AM General LLC v. ten Velde / HMMWV
Claim Number: FA1909001863663
Complainant is AM General LLC (“Complainant”), represented by Gerard T. Gallagher of Barnes & Thornburg LLP, Indiana, USA. Respondent is Ivar ten Velde, (“Respondent”) of Deventer, Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homeofthehumvee.com> (the “Domain Name”), registered with Key-Systems GmbH.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Clive L. Elliott QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 24, 2019; the Forum received payment on September 25, 2019.
On September 25, 2019, Key-Systems GmbH confirmed by e-mail to the Forum that the Domain Name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@homeofthehumvee.com. Also, on September 26, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 3, 2019.
On October 7, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Clive L Elliott QC as Panelist.
On October 8, 2019 an additional submission was received from Complainant and it has been deemed to be timely.
On October 10, 2019 an additional submission was received from Respondent and it has been deemed to be received in a timely manner according to Forum Supplemental Rule #7.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is the registered owner of the trade mark HUMVEE, the HUMVEE product configuration, and the HUMVEE & Design, for use in connection with various goods and services, including the sale of vehicles, trucks, toys, namely, toy trucks and model kits for building toy trucks, and apparel. Its first date of use is asserted to be as early as 1983.
Complainant has obtained trade mark registration of the HUMVEE mark in a number of countries.
Complainant asserts that it is best known for developing the iconic High Mobility Multi-Purpose Wheeled Vehicle (HMMWV® or Humvee®).
Complainant contends that its goods and services are sold and provided under the HUMVEE® trade mark and other registered marks incorporating the term HUMVEE (collectively “Complainant’s Marks”).
Complainant goes on to assert that as a result of the excellence of its goods and services, together with the widespread association of Complainant’s Marks with Complainant in the minds of the public, the continuous, significant, and substantially exclusive use of Complainant’s Marks, and the numerous trade mark registrations for the same, Complainant has established substantial trade mark rights in Complainant’s Marks.
Complainant notes that Respondent registered the Domain Name on April 14, 2014, and that the Domain Name is confusingly similar and nearly identical to Complainant’s Marks. It incorporates Complainant’s Marks in their entirety and adds the terms “home of the” plus the generic top-level domain “.com.” Complainant submits that these minor additions to Complainant’s Marks are insufficient to negate the confusingly similarity.
Complainant further submits that Respondent is using the Domain Name to divert Internet users seeking Complainant’s website and online services to Respondent’s own website. Complainant asserts the website used in connection with the Domain Name is intended to trick, deceive, and confuse Internet users seeking Complainant’s goods and services. Complainant contends that Respondent is trading off the goodwill of Complainant by registering a domain name incorporating the identical Complainant’s Marks in connection with a website that holds itself out as the “home of the HUMVEE”.
Complainant goes on to assert that it is well known for developing the HUMVEE vehicle. Furthermore, Complainant’s trade mark is well-known and Complainant owns numerous trade mark registrations for its HUMVEE trade marks in numerous jurisdictions around the world. These facts make clear that Respondent was aware, both constructively and actually, of Complainant and its business at the time that it registered the Domain Name, that such knowledge prompted the registration for the purpose of trading off the substantial goodwill of Complainant, and that Respondent then used the Domain Name to mislead consumers into believing Respondent is endorsed by or associated with Complainant. Complainant submits that by holding itself out as the “Home of the HUMVEE”, Respondent is falsely holding itself out as the designer and manufacturer of the HUMVEE military vehicle.
Complainant adds that there is no evidence that Respondent has, as a business or other organization, been commonly known by the name HOME OF THE HUMVEE prior to registration of the Domain Name.
Complainant considers therefore that Respondent has no legitimate interests in the Domain Name and has registered and is using the Domain Name in bad faith.
B. Respondent
Respondent disputes Complainant’s allegations that Respondent is using Complainant’s Mark HUMVEE®. Respondent argues that the word HUMVEE is being used in his website as a description of the vehicle and activity it does and which is a commonly known word throughout the world.
Respondent accepts that Complainant has adopted the word HUMVEE as a registered trade mark, but notes that before that the word Humvee was military slang and a rough acronym for a high-mobility multipurpose wheeled vehicle (HMMWV).
Respondent states that he doesn’t use Humvee as a trade mark but as a description of the activity. Humvee owners are always welcome at his home and he helps private owners with their Humvee vehicles. He does not have a commercial intent and with the money raised he helps restore his own Humvee’s and that of friends.
Respondent points out that Complainant has stated that it is the owner of and has rights to the trade mark HUMVEE, but Respondent notes there is no registration of the trade mark Humvee specifically in the Netherlands.
