Gregg Appliances, Inc. d/b/a hhgregg v. yanjing mao
Claim Number: FA1102001372267
Complainant is Gregg Appliances, Inc. d/b/a hhgregg (“Complainant”), represented by Bradley M. Stohry of ICE MILLER LLP, Indiana, USA. Respondent is yanjing mao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <hhgreggcoupons.org>, and it is registered with GoDaddy.com, Inc. (“GoDaddy”).
The undersigned, Mr. David H Tatham 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.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on February 10, 2011; the Forum received payment on February 10, 2011.
On February 11, 2011, GoDaddy confirmed by e-mail to the Forum that the disputed domain name was registered with it and that Respondent is the current registrant of the name. GoDaddy has verified that Respondent is bound by its 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 February 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2011 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@hhgreggcoupons.org. Also on February 22, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 March 15, 2011.
On March 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mr. David H Tatham as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it formerly traded as H. H. Gregg and that it has been using this name, or a variant of it, since at least 1960 for its retail store business selling consumer appliances, electronics, and computers. However in 1999 it adopted the name and trademark HHGREGG. It owns trademark registrations in the USA of HHGREGG in plain block capitals and in logo form, as well as of HHGREGG.COM. The most pertinent of these is No. 3,520,020 for HHGREGG which was registered on October 21, 2008 for a wide list of services in Classes 35, 36, 37 and 39 claiming December 1999 as its date of first use. In addition, Complainant owns and uses the domain name <hhgregg.com>.
Complainant claims to have expended significant sums in advertising and promoting its services under the HHGREGG mark through advertisements on television and radio, in newspapers and magazines, and via email and the internet.
Complainant contends that the disputed domain name is confusingly similar to its name and trademark as it consists of this name plus the generic word ‘coupons’, and because it has been held in numerous domain name decisions that where a generic or descriptive word is added to a trademark, the result is almost always confusing similarity.
Complainant also contends that use of the disputed domain name by Respondent is intended to cause confusion or mistake as to the source or origin of the website and to cause the public to believe that the website is associated or affiliated with it.
Furthermore, Respondent –
· has never made a bona fide offering of goods or services under the disputed domain name;
· is not commonly known by the disputed domain name;
· has no intellectual property rights;
· is not using the HHGREGG mark with Complainant’s permission or license;
· is not affiliated in any way with Complainant;
· is not making a legitimate noncommercial or fair use of the disputed domain name; and
· is using Complainant’s name and artwork in an apparent attempt to cause confusion or mistake as to the source or origin of the website.
Complainant contends that Respondent is acting in bad faith because it is inconceivable that he could have selected the disputed domain name without having knowledge of Complainant, given that the website at the disputed domain name displays Complainant’s own logos and artwork. Also he is using the disputed domain name to trade off Complainant’s reputation and to divert customers seeking Complainant’s own and genuine site.
B. Respondent
Respondent replied to the Complaint with a short letter which is reproduced here in full –
I have read your letter and make necessary actions according to that complaint. Hope you will be happy with it !
But sorry i do not know what is the problem with that, so I want to make some clarification:
First of all, as I love the products of HHGREGG, purpose of this domain has some world to related to HHGREGG but it is really not hhgregg,it is only hhgregg coupons. As the domain name shows, I am talking about hhgregg coupons as the same as I am talking about hhgregg coupons but it is none of bussiness of hhgregg.
We think we all believe in freedom of speech. Moveover,we just register my name 'hhgreggcoupons.org'.it does not make any demage to hhgregg product or brand,almost we have not use it to do anything.
Secondly, my domain and I do not directly sell any hhgregg product or any other commercial operation. we just like this domain and register it, is there any problem?
Thirdly, Most important, Registering a trademark at the state or federal government level is not enough to give the trademark owner rights to a domain name. If a trademark owner wants to use its trademark as a domain name, the owner must apply for a domain name registration with an ICANN accredited registrar. Domain names are granted on a first-come, first-served basis. The only criteria for securing a domain name is that no other individual or legal entity already owns a registration for the identical domain name.
By its nature, a domain name is not a trademark. A domain name is merely an informational part of an IP address.
The key to determining if use of a domain name rises to the level of trademark usage and possible infringement is whether the domain name is viewed by consumers as a symbol of the origin of goods and services separate and apart from its use as a domain name.
Thanks for you consideration.
Warmest regards,
yanjing mao
Complainant has, since 1960 operated a retail store business selling consumer appliances, electronics, and computers. Originally it traded under the name H. H. Gregg but in 1999 it adopted the name and trademark HHGREGG.
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.
