Woodlark Circle, Inc. v. Edward Hartley
Claim Number: FA1310001524271
Complainant is Woodlark Circle, Inc. (“Complainant”), represented by Christiane S. Campbell of Duane Morris LLP, Pennsylvania, USA. Respondent is Edward Hartley (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hovermat.com>, registered with GODADDY.COM, LLC.
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.
Francine Tan as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 14, 2013; the National Arbitration Forum received payment on October 28, 2013.
On October 14, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <hovermat.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 October 28, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 2013 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@hovermat.com. Also on October 28, 2013, 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 28, 2013.
On October 31, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Francine Tan 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" 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.
A. Complainant
Complainant is the owner of the HOVERMATT trade mark which has been used by Complainant and its affiliates, licensees and/or its predecessors in commerce since as early as 1997. Complainant owns a U.S. registration for the HOVERMATT mark (Registration No. 2,179,627), which it obtained in 1998. Complainant is entitled to a presumption of ownership, validity and the exclusive right to the use of the mark in connection with the goods identified in its registration certificate. The mark has also been registered in Australia, Brazil, Canada, China, the European Union, and India.
Complainant advertises and promotes a wide variety of safe patient handling devices from its website located at www.hovermatt.com. The <hovermatt.com> domain name is owned by Complainant’s affiliate. As a result of significant investments of time and other resources over the years to maintain its image and quality of its goods and services, Complainant enjoys significant goodwill and a reputation of the highest quality under the HOVERMATT mark. The HOVERMATT is a well known mark.
The disputed domain name resolves to a page bearing the heading “Sale900.com” in giant letters. The site lists nearly 70 pages of domain names that are apparently offered for same, and uses hundreds of third party trade marks and logos to link to other sites. It is unclear whether these are legitimate sites or not. Neither Edward Hartley nor “Sale900.com” is reflected in the disputed domain name. The site states “Hovermat.com is for sale” followed by the note “if you have no money, we accept consumer goods as a trade or sale” and “leasing is a great option too. Sales@DomainiZ.com”.
The disputed domain name was registered on July 24, 2010.
Complainant learnt of the registration of the disputed domain name on August 6, 2013 and on August 7, 2013 sent Respondent a letter asking that he immediately and permanently discontinue unauthorized use of Complainant’s mark, and to agree to allow the disputed domain name registration to lapse or to transfer it to Complainant. Complainant’s efforts to contact Respondent regarding the acquisition of the disputed domain name were to no avail.
The disputed domain name is identical or confusingly similar to Complainant’s mark in which it has rights (paragraph 4(a)(i) of the Policy). The disputed domain name is the phonetic equivalent of and incorporates Complainant’s registered HOVERMATT mark in its entirety.
Respondent has no rights or legitimate interests in respect of the disputed domain name and Complainant has established a prima facie case by virtue of these circumstances:
(i) The disputed domain name was registered after Complainant obtained its incontestable registration and 13 years after Complainant’s first use of the HOVERMATT mark.
(ii) Registration of a trade mark with the USPTO serves as constructive notice of registrant’s rights to all who seek to register domain names (Brooks Peterson v. Batasan ug Katilingban, FA 476974 (Nat. Arb. Forum June 30, 2005).
(iii) Respondent, Edward Hartley, is not commonly known by the disputed domain name. There is no demonstrable use of HOVERMAT on Respondent’s site to refer to Respondent.
(iv) The disputed domain name is offered for sale or lease and there is no evidence demonstrating Respondent has a bona fide offering of goods or services or a legitimate non-commercial or fair use.
(v) Respondent is not sponsored by nor affiliated with Complainant. Complainant has never given Respondent permission to use Complainant’s HOVERMATT mark in a domain name.
The disputed domain name was registered in bad faith, having been registered more than a decade after Complainant’s first use and registration of its HOVERMATT mark, and more than 5 years after the U.S. trademark registration was deemed incontestable. Registration of the mark serves as constructive notice of a claim of ownership of the mark.
The disputed domain name is being used in bad faith and this is demonstrated by Respondent’s general offer to sell it, and Respondent’s attempt to attract, for commercial gain, Internet traffic to his website, using the disputed domain name which incorporates Complainant’s mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s web site and the services offered at the site. Respondent is not making any legitimate non-commercial or fair use of the disputed domain name.
B. Respondent
The disputed domain name and Complainant’s HOVERMATT mark are not the same as the latter has an extra “T”.