Respondent denies Complainant’s allegations that he sells Humvee vehicles and products and goes on to assert that he only sells second hand/market goods and restores them or sells them under the concept of <homeofthehumvee.com>. Respondent also asserts that he is a non-commercial, very small organization which together with other volunteers have a passion for the Humvee vehicle and their parts, in the collectors’ world and off-road groups in Europe.
Respondent also denies Complainant’s suggestion that goods and services are sold under Complainant’s Mark, and states further that original parts for the Humvee are used on occasion because he wants to restore them to their original status and make them even better than they came from the factory. In order to do that he has to occasionally use original parts and vehicles but he does it himself and Complainant is not referred to.
Respondent denies Complainant’s allegation that there is a widespread association of Complainant’s Marks. Respondent points out that the website does not show any association with Complainant and it is clear that it is a private website.
Respondent accepts Complainant’s allegation that he uses Complainant’s Marks in the url.com but goes on to say that it is used to describe where the Humvee’s are located and stored at his home in the Netherlands. Respondent states that he is part of a very small organization and nothing in size compared to Complainant as he only repairs, helps others buy and sell the Humvee to restore and drives his own Humvee’s and those of friends.
Respondent denies Complainant’s assertion that the Domain Name is confusing in relation to Complainant’s Mark and goes on to state that Internet users visiting Respondent’s website will see that it has nothing to do with Complainant and is only about the vehicle Humvee itself and Respondent’s services at <homeofthehumvee.com>.
Respondent claims that Complainant’s statement that Respondent’s website is intended to trick, deceive, and confuse Internet users is untrue. As can be seen on Respondent’s website he delivers what he says. Complainant does not deliver products, vehicle and services to private owners of Humvee’s in Europe. Respondent states he is one of many organisations in Europe who have to arrange it for themselves and others. The quality and service he provides is on a different personal level with quality. Respondent also points out that the traffic on his website is on average 30 visitors a day.
Respondent denies Complainant’s allegation that there was no activity before registration of the Domain Name. Respondent advises that he bought his first Humvee in 2010. Respondent argues that this is proof that there was activity before the Domain Name registration date of 2014.
Respondent claims that he has a legitimate interest in using the Domain Name and that once a year he organizes the Home of the Humvee Day on the last day of November. On this day Humvee owners are invited to visit his home to share information, networking, selling and buying Humvee parts, together with a BBQ and a road trip.
Respondent asserts that he and others are a non-commercial organization for the purpose of repairing, selling and buying secondhand Humvee’s on the market.
Respondent queries Complainant’s allegations that it registered its trade mark in numerous jurisdictions throughout the world, including France and Germany, but not the Netherlands specifically.
Respondent submits that he uses the website in good faith to help private owners of Humvees to repair and find parts for their vehicles. This is a service that Complainant does not provide in Europe for private owners.
Respondent notes Complainant’s request that the URL name be transferred to them, but argues that Respondent has used a descriptive name for his Domain Name to describe the activities he and other are performing regarding their Humvee vehicles in the Netherlands.
Respondent suggests that a remedy to the dispute could be a notice put up on his website advising that he is not affiliated with Complainant, or alternatively a link be provided to Complainant’s website. Respondent also suggests that Complainant could possibly purchase the url from him, but advises that other than buying the domain name, he has also expended significant additional costs including name branding in Europe and the US and print work costs for calendars, posters, postals, letters, etc where the url is mentioned.
C. Complainant’s Additional Submission
Complainant refutes Respondent’s argument that Complainant does not own rights to the HUMVEE® trade mark in the Netherlands, where Respondent is located.
Complainant points out that in its Amended Complaint and Exhibit B to the Complaint, it stated that it owns several trade mark registrations for its HUMVEE® trade mark in the European Union. The European Union trade mark system provides a unified trade mark registration system in Europe, and the European Union registrations owned by Complainant provides protection in the member states of the European Union, including in the Netherlands.
Complainant submits that Respondent has therefore misstated that Complainant does not have trade mark rights in the Netherlands.
D. Respondent’s Additional Submission
Respondent queries Complainant’s assertions regarding the unified trade mark registration in the European Union covering the Netherlands. It enquires why Complainant has separate trade mark registrations in Germany and France but not in the Netherlands.
For the reasons set out below Complainant has established it is entitled to relief and accordingly the Panel orders that the Domain Name be transferred from Respondent to Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Preliminary Procedural Question
Both Complainant and Respondent have filed Additional Submissions. The Panel is prepared to exercise its discretion to allow both submissions. In its Additional Submission Complainant notes that it has relevant rights to the HUMVEE® trade mark in the Netherlands, through its European Union registrations.
