HPE DESIGN LLC v. NetIncome Ventures Inc
Claim Number: FA1209001461370
Complainant is HPE DESIGN LLC (“Complainant”), represented by Benjamin Ashurov of KB ASH LAW GROUP, California, USA. Respondent is NetIncome Ventures Inc (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hennessey.com>, registered with TUCOWS, INC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sir Ian Barker and Honorable James A. Carmody as Panelists, Richard Hill as Presiding Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 6, 2012; the National Arbitration Forum received payment on September 6, 2012.
On September 6, 2012, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <hennessey.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. 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 September 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 9, 2012 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 firstname.lastname@example.org. Also on September 18, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 October 8, 2012.
An Additional Submission by the Complainant was received on October 13, 2012. This Additional Submission was considered compliant with Supplemental Rule 7.
An Additional Submission by the Respondent was received on October 22, 2012. This Additional Submission was considered compliant with Supplemental Rule 7.
On October 19, 2012, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Sir Ian Barker and Honorable James A. Carmody as Panelists, Richard Hill as Presiding 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant alleges that it owns the registered trademark HENNESSEY for “customizing and modifying automotive vehicles to customers' specifications” and for “automobiles and structural parts therefore.” The Complainant and its founder adopted the trademark and service mark HENNESSEY as early as 1993 to provide high performance automobiles throughout the United States and internationally. Since 1993, the Complainant has invested a tremendous amount of effort, time, and resources to promote the HENNESSEY brand. Given these investments by the Complainant, HENNESSEY has come to be recognized as the builders of some of the world’s finest and fastest automobiles.
The disputed domain name is identical to the Complainant’s mark.
The Complainant states that the Respondent has no rights or legitimate interests in the domain name at issue as the Respondent has never been authorized to use Complainant’s trademark. Further, the Respondent is not, and has never been commonly known by that mark and the Respondent has not made any, or attempted to make any, legitimate commercial use of the mark. The Respondent’s only use of the disputed domain name consists of deceiving potential visitors of the website into clicking on advertisements.
According to the Complainant, the disputed domain name should be considered as having been registered and being used in bad faith because the Respondent has registered the domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant or one of its competitors for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name. Indeed, in September 2012, the Respondent’s agent sent an e-mail to the Complainant offering to sell the disputed domain name for a price in excess of $35,000.
Further, says the Complainant, in addition to attempting to sell the domain to the Complainant in bad faith, the Respondent parked numerous advertisement mechanisms on the website at the disputed domain name in order to profit from deceiving people into visiting that web site.
According to the Respondent, this dispute concerns a domain name which is primarily a surname registered in May 2000 by the Respondent, and which has never been used by the Respondent in connection with the automotive goods or services recited in the Complainant’s trademark registration issued in 2012, which alleges a “first use” date in June 2002. The Complainant did not exist until March 2006.
The Respondent alleges that there was correspondence between the parties in 2010 in connection with the potential sale of the disputed domain name.
The Respondent states that the Complainant was formed in Texas in March 2006. It makes no attempt to explain how it was using the HENNESSEY mark four years prior to its existence, as claimed in its US trademark registration application. The Complaint includes a number of allegations such as “since 1993, Complainant has invested a tremendous amount of effort…”. But the Complainant has done nothing prior to 2006, because it did not exist prior to that date. To the extent that the Complaint is drafted to convey the impression that the Complainant existed or engaged in any activities prior to 2006, such an impression is incorrect.
The Respondent states that it may be that the Complainant is successor in interest to rights previously developed by another party, or assigned to the Complainant by its principal, whose name is Hennessey. The Complainant does not present evidence to establish common law trademark rights by it principal, nor does it present evidence of assignment to itself of any such rights. See, e.g., Robert Norcross, Jr., Norcross Corp. v. Marchex Sales, Inc. / Brendhan Hight, FA 1437030 (Nat. Arb. Forum May 8, 2012) (“The Policy further requires that Complainants have rights in the mark. Respondent notes that the registration for the NORCROSS mark is owned by Complainant Norcross Corporation and not by Complainant Robert Norcross, Jr., and that while the Norcross Corporation is noted in the caption of the Complaint, it is not set forth in the body of the Complaint as a Complainant.”).
The Respondent states that it acquired the disputed domain name in March 2000. This is prior to the date of first use in commerce claimed in the trademark registration. This element is dispositive of the case. The Respondent cites UDRP precedents to that effect.
The Respondent alleges (and provides evidence to show) that it used the disputed domain name prior to the filing of this dispute to provide links to resources that may be of interest to persons seeking information about the surname Hennessey, in particular ancestry, family trees, genealogy, etc. This is a legitimate use under the Policy. The Respondent cites UDRP precedents to the effect that using a domain name for advertising links relating to the subject matter of the domain name (in this instance a surname) is a legitimate use of a domain name.
The Respondent cites UDRP precedents to the effect that the long lapse of time between the registration of the disputed domain name and the present proceeding (12 years) makes it more difficult for the Complainant to prove bad faith registration.
