DECISION

 

Hunter Fan Company v. MSS

Claim Number: FA0107000098067

 

PARTIES

The Complainant is Hunter Fan Company, Memphis, TN (“Complainant”) represented by Valerie Walsh Johnson, of Baker, Donelson, Bearman & Caldwell.  The Respondent is MSS, Sulphur, LA (“Respondent”)  represented by W. Joe Mize, of Robichaux, Mize & Wadsack.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <hunterfans.com>, registered with Tucows.

 

PANEL

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.

 

Linda M. Byrne, Esquire as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on July 16, 2001; the Forum received a hard copy of the Complaint on July 16, 2001.

 

On July 17, 2001, Tucows confirmed by e-mail to the Forum that the domain name hunterfans.com is registered with Tucows and that the Respondent is the current registrant of the name.  Tucows has verified that Respondent is bound by the Tucows 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 July 17, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 6, 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 postmaster@hunterfans.com by e-mail.

 

A timely response was received and determined to be complete on August 6, 2001.

 

A timely additional submission was received from the Complainant on August 10, 2001.

 

On August 8, 2001, pursuant to the Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Linda M. Byrne, Esquire as Panelist.

 

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.     Complainant

Complainant contends that Respondent's domain name hunterfans.com is confusingly similar to its trademarks HUNTER and HUNTERFAN.COM; that Respondent does not have any rights or legitimate interests with respect to the infringing domain name; and that the infringing domain name was registered and is being used by Respondent in bad faith.

 

B.     Respondent

Respondent does not dispute that the hunterfans.com domain name is confusingly similar to Complainant's HUNTERFAN.COM mark.  Respondent contends, however, that it has used the domain name hunterfans.com in connection with a bona fide offering of goods prior to notice of this dispute, and that it did not register the domain name in bad faith.

 

FINDINGS

Complainant makes and sells ceiling fans, light fixtures, air purifiers, humidifiers, and thermostats throughout the world in association with the trademark HUNTER.  Complainant also owns numerous national and international registrations for the mark HUNTER in connection with these products.  Complainant has registered the HUNTERFAN.COM trademark in the United States for electronic retailing services via computer featuring ceiling fans, thermostats and air purifiers.  As one would expect, in light of the HUNTERFAN.COM trademark, Complainant operates its official website at the domain name hunterfan.com.  The hunterfan.com web page provides Internet users with a variety of information relating to Complainant's business, including the history of the company, its products and where they can be purchased, and information on service and support for products that have already been purchased from the company.

 

Without notifying the Complainant, Respondent registered the domain name hunterfans.com on November 20, 2000--three years after the Complainant obtained its U.S. federal registration for the mark HUNTERFAN.COM.  Respondent then contacted an authorized sales representative of the Complainant and requested permission from that sales representative to sell Complainant's products online. 

 

On March 2, 2001, Respondent began selling Complainant's products under the domain name hunterfans.com.  A month later, on April 3, 2001, Respondent received permission from the sales representative to sell Complainant's products online.  At no point, however, did Respondent receive, either from the Complainant or the Complainant's authorized sales representative, permission to use the Complainant's mark HUNTERFAN.COM in a domain name or on a web page.

 

Shortly after discovering Respondent's use of the domain name hunterfans.com, on April 25, 2001, Complainant sent Respondent a cease and desist letter demanding that Respondent transfer the domain name hunterfans.com to the Complainant.

 

When the domain name hunterfans.com is accessed, the user is directed to a website displaying the Complainant's products and a stylized logo with the words HUNTERFANS.COM.  In addition, at the bottom of the webpage are the phrases "© HunterFans.com 2001" and "Hunter is a Registered Trademark of the Hunter Fan Company."  No other source-identifying information is present, nor is there any disclaimer regarding the affiliation between the parties. 

 

If an Internet user selects an item for purchase from the hunterfans.com webpage, the user is then directed to an Amazon.com webpage where the selected product may be purchased.  In other words, the hunterfans.com webpage acts as a portal for directing Internet users, who wish to purchase Complainant's products, to Amazon.com's product pages.

 

DISCUSSION

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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

 

Identical and/or Confusingly Similar

Respondent does not dispute that the domain name hunterfans.com is confusingly similar to the Complainant's HUNTERFAN.COM mark.  In fact, the domain name incorporates the Complainant's mark in its entirety, and is identical except for the addition of the letter “s.”  The addition of the letter "s" to the Complainant's mark, however, does not eliminate the similarity between the trademark and domain name.  See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that "the addition of an 's' to the end of the Complainant's mark [Cream Pie] does not prevent the likelihood of confusion"); Victoria's Secret v. Prowse, FA 95696 (Nat. Arb. Forum Nov. 14, 2000) (finding Respondent's registered domain name, "victorias-secrets.net", confusingly similar to the Complainant’s mark VICTORIA'S SECRET); Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that the domain names "beanybaby.com", "beaniesbabies.com", and "beanybabies.com" are confusingly similar to Complainant's mark BEANIE BABIES).

 

Accordingly, this panel finds that the domain name hunterfans.com is confusingly similar to the Complainant's registered mark HUNTERFAN.COM.

 

Rights or Legitimate Interests

Neither Respondent's business name, MSS, nor the name of its principal, Greg Ricks, is even remotely similar to the hunterfans.com domain name.  Moreover, Respondent is not licensed to use the HUNTERFAN.COM mark.  Even assuming that Complainant, through its authorized sales representative, approved of Respondent's use of a website to sell Complainant's goods, Complainant never approved of Respondent's use of the mark domain name hunterfans.com. 