Respondent is a domain name reseller. The disputed domain name was available and purchased from Godaddy.com on July 24, 2010. The purpose of the disputed domain name is to “showcase a current invention [of Respondent] which provides a suspension system for Heavy Audio Speaker Systems which have a negative effect of ‘vibrating objects’ around Stereo System. The Hovermat.com system purpose is to damper the sonic vibrations and provide a better listening environment”. The disputed domain name “accidentally made it on [Respondent’s] resale server and showed for sale by accident” and it is no longer on the resale server. Respondent had no knowledge of the existence of the <hovermatt.com> domain name. Complainant should have been “diligent and smart enough” to purchase the disputed domain name for itself. “America would not be capitalist economy (sic.)” if Complainant’s “frivolous accusations were allowed by law”. GoDaddy.com does not allow Respondent to designate which of Respondent’s domain names are for personal use and which are used for resale.
(a) The disputed domain name is confusingly similar to the trade mark HOVERMATT in which Complainant has rights.
(b) The Respondent has no legitimate rights or interests in respect of the disputed domain name.
(c) There is insufficient evidence to support a finding that the disputed domain name has been registered and is being used in bad faith.
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 it has rights in the HOVERMATT trade mark.
The Panel is of the view that the disputed domain name is confusingly similar to Complainant’s trade mark in light of the aural identity and visual similarity between “hovermat” and the HOVERMATT mark. It has been well established in many previous panel decisions under the Policy that minor changes to a mark such as the addition or removing of a letter of an alphabet are not sufficient to remove the confusing similarity with a complainant’s mark.
Paragraph 4(a)(i) of the Policy has therefore been established.
The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Following thereto, the burden shifts to Respondent to show he has rights or legitimate interests. (See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum) (August 18, 2006); Accor v. Eren Atesmen, WIPO Case No. D2009-0701 (July 10, 2009); and AOL LLC v. Gerberg, FA 780200 ((Nat. Arb. Forum) (September 25, 2006).)
Paragraph 4(c) of the Policy provides that any of the following circumstances, if found to exist, would demonstrate Respondent’s rights or legitimate interests in respect of the disputed domain name:
“( i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [Respondent] (as an individual, business, or other organization) has been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [Respondent is] making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Respondent claims that the purpose of his purchasing the disputed domain name was to showcase his “current invention” but provides no evidence whatsoever in support of such claim. Further, there is no evidence of a bona fide offering of goods or services nor of Respondent or any business of his being known as “Hovermat”. In the absence of any substantiation for Respondent’s claim and in view of the Panel’s finding that a prima facie case has been established by Complainant, Panel concludes that paragraph 4(a)(ii) of the Policy has been established.
Paragraph 4(b) of the Policy sets out that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Complainant has asserted its HOVERMATT mark is well known but fails to tender evidence to support its claim. Whilst the doctrine of constructive notice might furnish a basis for inferring knowledge of a trade mark, the Panel is of the view that it should be sparingly applied in proceedings under the Policy. In this instance, the Panel hesitates to find Respondent should be considered to have had constructive notice of Complainant’s HOVERMATT mark, particularly since there is no compelling evidence of the mark’s claimed renown. There is nothing from which the Panel is able to conclude that Complainant’s mark is well known and Panel is of the view that Complainant has not adequately established that Respondent had actual knowledge of Complainant’s mark when it acquired the domain name registration. The Panel is unable to detect evidence of anything which suggests there was bad faith on Respondent’s part. The usual cybersquatting-type situation is not present in this case. There is no obvious imitation by Respondent of Complainant’s website nor obvious evidence of an attempt by Respondent to pass off his website as being that of Complainant’s or to be endorsed or associated with Complainant. The circumstances do not indicate that Respondent registered the disputed domain name for the primary purpose of selling it to Complainant for valuable consideration in excess of reasonable expenses directly related to the cost of registering the disputed domain name, or for the primary purpose of disrupting Complainant’s business. Respondent claims to be in the legitimate business of domain reselling and to have been unaware of Complainant’s trade mark. There is nothing in the case file from which Panel may conclude otherwise.
Complainant has therefore failed to meet its burden of proof under paragraph 4(a)(iii) of the Policy.
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 <hovermat.com> domain name REMAIN WITH Respondent.
Francine Tan, Panelist
Dated: November 4, 2013
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