Herm. Sprenger GmbH v. Kallareou aka Marilyn Kallareou aka Lauren Kallareou aka The Tack Box aka The Tack Box Inc, et al
Claim Number: FA0110000100181
Complainant is Herm. Sprenger GmbH, St. George, UT (“Complainant”) represented by Marshall H. Rich. Respondent is Kallareou, Montvale, NJ (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hermsprenger.com>, registered with Network Solutions, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on October 1, 2001; the Forum received a hard copy of the Complaint on October 1, 2001.
On October 2, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <hermsprenger.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 2, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 22, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A late response was received and determined to be complete on October 26, 2001.
On November 5, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant asserts that it has rights to and legitimate interests in the HERM.SPRENGER mark that is contained in its entirety in the domain name registered by Respondent and that the domain name, therefore, is identical to or confusingly similar to Complainant’s registered mark. In addition, the Complainant asserts that Respondent has no such rights to or legitimate interests in the mark contained within the confusingly similar domain name and therefore has no such rights and interest in the domain name. The Complainant also urges that Respondent acted in bad faith in registering and holding the domain name containing Complainant’s mark.
B. Marilyn Kallareou filed a letter in response. If read liberally, Ms. Kallareou’s letter may be taken to be a response on behalf of herself and Lauren Kallareou, which Marilyn Kallareou maintains is the true owner of the <hermsprenger.com> domain name. This filing seems to assert that Respondent, through Lauren Kallareou, obtained rights in the domain name by selling and by offering to sell Complainant’s products and that these are legitimate rights to the mark. Respondent further asserts that she has been “negotiating the selling of the name to a company in Germany” and she relates that Herm Sprenger GmbH offered her $5,000. in merchandise in exchange for a transfer of the domain name.
The undisputed facts establish that Herm Sprenger GmbH is a well-known manufacturer of equipment and supplies for horses and dogs. It originated in Germany and does business elsewhere in the world, including the United States. In the United States, its authorized representative is German Equestrian Manufacturing, Inc. in St. George, Utah. Herm Sprenger GmbH holds the United States Trademark HERM.SPRENGER, Certificate of Registration No. 1550721, issued August 8, 1989. This trademark is used for boat fittings made of non-precious metals, chains and snap hooks, snaffles, bits, curbing bits, stirrups and spurs, hoof picks, toe nail clippers, thinning shears, trimming cutters, scissors, riding harness and tackle, leather and plastic leashes, curry combs, sweat scrapers, horse brushes, mane combs, dog combs, dog rakes, scratchers, brushes, grooming brushes and carders.
Herm Sprenger GmbH has been engaged in commerce in this area for 125 years.
Marilyn Kallareou and Lauren Kallareou also sell equestrian equipment. Lauren Kallareou registered the domain name <hermsprenger.com> November 30, 1999. When Internet users access the <hermsprenger.com> domain name, they are diverted to Marilyn Kallareou’s The Tack Room, which also sells equine products, like those manufactured by Complainant, and including saddles, which HERM.SPRENGER does not manufacture. Lauren Kallareou was a former customer of the Complainant but Complainant denies that she is in any way authorized to represent Complainant and Complainant states in its filing in this proceeding that it no longer permits Respondent to sell Complainant’s products.
Further, Complainant avers and Respondent does not deny that Respondent is not known by the HERM.SPRENGER mark and has never been known by that mark.
In addition, it is undisputed that Respondent has offered the domain name for sale to Complainant and to another German company.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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;
(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.
Complainant has established that it has had rights in the HERM.SPRENGER mark for more than a century. The domain name <hermsprenger.com> registered by Respondent contains in its entirety Complainant’s well-known and well-established mark. The domain name is identical to Complainant’s HERM.SPRENGER mark. It is well settled that the addition of TLDs such as “.com” and “.net” do not defeat a claim that the domain names are identical to another's mark. See, e.g., Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Therefore, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has established rights to and legitimate interests in the HERM.SPRENGER mark that is contained in its entirety in the disputed domain name that Respondent registered. Respondent is not a licensee of Complainant and is not in any way authorized to use Complainant’s HERM.SPRENGER mark. Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).
Additionally, the facts permit an inference that Respondent is intentionally attempting to divert Internet consumers who are seeking Complainant to Respondent’s site. Such use is not a bona fide use under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites).
Therefore, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant urges that Respondent registered and is holding the domain name in issue in bad faith. The evidence permits an inference that Respondent knew of Complainant’s interest in its famous mark prior to registering the domain name in issue. The record permits an inference of bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent has also intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website and services. See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intends to use Complainant’s marks to attract the public to the website without permission from Complainant); See Anne of Green Gable Licensing Authority, Inc. v. Internetworks, AF-00109 (eResolution June 12, 2000) (finding bad faith where Respondent used the domain name <anneofgreengables.com> to link users to a website that contains information about the Anne of Green Gables literary works, motion pictures and the author, L. M. Montgomery, where a visitor to the website may believe that the owner of the mark ANNE OF GREEN GABLES is affiliated with or has sponsored or endorsed Respondent's web site).
It is clear under ICANN Policy that registering a domain name primarily for the purpose of disrupting the business of a competitor also constitutes evidence of bad faith registration and use. Policy ¶ 4(b)(iii). See Puckett, Individually and d/b/a Nature’s Window v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from the Complainant to a competitor’s website in violation of Policy 4(b)(iii).
Complainant also contends that Respondent registered the domain name with the intent of selling it for a consideration in excess of out of pocket costs, which constitutes evidence of bad faith. See General Electric Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that the Respondent registered and used the domain name in bad faith by using the domain name to direct users to a general site offering the domain name for sale). From the parties’ submissions, the Panel is unable to determine which of these parties made the first offer relative to the sale of the domain name but it is undisputed that Respondent offered to sell the domain name for a valuable consideration in excess of any reasonable out of pocket expenses shown by Respondent to be related to registration and development of the domain name. Although the mere offer of a domain name for sale does not constitute bad faith, it is clear from the record in this case that Respondent was aware that she was infringing upon Complainant’s mark at the time the domain name in issue was registered and that Respondent then tried to sell the domain name in issue to another German company before offering to transfer it to the Complainant in exchange for $5,000 in Complainant’s merchandise.) The Panel must look to the totality of the circumstances in making a finding of bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”). Here, the Panel finds that Respondent’s conduct with regard to the registration and use of a domain based on Complainant’s corporate identity and mark evidences bad faith.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted. Accordingly, it is Ordered that the domain name <hermsprenger.com> be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 19, 2001.
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