AM General LLC v. Rebecca Smith / HumveeUK
Claim Number: FA2003001888214
Complainant is AM General LLC (“Complainant”), represented by Gerard T. Gallagher of Barnes & Thornburg LLP, United States. Respondent is Rebecca Smith / HumveeUK (“Respondent”), represented by Dominic Gosling, Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <humveeuk.com> (‘the Domain Name’), registered with Tucows Domains Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 13, 2020; the Forum received payment on March 13, 2020.
On March 13, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <humveeuk.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 March 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 6, 2020 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@humveeuk.com. Also on March 16, 2020, 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 April 6, 2020.
The Complainant provided an additional submission on April 6, 2020. The Respondent also provided additional submissions, also on April 6, 2020 and April 7, 2020.
On April 7, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne as Panelist.
Taking account of the circumstances of the worldwide pandemic, on April 7, 2020 Panelist granted the Respondent an exceptional extension to provide the correspondence between the parties he referred to as evidence until Jun 15, 2020.
On June 15, 2020 the Respondent requested a further extension until September 15, 2020 stating that he had started to work part time, but that his solicitor was not opening until September. Since UK lockdown restrictions had eased so that the UK government has asked all people who can work from home to work from home and allowed workplaces to open with social distancing restrictions the Panelist allowed an extension until June 24, 2020 and requested that by that date the Respondent get a letter from his Solicitor confirming that the Solicitor has custody of the relevant documents requested and would not open until September.
The Respondent provided an additional submission on June 24, 2020 but did not provide the requested evidence or request a further extension.
On June 24, 2020 the Panelist requested that the Complainant provide the requested correspondence by July 24, 2020. On July 23, 2020 the Complainant provided correspondence as evidence.
On July 29, 2020 Respondent pointed out Complainant had sent some correspondence which did not relate to this case. On July 30, 2020 Complainant requested that certain correspondence it had provided in error should be stricken from the record,
On July 30, 2020 the Panelist allowed the Respondent 14 days to comment on the documents provided by the Complainant until August 13, 2020. No further comments were received.
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
The Complainant’s contentions in its Complaint can be summarised as follows:
The Complainant is the owner of, inter alia, the mark HUMVEE registered inter alia in the USA and the UK, first used in the USA in 1983.
The Domain Name registered in 2016 is confusingly similar to the Complainant’s HUMVEE mark wholly incorporating it, adding the geographical indicator "UK" and the gTLD ".com" which do not prevent said confusing similarity.
Respondent does not have rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant.
The Domain Name is being used to divert those seeking the Complainant and its services to the website of the Respondent where the Respondent offers for sale apparel not of the Complainant’s manufacture trading off the goodwill of the Complainant with actual knowledge of the Complainant and its rights, holding itself out as the "HUMVEE UK".
Respondent has intentionally and willfully infringed the rights of the Complainant setting up a web site used in connection with the sale of HUMVEE vehicles, parts for HUMVEE vehicles and apparel featuring the Complainant’s trademarks and has registered and used the Domain Name in bad faith in a deliberate attempt to attract Internet users under false pretenses to Respondent’s website for Respondent’s commercial gain.
B. Respondent
The Respondent’s contentions can be summarised as follows:
The use of "Humvee" as part of its brand/company/domain name falls within fair usage guidelines and is essential to the Respondent’s business.
The Respondent solely deals with importing and exporting Humvee vehicles and so this is a bona fide offering of goods or services.
The Domain Name was not purchased in an act of bad faith and at no time has been used with malicious intent.
Subject to legal advice the Respondent may be prepared to consider rebranding to a more descriptive name that leaves less room for confusion perhaps "HumveeUKImportSpecialists" and provide a very clear disclaimer below its site header. The Domain Name would no longer be used and would auto forward to its new domain thus allowing continuing monitoring of incoming e mail to that domain which is used for personal e mail by the company director.
The Complainant has no presence in the UK and has never sold Humvee vehicles in the UK. It discontinued manufacture of Humvee vehicles several years ago and has never actively sold them to the general public.
The Respondent legitimately sells US military Humvee vehicles. Every single Humvee vehicle sale is approved individually by US Homeland Security. The Respondent does not compete with the Complainant as the Respondent offers a product and service to the public that the Complainant does not offer to the public. The Respondent’s business has zero impact on the Complainant or their business.