In its Additional Submission Respondent questions those rights in the light of Complainant’s separate trade mark registrations in Germany and France. That issue is however moot as there is no dispute that Complainant has current trade mark rights covering the Netherlands, and further that is where Respondent resides.
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant claims rights in the HUMVEE mark based upon registration of the mark with, inter-alia, the USPTO (e.g., Reg. No. 2,683,993, registered Feb. 4, 2003). Registration of a mark with the USPTO is sufficient to establish rights in that mark. Further, as noted above, Complainant has achieved registration of Complainant’s Marks in the European Union, which covers the Netherlands.
The Panel therefore holds that Complainant has established rights in Complainant’s Marks under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <homeofthehumvee.com> domain name is confusingly similar to the HUMVEE mark, as the name incorporates the mark along with the terms “home of the” and a “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
On that basis the Panel finds the Domain Name is confusingly similar to Complainant’s Marks per Policy ¶ 4(a)(i).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name. If it does so, the burden shifts to Respondent to show it does have rights or legitimate interests.
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the HUMVEE mark in any way. On the face of it, the WHOIS information of record identifies the registrant of the Domain Name as “ten Velde / HMMWV”. No information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s Marks. Indeed, Respondent does not assert it has been authorised to use Complainant’s Marks.
Instead, Respondent asserts he has a legitimate interest in the Domain Name as he uses it to offer Humvee-related products and services for those passionate about Humvees. The Panel may find that a respondent has legitimate interests in a disputed domain name where it has made a bona fide offering of goods or services or a legitimate noncommercial or fair use. That said, the line between what is legitimate noncommercial or fair use, and that which is not, can be difficult to draw.
For example in Baja Marine Corp. v. Wheeler Techs., Inc., FA 96954 (Forum May 17, 2001) the panel found that the respondent had rights and legitimate interests in the domain name where the respondent made a non-commercial use of the <bajaboats.com> domain name and received no funds from users of the site connected to the domain name. In the present case, Respondent claims that it does not divert users to harm Complainant’s business and that it only attracts thirty (30) unique visitors a month.
However, unlike in Baja Marine Corp Respondent’s use is not merely noncommercial and he appears to have received funds/remuneration from the site connected to the Domain Name. First, while Respondent says he does not have a commercial intent, he acknowledges that “with the money raised he helps restore his own Humvee’s and that of friends”. Secondly, Respondent accepts that he sells second hand/market goods and restores Humvee’s and that he and others are involved in repairing, selling and buying secondhand Humvee’s on the market.
These activities have a commercial purpose or result and Respondent benefits from the cachet of his association with the Complainant’s Mark, accentuated by the representation that Respondent is the “Home of the Humvee”, which suggests that Respondent is somehow associated with Complainant, whether directly or indirectly.
Complainant contends Respondent uses the Domain Name to divert Internet users to Respondent’s website where it commercially benefits from the goodwill of Complainant’s Marks. There is merit in this contention. The Panel infers that consumers are more likely to visit Respondent’s website, where they will be presented with goods and services emanating from Respondent rather than Complainant. In Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) it was found that “Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”)
Complainant provides screenshots of the Domain Name’s resolving website which purports to offer Humvee-related goods and services under the name “Home of the Humvee.”
The Panel finds that Respondent lacks rights or legitimate interests in the Domain Name per Policy ¶¶ 4(c)(i) or (iii).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant also contends Respondent’s intentional use of the Domain Name is to create a likelihood of confusion with Complainant’s Marks in order to attract Internet users for commercial gain and that this is evidence of Respondent’s bad faith.
Use of a confusingly similar domain name for commercial purposes unrelated to a complainant’s business can indicate bad faith registration and use.
In fairness to Respondent, it can be said that it is using the Domain Name in conjunction with its business. Nevertheless, as was made clear in Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) a finding of bad faith registration and use under Policy ¶ 4(b)(iv) may arise where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting. Similar principles are applicable in the present case, for the reasons set out above.
The Domain Name resolves to a website which purports to offer Humvee-related goods and services under the name “Home of the Humvee.” This indicates Respondent registered and used the Domain Name in bad faith.
Further, Complainant argues that in light of the fame and notoriety of Complainant's HUMVEE mark, it is inconceivable that Respondent could have registered the Domain Name without knowledge of Complainant's rights in Complainant’s Mark. In fact, Respondent accepts he is a fan of Complainant’s vehicles but that he doesn’t use HUMVEE/Humvee as a trade mark but as a description of his activities. Having found above that Complainant has established rights in Complainant’s Marks that argument is unavailing, and that Respondent registered and used the Domain Name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homeofthehumvee.com> domain name be TRANSFERRED from Respondent to Complainant.
______________________________
Clive L Elliott QC, Panelist
Dated: October 22, 2019
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