ADMINISTRATIVE PANEL DECISION
HBH Limited Partnership v. Domain Administrator
Case No. D2006 1434
1. The Parties
The Complainant is HBH Limited Partnership, of Cincinnati, Ohio, United States of America and Linda van Rees, c/o The Original Honey Baked Ham Co., of Norcross, Georgia, United States of America represented by Kilpatrick Stockton, LLP, United States of America.
The Respondent is Domain Administrator, of West Bay, Grand Cayman, WBKY.
The disputed domain name is presently registered with Rebel.com Services Corp 9 (herein the “domain name in dispute”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2006. On November 13, 2006, the Center transmitted by email to Parava Networks Inc. a request for registrar verification in connection with the domain name in dispute. On November 15, 2006, Parava Networks Inc. transmitted by email to the Center its verification response stating that the domain name in dispute was now registered with Rebel.com Services Corp. On November 21, 2006, the Center issued a Notification of Deficiency. In response to a notification by the Center that the Complaint was administratively deficient, on November 22, 2006, the Complainant filed an amendment to the Complaint. On November 24, 2006, the Center transmitted by email to Rebel.com Services Corp. a request for registrar verification in connection with the domain name in dispute. On November 24, 2006, Rebel.com Services Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 27, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2006.
The Center appointed J. Nelson Landry as the sole panelist in this matter on January 9, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant, its predecessors and licensees (herein collectively the “Honey Baked Ham companies”), have used HONEY BAKED HAM and HONEY BAKED HAM COMPANY trademarks for over 50 years in connection with food products. Over that period, the said companies have sold hundreds of millions of dollars of products under the said trademarks. Furthermore, according to the evidence, the said companies have expanded substantial sums in advertising, marketing and promoting the products sold in association with the trademarks.
The Complainant is the registered owner of 13 trademarks in the United States of America including the terms HONEY BAKED, HONEY BAKED HAM or HONEY BAKED HAM COMPANY. Furthermore, in respect of its international activities, the Complainant has registered 21 similar trademarks in different countries, the majority of which incorporating the terms HONEY BAKED HAM COMPANY (herein collectively “the HONEYBAKEDHAM Trademarks” or the “Trademarks”).
The Complainant has over the past decade registered 13 domain names, all comprised of similar terms as those abovementioned in the Trademarks such as . The Complainant actively uses these domain names to promote and carry its activities. This Internet use has contributed to significant sales of products in the past four years.
The domain name in dispute was registered with Parava Networks Inc. on June 15, 2006 by the Respondent. On November 9, 2006, the Complaint was sent to the Respondent and on November 15, 2006, the Respondent transferred the domain name in dispute to another registrar, Rebel.com Services Corp.
The Complainant has stated that it has not licensed or authorized the Respondent to use the Complainant’s HONEYBAKEDHAM Trademarks and the Respondent has no affiliation, association or connection with the Complainant.
5. Parties’ Contentions
The Complainant contends that by reason of its use of the Trademarks over a period of 50 years, their promotion, advertising and sale of products under said Trademarks by the HONEYBAKED HAM Companies, it has developed and now enjoys a valuable reputation and goodwill associated with the Complainant’s Trademarks. See HBH, L.P. v. Honeybake/John Doe, WIPO Case No. D2005 1278 in which the panel acknowledges the rights of the complainant in the word “honeybaked”. The Complainant further contends that the domain name in dispute is confusingly similar to its Trademarks because it includes in its entirety the HONEYBAKED HAM COMPANY Trademark and Trade name and is identical to the Complainant’s registered domain name except for the abbreviation of the word “company” to “co”.
Considering the fame of the HONEY BAKED HAM Trademarks, the Complainant alleges that consumers, upon seeing the domain name in dispute, will reasonably believe that the domain name in dispute is related to and endorsed by the Complainant.
Considering the fact that the domain name in dispute was registered almost 50 years after the first and continuous use of the HONEY BAKED HAM Trademarks so widely known and recognized, the Respondent according to the Complainant cannot demonstrate any rights or establish any interests with respect to the domain name in dispute.
The Complainant submits that the above mentioned facts shift upon the Respondent the burden to establish that it has rights or legitimate interests in the domain name in dispute. See PepsiCo. Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003 0174. This point is further supported by the absence of any affiliation, association or connection with the Complainant, any subsidiaries or affiliates, and the fact that the Complainant has not licensed or authorized the Respondent to use its HONEY BAKED HAM Trademarks.
According to the Complainant, the Respondent is not using the domain name in dispute with a bona fide offering of goods and services because it has registered and is using the domain name in dispute to trade off the fame of the Trademarks solely for commercial gain. The Respondent, by the various displays and uses of commercial “cost per click” links is solely using it to divert Internet users to additional search engine and to generate for the Respondent financial benefits from the web traffic thus diverted.