The Complainant’s registration of the mark HUMVEE may not hold up if challenged. The official name given by the Complainant to the vehicle was High Mobility Multi Wheeled Vehicle HMMWV. The nickname ‘Humvee’ was collectively assigned to the vehicle by US military personnel long before the Complainant claimed the word as their own and registered it as a trade mark.
It is noted that the Respondent said this Response was without prejudice and that as the Complainant was under lockdown and its staff furloughed and business closed due to the Corona virus it had been unable to access legal advice. The Respondent requested an extension and postponement of proceedings stating that to proceed under lockdown was unreasonable. However, the Respondent wanted to use the arguments set out above in the continuing proceedings thereby waiving without prejudice privilege.
C. Additional Submissions
On April 6, 2020 the Complainant submitted additional contentions in an additional submission which can be summarised as follows:
Complainant owns the mark HUMVEE for apparel and licenses production and sale of apparel featuring the Complainant’s trade mark.
Apparel featuring the Complainant’s HUMVEE trade dress is sold on the web site associated with the Domain Name. Accordingly, Respondent’s assertion that its use of the HUMVEE mark constitutes fair use is incorrect. Selling apparel branded with Complainant’s trade dress is in no way an essential part of Respondent’s business and is in competition with the Complainant.
Fair use doctrine does not entitle Respondent to incorporate the Complainant’s HUMVEE mark into the Domain Name or the Respondent’s logo and corporate name, thereby misleading consumers.
It is false to say the Complainant discontinued manufacture of its HUMVEE vehicle, which is still in production. Complainant has also previously produced commercial vehicles.
The Respondent was aware of the Complainant when it registered the Domain Name and is using the Domain Name to mislead consumers into believing the Respondent is endorsed by or associated with the Complainant.
The Respondent has numerous HUMVEE trade mark registrations around the world and is the owner of that mark. It is false to state that these registrations will not hold up if challenged.
On April 6, 2020 the Respondent made an additional submission which can be summarised as follows:
The Respondent does not sell branded clothing. The photographs of the clothing the Respondent sells on the web site attached to the Domain Name clearly shows there is no branding.
The Complainant dropped their case against the Respondent after trying to impose several unlawful restrictions on the Respondent from selling certain uncontrolled items freely available from official military surplus outlets, eBay and Craigslist.
The Complainant’s European solicitor approached the Respondent in 2019 and accepted that the Respondent actually complied with fair usage of the mark described in that correspondence before the claim was dropped against the Respondent.
Due to lockdown legal advice was not then available to the Respondent. Since the Respondent’s staff was furloughed the Respondent was being forced to commit a criminal offence by responding. The Respondent could not respond to the case until 3 weeks after the UK has come out of lockdown. The Respondent was not expected to return to work until June 2020 at the earliest. (Since this time the Respondent has gone back to work part time).
The Complaint has been filed against the name on the current WHOIS information, but the current legal owner of the Domain Name is Smartuki Motorsport Ltd/Dominic Gosling.
On April 7, 2020 the Respondent made available to the panelist a copy of an e-mail exchange with the Complainant which can be summarised as follows:
The Respondent apologized to the Complainant and admitted that the site did offer a t-shirt with a HUMVEE vehicle silhouette, but it was a dummy page that should have been removed at launch, but that no such t-shirts had been sold and the page would be removed.
The Respondent filed an additional submission on June 24, 2020, but did not request a further extension and did not provide any further documents. The further submission can be summarised as follows.
i) The Respondent’s solicitor is closed and not expected to open until September.
ii) The t-shirt with the HUMVEE vehicle silhouette was never sold.
iii) The decision should be based on UK trade mark law and fair use principles.
iv) The Respondent exports and sells used, ex-military Humvee's to private collectors and enthusiasts mainly in Europe. The Respondent does not offer this service anywhere in the world and do not even sell new HUMVEE vehicles to private individuals even in the USA. The Complainant has no brand presence, outlets dealers or representatives in the UK. The Respondent is in no way whatsoever in competition with the Complainant either directly or indirectly and therefore finds its actions somewhat petty; they are a billion dollar manufacturing company: the Respondent is a very small family run business that turns over around US$200,000-300,000 annually that is not a threat to the Complainant in any way at all, as there is absolutely no product, service or market overlap between the two companies.
