Hexagon Technology Center GmbH v. Nadeem Balolia
Claim Number: FA2105001945730
Complainant is Hexagon Technology Center GmbH (“Complainant”), represented by Robert Anderson of Balch & Bingham LLP, Alabama, USA. Respondent is Nadeem Balolia (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hexagonfurnitures.com>, registered with GoDaddy.com, LLC.
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.
James Bridgeman SC s Panelist.
Complainant submitted a Complaint to the Forum electronically on May 20, 2021; the Forum received payment on May 20, 2021.
On May 20, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hexagonfurnitures.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 May 21, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 2021 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@hexagonfurnitures.com. Also on May 21, 2021, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 16, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant submits that the disputed domain name <hexagonfurnitures.com> domain name is confusingly similar to, and in fact identical to, the HEXAGON mark, with minor change of adding the word “furnitures”. Such minor changes are not enough to overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).
Complainant argues that if a web user searches for, or expects to find information about the Complainant, initial interest confusion caused by the similarity of the disputed domain name to Complainant’s Hexagon marks may deceive and lure the web user to the Respondent’s web site.
Further, and even more problematic, the disputed domain name and Respondent’s Facebook page both use an exact replica of Complainant’s logo.
Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not making a legitimate non-commercial or fair use of the <hexagonfurnitures.com> domain name and its use the disputed domain name and Complainant’s “Hexagon” logo appears solely intended to target the longstanding goodwill of Complainant’s marks and services.
Complainant asserts that Respondent was never granted a license to use the HEXAGON mark.
It is further argued that Respondent is not making a legitimate non-commercial or fair use of the <hexagonfurnitures.com> domain name without intent for commercial gain or to divert consumers from Complainant but instead intends to mislead consumers about Complainant’s products by directly copying and using an exact replica of the “Hexagon” logo. See Gallup Inc. v. Amish Country Store, FA 96209 (Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
Furthermore, Complainant submits that Respondent cannot claim any legitimate, non-infringing, or fair use of Complainant’s HEXAGON mark.
Complainant further argues that Respondent’s unlawful use of Complainant’s HEXAGON mark will not enjoy any protection under the First Amendment to the United States Constitution. See OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176, 197 (W.D.N.Y. 2000) (“[Respondent] chose to use [Complainant’s] mark as their domain name in order to deceive Internet users into believing that they were accessing [Complainant’s] web site. Such a use of [Complainant’s] mark is not protected by the First Amendment.”). Finding that the disputed domain name infringed on the plaintiff’s registered trademark for “The Buffalo News,” the court in OBH v. Spotlight Magazine explained that “[u]se of another’s trademark is entitled to First Amendment protection only when the use of that mark is part of a communicative message, not when it is used merely to identify the source of a product.” 86 F. Supp. 2d at 197–98. Like the infringing defendant in OBH, here “[Respondent’s] use of [Complainant’s] mark as the domain name for their web site is source identification rather than a communicative message because the name identifies the web site as being the product, or forum, of the [Complainant].” Id. Therefore, Respondent’s infringement is not protected by the First Amendment.
Complainant then alleges that the disputed domain name was registered in bad faith because Complainant has used the name HEXAGON continually since at least 1983; whereas the <hexagonfurnitures.com> domain name was registered at the end of 2018.
Complainant has undertaken great effort and expense over the past almost forty years to protect the HEXAGON mark through federal registration and to build goodwill in the mark on the internet and offline. Complainant is unaware of exactly when Respondent began using the disputed domain name, however the internet archive has no prior captures of the use. In sum, the “Hexagon” brand and the HEXAGON mark are associated by the public as representative of Complainant’s products and services.
Complainant argues that Respondent's identical use of the HEXAGON mark in the disputed domain name seemingly has been such as to attract traffic to the website at the disputed domain name by causing confusion among users familiar with the Complainant's HEXAGON mark.
It is further asserted that Respondent does offer the Complainant's services at its website and is not licensed to use the HEXAGON mark.
Complainant alleges that Respondent is using a “bait and switch” technique in a clear example of bad faith which has been universally barred by panels established under the Policy, citing Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (WIPO Feb. 26, 2001), Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001), and Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
Aside from the bait and switch technique being used by Respondent, consumers are likely to believe that the disputed domain name is hosted by Complainant and the combination of the disputed domain name and the identical use of the “Hexagon” logo strongly implies that Complainant is the source of the disputed domain name.
Complainant adds that consumers are likely to follow the disputed domain name in belief that Respondent’s website is hosted by Complainant and alleges that Respondent is using the goodwill and recognition of Complainant’s HEXAGON mark in bad faith to help sell its own products.