The Complainant submits that the domain name in dispute was registered and being used in bad faith by reason of the confusingly similar character thereof and its recent registration many years after the Trademarks became famous. See PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002 0562. It has been held in earlier WIPO UDRP decisions that using a domain name to divert traffic to a linking portal for profit supports a contention of registration and use in bad faith. See Hilton Group plc v. Forum LLC, WIPO Case No. D2005 0244 and Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004 0911.
According to the Complainant, the Respondent has registered the domain name in dispute so confusingly similar to its Trademarks to capitalize on the valuable goodwill associated with the said Trademarks. See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Plygenix Group Co., WIPO Case No. D2000 0163.
Finally, the Complainant represents that the change of registrar pursuant to the cease and desist letter to which no response was ever received and the Respondent apparent attempt to conceal its identity under domain administrator is further evidence of bad faith registration and use. See Société Nationale de Radiodiffusion Radio France v. France Info, WIPO Case No. D2002 1052 and Nintendo of America Inc. v. Berric Lipson, WIPO Case No. D2000 1121.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights, and
(ii) The respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has clearly established in its well documented evidence that it has rights in a family of several Trademarks which include the distinctive element “honey baked ham” or “honey baked ham company” resulting from continuous and substantial use thereof over the past 50 years not only in the United States of America but also in foreign countries and the 10 or more top level domain names which the Complainant uses to promote, distribute and sell its food products. The Panel finds that the Complainant has rights in the Trademarks and that there is substantial goodwill associated with the Trademarks.
The only difference between the Trademarks and the domain name in dispute is that the latter has incorporated therein the distinctive terms “honey baked ham company” and deleted some non distinctive terms such as “the”, “est.1957” and the like with respect to some of the Trademarks. These changes do not diminish in any way the confusing character of the domain name in dispute with the Trademarks. The addition of the gTLD “.com” is generally disregarded for the purpose of this comparison.
The Panel finds that the domain name in dispute is confusingly similar to the Complainant’s Trademarks and that the first criterion of the Policy has been met.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. These allegations are in the present case corroborated by the evidence produced by the Complainant. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the domain name in dispute by stating that the Respondent has never been known by the name “Honey Baked Ham Company” or the domain name in dispute and is not making any legitimate non commercial or fair use of the domain name in dispute.
Furthermore, the Complainant states that it has never given a license nor in any way authorized the Respondent to make use of the Complainant’s Trademarks. There is no evidence before the Panel that the Respondent has ever engaged is any legitimate business under the Complainant’s Trademarks. While there is no evidence that the Respondent action constitutes an attempt to extort money from the Complainant, it is certainly fair to conclude that the holding of the domain name in dispute denies the Complainant access to the use of the domain name corresponding to its Trademarks.
Considering the evidence which has not been rebutted, the domain name in dispute give every appearance of being used to trade off the goodwill of the Trademarks for commercial gains in that Internet users visiting the address of the domain name in dispute is connected to search engine and linking portal thereby receiving a variety of advertising. The Panel finds that these engines and portals in all likelihood generate financial benefits to the Respondent from the volume of traffic thus diverted and that these activities do not constitute any legitimate non commercial fair use nor any bona fide offering of goods and services as it had been held in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and , WIPO Case No. D2000 0847.
The Panel finds that the second criterion of the Policy has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the 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 the 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 website 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 website or location or of a product or service on your website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant contends that the domain name was registered and used in bad faith.
It is clear to this Panel that the Respondent upon registering the domain name in dispute was in all likelihood well aware of the existence of the several Trademarks of the Complainant and of the goodwill associated thereto. As held by the Panel in PepsiCo. Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002 0562, this alone constitutes bad faith. Furthermore, as contemplated in paragraph 4(b)(iv) of the Policy, the registration of a domain name confusingly similar for the Respondent established activities so as to attract, for commercial gain, Internet users to its website by creating and exploiting a likelihood of confusion with the Complainant’s Trademarks as to the source, sponsorship, affiliation or endorsement of the website of the Respondent constitutes bad faith use of the domain name in dispute.
Finally, the Respondent’s apparent attempt to conceal its identity with the two registrars with whom the domain name in dispute was registered over the past years and the transfer of the domain name in dispute to another registrar after the Complaint was submitted, contrary to paragraph 8(b) of the Policy corroborates such bad faith character of the activities of the Respondent.
The Panel finds that the Respondent has registered the domain name in bad faith and used same in bad faith.
The Panel finds that third criterion of the Policy has been met.
The Panel concludes that:
(a) the domain name is confusingly similar to the Complainant’s HONEY BAKED HAM COMPANY Trademarks;
(b) the Respondent has no rights or legitimate interest in the domain name in dispute;
(c) the domain name in dispute has been registered and is being used in bad faith.
Therefore, in accordance with paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
J. Nelson Landry
Dated: January 23, 2007