v) The Respondent was contacted by James Fish of JA Kemp LLP, the Complainant’s UK solicitors late summer 2019. In December the Respondent made a 'compromise' offer to James Fish, which he agreed was reasonable and would propose it to his client, that was the week before Christmas and so far he has not updated the Respondent further.
vi) The Respondent accepts that upon first glance the term 'humveeuk' on its own could suggest it directly represents Humvee (or the Respondent) themselves, however the moment you arrive on the Respondent’s website it is fairly clear what kind of business it is. The Respondent has spent a great deal of time and money to generate web traffic and promote its small business.
vii) The Respondent proposes that it re-brands across all domains as 'HumveeUKImports.com' so that its domain is more descriptive in line with UK fair use guidelines. In return it would ask the it is able to retain ownership/control of the domain 'HumveeUK.com', which is currently its primary domain and used for both business and personal email addresses, for a minimum of 12 months to allow it to migrate to new email addresses and retain traffic. The Domain Name would not be visually used anywhere it would just auto forward to the new more descriptive domain. The proposed changes can be put in place within 7 days.
The Complainant is the owner of, inter alia, the mark HUMVEE registered inter alia in the USA and the UK, first used in the USA in 1983.
These Proceedings have been correctly filed against ‘Humvee UK’ which is the name under which the Respondent registered the Domain Name as evidenced by the WhoIS database.
The Domain Name registered in 2016 is used for a site offering HUMVEE vehicles, parts and t-shirts. This included t-shirts with an image of a HUMVEE vehicle although no such actual t-shirts were sold.
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 Issue
The Respondent registered the Domain Name under the name ‘Humvee UK’ as evidenced by the WhoIs database. Accordingly these proceedings have been correctly filed against Humvee UK, the name under which the Domain Name was registered. In correspondence the Respondent has admitted that it conducts business through the Domain Name. Accordingly there is no need for fresh proceedings to be filed even though the Respondent’s representative Rebecca Smith has now left the Humvee UK business. Nominee registrants have been involved in several previous cases including Imperial College v. Webweaver Case D2000-1146; Investissement Marius Saradar S.A.L. v. John Naffah Case D2000-0853, Cellular One Group v. The Design Factory Case D2000-1670 and Computer Futures Recruitment v. Keith Phillips Case AF-0106, and in each of those cases the Panel has had regard to who it was who had the substantive interest in the domain name.
The Domain Name consists of the Complainant's HUMVEE mark (which is registered, inter alia, in the USA and the UK and first used in the USA in 1983), the generic geographical term "uk" indicating the United Kingdom and the gTLD ".com".
The Respondent has alleged that the Complainant is not using the Complainant’s mark in the UK, which the Complainant denies. The Respondent also argues the Complainant’s mark is descriptive (because the term "Humvee" was coined by US personnel before the Complainant registered it as a trade mark) which the Complainant also denies. The Respondent has not mounted a challenge to the Complainant’s mark in Court or in the UK trade mark registry and the Complainant has registrations of its mark in the USA and the UK sufficient to satisfy the Policy. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Previous panels have found confusing similarity when a respondent adds geographical terms to a Complainant's mark. See Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy 4(a)(i) analysis”).
The gTLD ".com" does not serve to prevent confusing similarity between the Domain Name and the Complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
The Respondent has said it may be prepared to consider rebranding to a more descriptive name that leaves less room for confusion perhaps "HumveeUKImportSpecialists" and provide a very clear disclaimer below its site header. It seems that the Respondent, itself, therefore admits that the Domain Name is confusing. see Maplebear Inc. DBA Instacart v. Jamal Nasir, FA2006001901848 (Forum Aug. 7, 2020) (Finding for Complainant under policy ¶ 4(a)(i) where Respondent concedes the domain name is confusingly similar, but still performing the relevant 4(a)(i) analysis).
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s HUMVEE registered mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
The Respondent is making commercial use of the Domain Name so this is not a case of noncommercial use.
The Complainant has not authorised the Respondent to use its HUMVEE trade mark.