Complainant has established, to the satisfaction of the Panel, that it has rights in the name and trademark HHGREGG by virtue of several U.S. trademark registrations which either consist of or contain this name. This is sufficient proof for, as the Panel said in Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007): “As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”
It is also very well established through a host of Decisions under the Policy that if a domain name is merely the combination of a common word and a Complainant’s trademark, this is sufficient for a finding that it is confusingly similar to that trademark. For example, in the decision in the case of V Secret Catalogue, Inc. v. Wig Distributions, FA 301727 (Nat. Arb. Forum Sept. 7, 2004) the panel found that the domain name <victoriassecrethair.com> was confusingly similar to the trademark VICTORIA’S SECRET. Also, in the case of Allianz of Am. Corp. v. Bond,FA 680624 (Nat. Arb. Forum June 2, 2006) it was found that the addition of the generic term ‘finance’, which described the Complainant’s business, did not sufficiently distinguish the Respondent’s domain name from the Complainant’s trademark ALLIANZ; and in The Gillette Co. v. RFK Assocs. FA 492867 (Nat. Arb. Forum July 28, 2005) it was found that the domain name <duracellbatteries.com> was confusingly similar to the Complainant’s trademark DURACELL.
Respondent has argued that he is not using the name “hhgregg” because he has added the word ‘coupons’ to it and so it is nothing to do with Complainant and causes Complainant no damage. However as the above quoted Decisions show this argument is not sufficient to avoid a finding of confusing similarity.
Respondent has also stated that “registering a trademark at the state or federal government level is not enough to give the trademark owner rights to a domain name.” However it has been confirmed by GoDaddy, his Registrar, that Respondent signed their registration agreement and is bound by this. The agreement will have referred to the Policy which clearly states, in paragraph 2, that by applying to register a domain name, an applicant warrants, among other things, that “to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.” Because the disputed domain name contains the Complainant’s full trading name, because it is clear from Respondent’s Response that he is aware of Complainant, and because the website at the disputed domain name contains many references to Complainant (see below), it is clear that Respondent is in breach of the above statement and that his argument is false.
Consequently, on the basis of the above precedents, the Panel finds that paragraph 4(a)(i) is proved in relation to Respondent’s domain name.
It is well established that the burden for proving that a respondent has no rights or legitimate interests in a disputed domain name rests with a Complainant. However this puts him in the almost impossible position of proving a negative. So it is customary, when a Complainant has made out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, for the burden to shift to Respondent to show it does have rights or legitimate interests. See, for example, both Hanna-Barbera Productions., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006), and AOL LLC v. Jordan Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
In this case the Panel finds that Complainant has indeed made out a prima facie case. Therefore the burden shifts to Respondent. However as can be seen from his Response, which is reproduced above in its entirety, he has very little idea of what is expected of him in this regard.
Paragraph 4(c) of the Policy suggests three ways in which a Respondent might demonstrate that he does have rights to and a legitimate interest in a disputed domain name – that he has made use of the name in good faith, that he is commonly known by the disputed domain name, or that he is using the name legitimately in a way that is either commercial or fair.
Respondent has indicated (although without using these actual words) that in his view his use of the disputed domain name is in good faith and fair. However if one looks at the copy of the site which was annexed to the Complaint, it can be seen that in fact it is neither.
The website offers, for free, “hhgregg coupons” which, it is said, can be used “to shop of hhgreeg stores or online site” as a means of saving money. The site is topped by a prominent banner for “hhgregg appliances & electronics”. The name ‘hhgregg’ is much larger than the other wording, and it is printed in lower case with a circle in the first letter G. This is in fact a faithful reproduction of one of Complainant’s trademark registrations.
It is clear from its name and from the appearance of the site that it is primarily directed at Complainant’s customers, despite the fact that the site also offers other types of coupon, and despite Respondent’s claim, in the Response, that he is “not directly selling any hhgregg product or brand”. However there are at least 9 references to ‘hhgregg’ on the site and, since Complainant has stated, in the Complaint, that any use of its name is without its licence or permission, Respondent’s use of the name “hhgregg” in this way cannot be legitimate.
The Panel therefore finds that Respondent has no rights in the disputed domain name, which contains Complainant’s name and trademark in its entirety and he is not using it legitimately. Therefore paragraph 4(a)(ii) is proved.
It is apparent, from the above description of the website, that Respondent is using the name in bad faith, so the panel finds that paragraph 4(a)(iii) is also proved.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hhgreggcoupons.org> domain name be TRANSFERRED from Respondent to Complainant.
David H Tatham, Panelist
Dated: March 21, 2011
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