According to the Respondent, the Complainant alleges that the domain name was registered, in 2000, “primarily for the purpose” of selling it to the Complainant or a competitor of the Complainant. But the Respondent submits that it registered the domain name in 2000 primarily because it was a surname which is quite close to the favorite brand of cognac of the Respondent’s principal. However, even if such a purpose were bad faith toward the distiller, it would not be bad faith directed toward the Complainant.
Regarding the potential sale of the disputed domain name, the Respondent states that the Complainant initiated those discussions. Indeed, in February 2010, the Complainant’s principal wrote to the Respondent saying, “Let me know if you would be interested in selling this domain name.” It has not at all been unusual for the Respondent to have been contacted by persons named “Hennessey” during the course of the Respondent’s registration of the disputed domain name. The Complainant made no claim of right, did not allege that it owned a prior right; but made an open inquiry as to whether the Respondent would sell the domain name. At that time, the Respondent, assuming the inquiry to be from yet another person named Hennessey, provided a quote of US $15,000. The Complainant made no further inquiry at that time.
Further, says the Respondent, the e-mail cited by the Complainant was not directed solely to the Complainant, but to a roster of sales leads which had been developed in connection with the disputed domain name.
The Respondent alleges that the Complainant has provided misleading or inaccurate or partial information to the Panel and that it may have attempted to mislead the Panel.
C. Additional Submissions
In its Additional Submission, the Complainant states that this dispute concerns a well-known trademark, HENNESSEY that has been continuously used in commerce since at least as early as 1993 to provide world-class high-performance automobiles throughout the United States and the world. The Complainant’s founder, John Hennessey, founded his first automotive company in December 1992. From its founding and throughout its existence, that company was in the business of providing customized high-performance automobiles under the trade name HENNESSEY MOTORSPORTS and under the trade and service mark HENNESEY. The company ceased to exist in 2002.
According to the Complainant, in 2002, John Hennessey founded a new entity. Upon its formation, all common law rights and associated goodwill in the HENNESSEY trade and service mark were assigned from the previous company to the new entity. Accordingly, the new entity resumed the business of providing high-performance customized automobiles under the trademark HENNESSEY. In March, 2006 that new entity was converted to the Complainant. Upon this conversion, all common law rights and associated goodwill in the HENNESSEY trade and service mark were assigned to the Complainant. Upon assignment of these rights, the Complainant resumed the business of providing high-performance customized automobiles under the trademark HENNESSEY and continues to do so today.
The Complainant states that common law rights in a trademark may be orally assigned and cites US case law to that effect. The fact that all three entities provided customized vehicles under the trade and service mark HENNESSEY, and that John Hennessey was a founder of all three entities points to the only reasonable conclusion, namely, that common law rights in the trade and service mark HENNESSEY were assigned to the Complainant. The Complainant provides a supporting declaration by John Hennessey.
Thus, says the Complainant, it has common law trademark rights dating back to 1993 for the mark HENNESEY.
The Complainant notes that in its Response, the Respondent states that “using a domain name for advertising links relating to the subject matter of the domain name – in this instance a surname – is a legitimate use of a domain name”. But the advertising links provided in the website associated with the disputed domain name do not relate to the subject matter of the domain name. The website makes not even a single reference to HENNESSEY: all that is provided by the website are links, that when clicked upon, take the user to more links to websites relating to things ranging from photographers, to cars, to t-shirts, and to genealogy.
Further, says the Complainant, since HENNESSEY is neither mentioned nor seen anywhere on the website, the Complainant understands the Respondent’s position to be that the Respondent’s use of the disputed domain name is legitimate because some people in the world carry the surname Hennessey, and the website associated with the disputed domain name provides paid links to websites that provide information relating to, among other things, genealogy and ancestry for all surnames. The Complainant asks that the Panel reject this position.
The Complainant distinguishes the UDRP cases cited by the Respondent from the present case. According to the Complainant, the Respondent’s use of the disputed domain name contains zero content relating to the surname “Hennessey.” As admitted by the Respondent, the only purported “connection” between the disputed domain name and the content of the links provided in the associated website is that some people in the world carry the surname “Hennessey,” and the website associated with the disputed domain contains links related to websites that provide information related to genealogy and family ancestry for surnames in general. The Respondent’s use of the disputed domain name is no more related to persons with the surname “Hennessey” than it is to any other persons with any other surname. Therefore, the Respondent’s use of the Domain is not legitimate.
The Complainant further develops this argument by making analogies to the marks APPLE and NIKE, which are also surnames.
Regarding bad faith registration and use, the Complainant rebuts various arguments made by the Respondent but admits to initiating the negotiations regarding the potential sale of the disputed domain name. According to the Complainant, the Respondent’s offer to sell the disputed domain name for a price well above out-of-pocket costs demonstrates bad faith registration and use in the sense of the Policy. The fact that the Complainant was the one to initiate the communication is irrelevant. Punishing the victim of a domain squatter for attempting to purchase (as opposed to immediately resorting to a legal proceeding) a confusingly similar domain used in bad faith is unwarranted. Such a finding would motivate domain squatters to wait to be contacted by their victims before making an offer to sell – all in an effort avoid a finding of bad faith should a UDRP proceeding be brought against them.
