Miller Products Company v. Kim Seung-Nam c/o Homeshop
Claim Number: FA0606000728794
Complainant is Miller Products Company (“Complainant”), represented by Lars E. Gulbrandsen, of Quarles & Brady LLP, 411 East Wisconsin Avenue, Suite 2040, Milwaukee, WI 53202. Respondent is Kim Seung-Nam c/o Homeshop (“Respondent”), 215-901 Samsung Apt, Pohang, KB 790-390 KR.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hamms.com>, registered with Enom, Inc.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 9, 2006.
On June 8, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <hamms.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 June 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 5, 2006 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 postmaster@hamms.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 10, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), as Panelist.
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 <hamms.com> domain name is identical to Complainant’s HAMMS mark.
2. Respondent does not have any rights or legitimate interests in the <hamms.com> domain name.
3. Respondent registered and used the <hamms.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Miller Products Company, is a wholly owned subsidiary of Complainant, Miller Brewing Company. Miller Products Company owns and manages all of the intellectual property and trademark rights for Miller Brewing Company brands of beer. These two entities shall be referred to collectively as “Complainant.” Complainant holds trademark registrations for the HAMMS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 533,200 issued September 30, 1949; Reg. No. 900,930 issued October 8, 1969; Reg. No. 2,761,908 issued June 17, 2003). The HAMMS mark is held and managed by Complainant, and used by Complainant in connection with brewing and selling the Hamms family of beers, and offering beer related goods and services.
Respondent registered the <hamms.com> domain name on April 12, 2002. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website featuring links to third-party websites offering beer-related goods in competition with Complainant, as well as links to unrelated websites. Presumably, Respondent receives pay-per-click referral fees from these links. Respondent’s website also includes a general offer to sell the disputed domain name.
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 established rights in the HAMMS mark through registration with the USPTO. The Panel finds that registration with a government authority is sufficient to establish rights pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <hamms.com> domain name is
identical to Complainant’s HAMMS mark.
The disputed domain name employs the HAMMS mark in its entirety, adding
only the generic top-level domain “.com.”
Top-level domains are required for all domain names, and the addition of
a top-level domain does not alter an identical mark. Thus, the Panel finds that the disputed domain name is identical
to Complainant’s mark pursuant to Policy ¶ 4(a)(i). 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 Gardline Surveys Ltd. v. Domain Fin. Ltd., FA
153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is
irrelevant when establishing whether or not a mark is identical or confusingly
similar, because top-level domains are a required element of every domain
name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the <hamms.com> domain name. Complainant’s assertion creates a prima facie case and shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel may view Respondent’s failure to respond as evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel will evaluate the available evidence to determine whether or not Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Respondent is using the <hamms.com> domain name to redirect Internet users to its website, which features links to third-party websites, some of which offer information about beer and beer related products in competition with Complainant, while others are unrelated to Complainant’s goods and services. Respondent’s website also includes a general offer to sell the <hamms.com> domain name. The Panel finds that such use does not constitute 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). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
Furthermore, no available evidence indicates that Respondent
is commonly known by the <hamms.com> domain name. Respondent’s WHOIS information identifies
Respondent as “Homeshop.” Complainant
asserts that Respondent has no permission or license from Complainant to use
Complainant’s HAMMS mark. Thus, the
Panel finds that Respondent is not commonly known by the disputed domain name
and lacks rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing
in Respondent’s WHOIS information implies that Respondent is ‘commonly known
by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where the respondent was not commonly
known by the mark and never applied for a license or permission from the
complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <hamms.com> domain name resolves
to a website that includes a general offer of the domain name for sale. While offering a domain name for sale is not
inherently a bad faith act, when a domain name identical to another’s trademark
is offered for sale, the Panel may find that such use is evidence of bad faith
registration and use. In light of the
fact that Respondent’s <hamms.com> domain name is identical to
Complainant’s mark, the Panel finds that Respondent’s attempt to sell the
disputed domain name is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(i). See CBS Broad. Inc. v. Worldwide Webs, Inc.,
D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the
offer or sale of domain names, without more, such as to justify a finding of
bad faith under the Policy. However, the fact that domain name registrants may
legitimately and in good faith sell domain names does not imply a right in such
registrants to sell domain names that are identical or confusingly similar to
trademarks or service marks of others without their consent”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
general offer of the disputed domain name registration for sale establishes
that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Respondent’s <hamms.com> domain
name is identical to Complainant’s HAMMS mark, and Respondent is using the
disputed domain name to redirect Internet users, through its website, to
third-party websites offering competing beer related goods and services. The Panel finds that such use disrupts
Complainant’s business and is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See Toyota Jidosha Kabushiki Kaisha v. S&S
Enters. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (“Registration of a domain
name [by the respondent that incorporates another’s trademark] goes further
than merely correctly using in an advertisement the trade mark of another in
connection with that other’s goods or services.”); see also Puckett,
Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the
respondent has diverted business from the complainant to a competitor’s website
in violation of Policy ¶ 4(b)(iii)).
The <hamms.com> domain name is being used by Respondent to confuse Internet users in order to redirect them to Respondent’s website featuring links to third-party websites, from which Respondent presumably receives pay-per-click referral fees. Because Respondent’s <hamms.com> domain name is identical to Complainant’s HAMMS mark, Internet users seeking Complainant’s goods and services may easily find themselves redirected to Respondent’s website. Once redirected to Respondent’s website, Internet users may mistakenly believe that Respondent is affiliated with or sponsored by Complainant. The Panel finds that abusing the goodwill surrounding Complainants mark in order to attract Internet users to Respondent’s website is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
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 <hamms.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 21, 2006
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