowhere provide any evidence that Respondent actually ever redirected Internet users to the AFCC website.

Further, the Panel is not convinced that the single case cited by Complainants in support of their assertion that typosquatting “is by definition a bad faith use of the domain name”, Coldwater Creek Inc. v. John Zuccarini, WIPO Case No. D2003-0708, is analogous, as the respondent in that case had a pattern of typosquatting, engaged in “mouse-trapping” and exposed advertisements and adult content to Internet users – facts that are missing from this case.

However, Complainants need not convince the Panel that Respondent is the owner of a competing business or that Respondent actually redirected Internet users to a competitive website. The Panel is satisfied that Respondent’s registration of the Domain Name, however used, must in some way disrupt Complainants’ business, in violation of paragraph 4(b)(iii) of the Policy, given the similarity between the Domain Name and Complainants’ highly distinctive trademark and the absence of evidence of any good faith use for the Domain Name. Further, as numerous panels have held, bad faith may be found even where a domain name is used passively, that is, in connection with an inactive website (as Complainant states Respondent is doing “at this time”), provided that, among other things, “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate…”. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

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 <hunterdouglad.com> be transferred to the Complainants.2

Douglas M. Isenberg
Sole Panelist

Date: June 15, 2005

1 “The panel may… undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision”. “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 4.5, (visited June 13, 2005).

2 Where, as here, a complaint is filed by two complainants, neither the Policy nor the Rules expressly provides for determining to which of the two complainants a domain name should be transferred. See paragraph 4b(i) of the Policy, which refers to transfer of the domain name to “the complainant”. (Emphasis added.) However, many panels have awarded the transfer of one or more domain names in cases involving multiple complainants. In some cases, the panel has specified to which complainant the domain name should be transferred. See, e.g., Staples, Inc., Staples The Office Superstore, Inc., and Staples Contract and Commercial, Inc. v. SkyLabs Corporation and DL Enterprises, WIPO Case No. D2004-0220. In other cases, the panel has left the identification of the transferee up to the complainants themselves. See, e.g., Pro Dive Pty Ltd and Pro Dive International Pty Ltd v. Tony Lennartsson, WIPO Case No. D2004-0097. Seeing no need to specify the transferee here, this panel does not designate a transferee but instead defers to Hunter Douglas Industries, BV, and Hunter Douglas Window Fashions, Inc., to decide for themselves which of them will receive the transfer of the domain name <hunterdouglad.com>.