Accordingly, the use by Respondent of the disputed domain name is in bad faith. Using the Hexagon name and directly copying the “Hexagon” logo is all further evidence of Respondent’s bad faith registration and use of the <hexagonfurnitures.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides sensor and software and autonomous solutions for which it uses the HEXAGON mark and is the owner of a portfolio of trademark registrations including the following:
· United States trademark and service mark registration HEXAGON Design, registration number 79975287, filed on November 21, 2011, and registered on November 5, 2013 for goods and services in international classes 7, 10, 378 38 42 and 45;
· United States Trademark Registration HEXAGON Design, registration number 79109249, filed on November 21, 2011 and registered on July 29, 2014 for goods and services in international class 9,
· United States Trademark Registration HEXAGON, registration number 73507876, filed on November 8, 1984 and registered on March 4, 1986 for goods in international class 9.
The disputed domain name <hexagonfurnitures.com> was registered on November 11, 2018 and resolves to a website that purports to offer furniture for sale.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and information provided by the Registrar in response to the enquiry from the Forum seeking confirmation details of the registration of the disputed domain name for the purposes of this Complaint.
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has adduced clear and convincing evidence it has rights in the HEXAGON mark established by its ownership of the trademark and service mark registrations described above.
The disputed domain name consists of Complainant’s HEXAGON mark in its entirety in combination with the descriptive word “furnitures”.
While the word “furnitures” is not distinctive it does qualify the distinctive HEXAGON element in the mark and it is arguable that this qualification takes away from the confusingly similar character of the disputed domain name.
However, Complainant’s submissions that the disputed domain name is confusingly similar to the HEXAGON mark are uncontested.
Additionally, it is generally accepted that the bar which a Complainant must cross to succeed in the first element of the test in Policy ¶ 4(a)(i) is set low.
This Panel finds therefore that, for the purposes of the Policy. and in line with the standards which are commonly applied by Panels established under the Policy, the disputed domain name is confusingly similar to Complainant’s mark.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i)
Because the second element of the test in Policy ¶ 4(a)(ii) requires a complainant to prove a negative viz that the respondent has no rights or legitimate interests in the disputed domain name, panels have consistently held that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts the respondent to prove such rights or interests.
In the present case, Complainant has shown that Respondent is using the “hexagon” logo which is an element of Complainant’s HEXAGON and design registered trademarks.
Complainant has alleged that the use of the disputed domain name is intended to take advantage of Complainant’s goodwill; that Respondent has never been granted a license by Complainant to use its HEXAGON mark; and that Respondent is using an exact replica of its “Hexagon” logo to mislead consumers.
As Respondent has failed to discharge the burden of production in this proceeding, following well established principles, this Panel must therefore find that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii)
This Panel is not satisfied however that the disputed domain name was registered in bad faith. Complainant has not provided any evidence of its reputation or use of the mark. Neither has Complaint shown or alleged that it has any trademark registration in India where Respondent is based.
Complainant’s United States trademark registrations could not be said to afford Complainant strong rights in the word HEXAGON as a trademark across the world, particularly where the use to which objection is taken is the purported sale of furniture and Complainant asserts that it is a provider of software services.
There is no evidence that could allow this Panel to infer that the registrant of the disputed domain name, being based in India, had any actual or constructive notice of Complainant, its name, mark or rights when the disputed domain name was registered or that the disputed domain name was registered to target Complainant’s goodwill as alleged.
Complainant’s case against Respondent rests on Respondent’s alleged use of Complainant’s logo. Even if this were accepted. and on the face of it, the evidence shows that this allegation is well founded, there is nothing else on the website to which the disputed domain name resolves that infers any connection with Complainant. Respondent purports to offer furniture for sale. There is an address in India published on the website. There is also evidence that Respondent has a Facebook page purporting to offer furniture for sale.
The cease and desist letter refers to Complainant’s ownership of the image and the word mark “HEXAGON” with roughly 108 separate trademark registrations within 37 different countries. These registrations are not identified in the cease and desist letter or in the Complaint.
The Complaint or its annexes provides no evidence of any use of the trademark by Complainant.
This Panel finds therefore that Complainant has not met the burden of production to show that the disputed domain name was registered in bad faith.
Complainant has therefore failed to satisfy the first part of the third element of the test in Policy ¶ 4(a)(iii) and cannot succeed in this application.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <hexagonfurnitures.com> domain name REMAIN WITH Respondent.
James Bridgeman SC
Panelist
Dated: June 17, 2021
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