The Complainant alleges that, given that it holds rights to a trademark that was widely recognized and highly publicized at the time of the Respondent’s registration of the disputed domain name, and that the Complainant is immediately and exclusively identified by the public with its trademark, it is more likely than not that the Respondent registered the disputed domain name primarily for the purpose of selling to the Complainant or a competitor of the Complainant.
Further, says the Complainant, the fact that the Respondent’s sole use of the disputed domain was to offer it for sale far in excess of its documented out-of-pocket costs, warrants an inference that the Respondent registered the disputed domain name in bad faith. The Complainant cites UDRP precedents to support its position.
To conclude, the Complaint states that although the Respondent, and its attorney, appear to be capable UDRP veterans that (at least on the surface) seem to have figured out various ways in which they can squat on domains without being susceptible to a finding of bad faith or illegitimate use, the Complainant respectfully asks the Panel to take a closer look at the Respondent’s actions. The Respondent purchased a domain name that is identical to a well-known trademark, and with which the Respondent has no connection. Further, the Respondent’s only use of the disputed domain name was to place irrelevant advertisements, and leave them there for years. Furthermore, the Respondent has made numerous attempts to sell the disputed domain name at a price far in excess of its out-of-pocket costs. This is the exact kind of behavior that the UDRP was meant to remedy and deter and the Complainant asks the Panel to do just that.
In its Additional Submission, the Respondent alleges that the Complainant’s Additional Submission does not provide convincing evidence of common law trademark rights predating the registration of the disputed domain name. The Respondent presents evidence that, it alleges, contradicts the Complainant’s assertions. The Respondent cites UDRP precedents to support its position.
The Respondent registered the disputed domain name in 2000.
The disputed domain name is a surname.
The Complainant registered its mark HENNESSEY in 2012, claiming first use in 2002.
The website at the disputed domain name contains links to a number of web sites that various services, including genealogy, family histories, etc.
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.
For the reasons set forth below, the Panel finds that it is not necessary to analyze this element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
For the reasons set forth below, the Panel finds that it is not necessary to analyze this element of the Policy.
The Complainant alleges that it has acquired, by transfer, common law trademark rights dating back to 1993. The Complainant does provide evidence that its founder was engaged in customizing high-performance cars since 1993, but the Panel holds that the evidence is not sufficient to establish a common law trademark. See Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark).
It is well settled case law under the Policy that bad faith registration cannot be found if the disputed domain name was registered prior to the acquisition of trademark rights. See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant company did not exist at the time of registration); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).
In the present case, the Panel finds that the Complainant has not proven that it had trademark rights prior to 2002. Thus the Panel finds that the Respondent did not register the disputed domain name in bad faith in the sense of the Policy.
Regarding the negotiations to sell the disputed domain name, it is well established case law under the Policy that an offer to sell cannot be held to constitute evidence of bad faith registration and use if the offer was solicited by the Complainant, in particular because such a situation provides no evidence to indicate that the Respondent registered the disputed domain name with the intent to sell it to the Complainant or one of its competitors. See Key II, Inc. v. Confino, Vico, FA 954029 (Nat. Arb. Forum June 5, 2007) (finding “that Respondent never approached Complainant with an offer to sell the name; rather the Complainant sought to purchase the name for $3,000 and Respondent said that it had valued the disputed domain name on its books at $50,000. Even if this statement was an implied counter-offer to sell the name to Complainant for $50,000, in connection with a showing of bad faith it is important to note that it was Complainant who initially approached Respondent about the sale.”); see also JCM Germany GmbH v. McClatchey Jr., D2004-0538 (WIPO Sept. 17, 2004) (holding that the respondent did not violate Policy ¶ 4(b)(i) by attempting to sell the disputed domain name for profit because the respondent did not register the domain name with the intent to sell it to the complainant or one of its competitors).
As the Complainant notes, the Respondent, and its attorney, appear to be capable UDRP veterans. According to the Complainant, the Respondent has engaged in the exact kind of behavior that the UDRP was meant to remedy and deter. The Panel disagrees.
The equivalent of the legislative history of the UDRP can be found at:
No. 115 of that report states:
A uniform administrative procedure for the cancellation of bad faith domain names registered in deliberate abuse of trademark rights should be available in all open gTLDs.
No. 160 states:
It is considered that concerns about the mandatory nature of the procedure can be greatly alleviated, if not removed entirely, by confining the scope of the procedure to abusive registrations or cybersquatting, ..
No. 171 goes on to define the conditions for abusive registration, which are those found in the UDRP.
Thus, the UDRP must be applied narrowly, on the basis of strict reading of its elements. For the reasons given above, the Panel holds that the UDRP was not meant to remedy the situation concerning the present case.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <hennessey.com> domain name REMAIN WITH Respondent.
Dated: October 29, 2012
Sir Ian Barker Honorable
James A. Carmody
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