 

Respondent argues that as an authorized reseller of Complainant's goods, Respondent is entitled to use the domain name hunterfans.com to sell Complainant's goods.  In support of this view, Respondent cites Weber-Stephen Products Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000). 

 

Weber-Stephen, however, appears to be the minority approach.  Nikon, Inc. and Nikon Corp. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001) ("The majority view rejects any claim by a licensee to the right to register a domain name consisting of, or containing, the licensor's trademark."); Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., D2000-0113 (WIPO Apr. 13, 2000) ("[E]ven if Respondent is a retail seller of Complainant's products, the collateral trademark use necessary to allow resell [sic] of Complainant's products is not enough to give Respondent proprietary rights in Complainant's trademarks, and certainly not enough to confer the right to use these trademarks as domain names."); Ullfrotte AB v. Bollnas Imports, D2000-1176 (WIPO Oct. 23, 2000) (finding that although the Respondent legitimately sells goods originating from the Complainant, this does not give him the right to register and use the mark as a domain name without the consent of the holder of the trademark); Motorola, Inc. v. NewGate Internet, Inc., D2000-0079 (WIPO Apr. 14, 2000) ("[T]he right to resell products does not create a right to use a mark more extensively than required to advertise and sell the product.  The use of a mark as a domain name clearly goes further than what is required merely to resell products."); Gorstew Ltd. v. Caribbean Tours & Cruises, FA 94927 (Nat. Arb. Forum July 28, 2000) (use of trademark in a domain name is "classic trademark infringement, even if the ultimate result of same is that some revenue flows to the owner of the marks").

 

Moreover, the facts of Weber-Stephen are easily distinguished from those of this case.  In Weber-Stephen, the "Complainant was aware of, and repeatedly approved, Respondent's web site over a period of several years."  Id.  In contrast, Complainant sent a cease and desist letter to Respondent as soon as Complainant became aware of the infringing activities.  Simply put, whatever rights Respondent may have had as a reseller, they did not extend to the use of a domain name that fully incorporates Complainant's mark HUNTERFAN.COM. 

 

For the above reasons, this Panel concludes that Respondent has no rights or legitimate interest in respect to the domain name hunterfans.com.

 

Registration and Use in Bad Faith

Respondent was obviously aware of Complainant's mark prior to registering the domain name hunterfans.com, in view of the fact that Respondent's business is based upon the sale of Complainant's products.  Nokia Corp. vs. Lakhani, D2000-0833 (WIPO Oct. 19, 2000) (finding that Respondent, as a cell phone dealer, must have registered the domain name at issue with full knowledge of the fact that the domain name incorporated Complainant’s well known trademark.); Caterpillar Inc. v. Comercio e Importaciones EIRL, FA 97083 (Nat. Arb. Forum May 31, 2001). 

 

In fact, it is clear that Respondent registered the domain name hunterfans.com with the intention of attracting Internet users who are actually seeking hunterfan.com.  There can be no other reason that Respondent registered the plural of Complainant's distinctive mark HUNTERFAN.COM.  Nokia Corp. vs. Lakhani, D2000-0833 (WIPO Oct. 19, 2000) (finding bad faith where Respondent registered "nokias.com", the plural of Complainant’s well known trademark, in order to attract traffic from Complainant's website).  In attempting to attract, for commercial gain, customers by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, endorsement of the website, Respondent has acted in bad faith.  Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (use of Complainant's mark to attract consumers to buy Complainant's, or others', products is in bad faith because it is likely to cause confusion); Tall Oaks Pub'g, Inc. and Frank L. Slejko, Ph.D. v. National Trade Publ'ns, Inc., FA 94346 (Nat. Arb. Forum May 5, 2000) (use of domain name comprised of Complainant's mark in a manner likely to cause initial interest confusion demonstrates bad faith).

 

In addition, the content of Respondent's website only increases the likelihood of consumer confusion.  The fact that there are no disclaimers present anywhere on the website is further evidence of Respondent's bad faith.  Mikimoto Co. v. Asanti Fine Jewellers Ltd., AF-0126 (eResolution Apr. 8, 2000) ("[A]lthough this is the type of domain name that naturally leads to consumer confusion, I find it particularly telling that Respondent did not offer to take reasonable measures, for example disclaimers of association with Complainant or warnings in meta tags, to help consumer confusion.").  There are absolutely no indications that the website is owned or operated by anyone other than the Complainant. 

 

In fact, the references to "HunterFans.com" and the statement that "Hunter is a registered trademark of the Hunter Fan Company" imply just the opposite.  Respondent has even appropriated the same green, gold, and white color scheme that Complainant uses on its own official website located at hunterfan.com.  Council of Better Business Bureaus, Inc. v. Better Business Bureau, D2001-0677 (WIPO July 13, 2001) (finding further evidence of bad faith passing-off includes the site having a similar look and feel to Complainant's, and by using the same font and color as used by the Complainant).  The ordinary observer would undoubtedly believe that the Complainant is the actual owner of Respondent's website. 

 

For all of the foregoing reasons, this panel concludes that Respondent registered and used the domain name hunterfans.com in bad faith.   

 

In summary, this Panel finds that hunterfans.com is confusingly similar to Complainant's HUNTERFAN.COM trademark, that Respondent has no rights or legitimate interest in the hunterfans.com domain name, and that Respondent has registered and used hunterfans.com in bad faith.

 

DECISION

It is the decision of this Panel that the domain name at issue, hunterfans.com, be transferred from Respondent to Complainant.

 

 

Linda M. Byrne, Esq., Panelist

 

Dated: August 23, 2001