HAWA AG v. Hanif Gordang Tobing
Claim Number: FA0904001257216
Complainant is HAWA AG (“Complainant”), represented by Gary
J. Nelson, of Christie, Parker & Hale LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hawa.com>, registered with Pacnames.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On April 15, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 5, 2009 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hawa.com> domain name is identical to Complainant’s HAWA mark.
2. Respondent does not have any rights or legitimate interests in the <hawa.com> domain name.
3. Respondent registered and used the <hawa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, HAWA AG, has used its HAWA mark in connection
with its architectural hardware business.
Complainant registered its HAWA mark with the United States Patent and
Trademark Office (“USPTO”) on
Respondent registered the disputed domain name on
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has provided evidence of the registration of its
HAWA mark with the USPTO. The Panel
finds this evidence adequately establishes Complainant’s rights in its HAWA
mark pursuant to Policy ¶ 4(a)(i). See
Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that
the mark be registered in the country in which the respondent operates; therefore
it is sufficient that the complainant can demonstrate a mark in some
jurisdiction); see also
Respondent’s <hawa.com> domain name is identical to Complainant’s HAWA mark pursuant to Policy ¶ 4(a)(i) since Respondent replicates Complainant’s mark exactly in the disputed domain name and because the generic top-level domain “.com” after the name is irrelevant. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts Respondent lacks rights or legitimate
interests in the disputed domain name.
Complainant must establish a prima
facie case to support these assertions, and the Panel finds Complainant has
done so in these proceedings. Since
Complainant has produced a sufficient prima
facie case, the burden shifts to Respondent to establish it does have
rights or legitimate interests in the disputed domain name. Respondent failed to submit a response to
these proceedings, thus the Panel may infer Respondent lacks rights and
legitimate interests in the disputed domain name. However, the Panel will examine the record to
determine whether Respondent has rights or legitimate interests pursuant to
Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace
Int’l, D2001-0376 (WIPO
Respondent’s website resolving from the <hawa.com> domain name states that the website is “Under Construction.” The Panel finds that this is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii) because the evidence in the record does not provide demonstrable preparations to actively use the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Additionally, the record and WHOIS information provide no
evidence suggesting Respondent is commonly known by the <hawa.com> domain name. There is no evidence in the record that
Respondent is authorized to use Complainant’s mark. Thus, Respondent has not established rights
or legitimate interests in the <hawa.com>
domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that the enumerated Policy ¶ 4(b) factors are not exhaustive, and thus the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Respondent’s website resolving from the disputed domain name
merely states that the website is “Under Construction.” The Panel finds that Respondent has failed to
make an active use of the disputed domain name over a ten-year period, which is
indicative of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hawa.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: May 11, 2009
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