The Respondent argued in its initial response that the use of "Humvee" as part of its brand/company/domain name falls within fair usage guidelines and is essential to the Respondent’s business as the Respondent solely deals with importing and exporting Humvee vehicles and the Respondent argues this is a bona fide offering of goods or services. Later the Respondent conceded that it had offered unbranded t-shirts not manufactured by the Complainant on its site and had by mistake not removed a test page which offered a t-shirt that had an image of a HUMVEE vehicle on it also not of the Complainant’s manufacture, although no such t-shirts had been sold.
The Panel does not agree that the use of the Complainant’s trade mark as a Domain Name is necessary for the Respondent’s trade. Many online businesses are not named after the brands that they sell and it would have been possible for the Complainant to register a domain name that did not contain the Complainant’s mark and choose a descriptive domain name without using a brand, or to register a domain name containing a brand of its own, such as Tesco who have their own brand to sell food. See YETI Coolers, LLC v. Randall Bearden, FA 1606001680755 (Forum Aug. 10, 2016) (“The theory of nominative fair use exists, but it does not extend to the right to include a trademark in a registration of any kind, and definitely not in a domain name.”); see also JUUL Labs, Inc. v. Domain Administrator / See PrivacyGuardian.org, FA2005001896575 (Forum June 12, 2020) (Finding that, among other things, Respondent lacks rights or legitimate interest in the domain name because "Respondent’s use of the JUUL and JUULPOD marks in the disputed domain name is not nominative and can easily be avoided, and accordingly Respondent does not need to make use of the JUUL or JUULPOD marks in the disputed domain name in order to identify its website").
Further the Respondent has admitted that the Domain Name is confusing. Under this Policy, the Domain Name, therefore, cannot be a bona fide offering of goods or services and the Respondent will not be regarded as commonly known by the Domain Name under the Policy as the Domain Name will be likely to be perceived as connected with the Complainant and not an independent on line business with its own name like Tesco. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
The Respondent has said that is does not compete with the Complainant. However the concept of "compete" is wide under the Policy and extends to use of another’s trade mark to attract customers to offer goods not of the Complainant’s and trade mark owner’s manufacture and wider in certain cases. The Respondent admits that it has offered t-shirts not manufactured by the Complainant on its web site. Accordingly the panel finds that the Respondent has competed with the Complainant within the meaning of the Policy.
Under the Policy, "compete" is broadly interpreted to encompass activities which are in opposition to another. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, sec. 3.1.3 and cases cited therein ("Noting that the scenarios enumerated in UDRP paragraph 4(b) are non-exhaustive, panels have applied the notion of a “competitor” beyond the concept of an ordinary commercial or business competitor to also include the concept of “a person who acts in opposition to another” for some means of commercial gain, direct or otherwise."); see also H-D U.S.A., LLC v. Auliya ulfiyanto, FA 1682051 (Forum Aug. 17, 2016) (adopting a broad interpretation of “compete and disrupt” in Policy ¶ 4(b)(iii), and finding bad faith where the respondent was “operating a website whose activities are in opposition to Complainant”).See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).
The Respondent alleged that the Complainant’s European solicitor approached the Respondent in 2019 and accepted that the Respondent actually complied with fair usage of the mark described in that correspondence before the claim was dropped against the Respondent. However, there is no evidence of this in the correspondence between the Parties in evidence and the Panel took the trouble to request copies of all this correspondence which the Complainant provided, the Respondent declining to do so.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
The Respondent admits that it deals in the Complainant’s goods and therefore had actual knowledge of the Complainant’s HUMVEE mark and the Complainant’s business and products as at the date of registration of the Domain Name. See Taylor Made Golf Company, Inc. v. David Walker, FA1355848 (Forum Dec. 3, 2010) ("Respondent’s use of Complainant’s mark to market Complainant’s products is evidence of Respondent’s knowledge that Complainant was operating under the federal trademark of TAYLOR MADE. Respondent’s actual knowledge of Complainant's mark supports a finding that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii)."); see also JUUL Labs, Inc. v. Hakan Hamzaoglu, FA2003001890140 (Forum April 24, 2020) ("The Panel concludes that Respondent had actual knowledge of Complainant’s rights in the JUUL Mark, especially since Respondent’s website displayed and purportedly sold Complainant’s goods. Such use constitutes bad faith under Policy ¶ 4(a)(iii).").
In the opinion of the panelist, the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant and it offers competing products not of the Complainant’s manufacture under the Complainant’s mark.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site or products or services on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4(b)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <humveeuk.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: August 14, 2020
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