WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hamilton Sundstrand Corporation v. Internet Realty Group
Case No. D2000-1302
1. The Parties
Complainant: Hamilton Sundstrand Corporation, a corporation of the state of Delaware USA, having its principal place of business at One Hamilton Road, Mail Stop 1-1-BC18, Windsor Locks, CT 06096-1010, USA.
Represented by: Richard H. Kosakowski and Gregory A. Stephenson, Hamilton Sundstrand Corporation, One Hamilton Road, Mail Stop 1-1-BC18, Windsor Locks, CT 06096-1010, USA.
Respondent: Internet Realty Group, 2504 W. Gunnison, Chicago, IL 60625, USA.
2. The Domain Names and Registrar
Domain Names: "hamilton-sundstrand.com"
Registrar: Register.Com, Inc., 575 8th Avenue, New York, NY 10018, USA;
Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 20170, USA.
3. Procedural History
The original Complaint was received by WIPO in hard copy on October 2, 2000, and by e-mail on October 3, 2000. An amendment to the Complaint was received by WIPO in hard copy on October 9, 2000, and by e-mail on October 10, 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly noticed to Respondent in accordance with the Rules, paragraph 2(a). The Respondent was informed that the last day for filing its Response was October 30, 2000. No Response was received. WIPO issued to the Respondent a Notification of Respondent Default on November 20, 2000, informing the Respondent of the consequences of its default.
The Panel was properly constituted. The undersigned Sole Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence. No further submissions were received by WIPO or the Panel. Consequently, the date scheduled for the issuance of the Panelís Decision, pursuant to the request of the Sole Panelist, is January 18, 2001.
4. Factual Background
Complainant Hamilton Sundstrand Corporation was formed in 1999, by the merger of the Hamilton Standard division of United Technologies Corporation ("Hamilton Standard") and Sundstrand Corporation. Hamilton Standard and Sundstrand Corporation each has a history (since the early 1900s) as a supplier to the aerospace industry. The company name, "Hamilton Sundstrand", resulting from the merger reflects the history that each company has in the industry, and continues the name recognition that the industry has in each company.
Complainant holds a number of incontestable trademark registrations in various countries for the mark HAMILTON STANDARD. Examples include U.S. Trademark Reg. Nos. 985,300; 1,237,058; and 1,435,386. Complainant also holds a number of incontestable trademark registrations in various countries for the mark SUNDSTRAND. Examples include U.S. Trademark Reg. Nos. 1,287,265; 1,440,531; and 1,441,896. As detailed in the registration certificates, the trademarks are used on goods and services relating to aerospace products. Further, as evidenced by said certificates, Complainant has used the HAMILTON STANDARD and SUNDSTRAND marks for a long time.
Complainantís ownership of these marks is evinced by (a) the Secretarial Certificate, submitted to the United States Patent and Trademark Office ("U.S.P.T.O.") for recording, which details the assignment of the HAMILTON STANDARD marks from United Technologies Corporation to Hamilton Sundstrand Corporation, and (b) for the SUNDSTRAND marks, the U.S.P.T.O. Notice of Recordation of the merger of Sundstrand Corporation into HSSail, Inc. and subsequent name change to Hamilton Sundstrand Corporation.
By virtue of Complainantís and its predecessorsí long and substantially exclusive use of the HAMILTON STANDARD and SUNDSTRAND marks in United States commerce and abroad, the marks are adjudged to be well-known to the general public. Complainant and its predecessors have expended substantial time, effort, and money in ensuring that the purchasing public associates the HAMILTON STANDARD and SUNDSTRAND marks with Complainantís Business and Products and Services, and with no other business or the products of other businesses. As such, Complainant owns the rights in these two well-known marks and the marks are valuable assets of Complainant.
Complainant has additional rights in the mark HAMILTON SUNDSTRAND through the filing of numerous trademark applications for registration of the mark HAMILTON SUNDSTRAND in the U.S. An example is U.S. Trademark Application Serial No. 75/725,937. This application is one of several that were filed June 10, 1999, the date the merger took effect, as intent-to-use applications. The mark is in use.
Complainant also has common law rights in the mark HAMILTON SUNDSTRAND. See British Broadcasting Corporation v. Jaime Renteria, ICANN/WIPO Case No. D2000-0050 (March 23, 2000), (finding it "open to conclude that the Uniform Policy is applicable to unregistered trademarks and service marks.") These rights were in existence prior to the date Respondent registered the two domain names at issue herein.
On February 22, 1999, United Technologies Corporation announced the merger of Hamilton Standard and Sundstrand Corporation and that the new entity would be named Hamilton Sundstrand. News of the potential acquisition of Sundstrand Corporation by United Technologies Corporation was known to the public as early as February 21, 1999, as demonstrated by an Associated Press Online report dated February 21, 1999.
As a result of the publicís recognition of the Hamilton Standard marks and the Sundstrand Corporation marks, and the publicity surrounding the announced merger, prior to Respondentís February 22, 1999, registrations of the subject domain names, Complainant for some time held common law rights in the combination of HAMILTON STANDARD and SUNDSTRAND into the mark HAMILTON SUNDSTRAND. See Time Warner Inc. and EMI Group plc v. CPIC Net, ICANN/WIPO Case No. D2000-0433 (July 27, 2000), citing New West Corp v. NYM Co. of Cal., 595 F.2d 1194, 1200 (9th Cir. 1979), ("use in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark, is competent to establish ownership, even without evidence of actual sales."); Walt Disney Prod. v. Kusin, Inc., 204 U.S.P.Q.284 (C.D. Cal. 1979), (pre-release publicity sufficient to obtain trademark rights). As such, Complainant held rights in the specific mark HAMILTON SUNDSTRAND as of the day Respondent registered to two domain names at issue.
5. The Partiesí Contentions
Respondentís registrations of the hamilton-sundstrand.com and "hamiltonsundstrand.com" domain names violate Complainantís rights in the marks HAMILTON SUNDSTRAND, HAMILTON STANDARD, and SUNDSTRAND.
Respondentís use of these names in connection with the subject domain names is misleading and is likely to cause confusion and mistake, and to deceive the public into believing that Respondent is associated with or authorized by Complainant. The overall impression left by the domain names "hamilton-sundstrand.com" AND "hamiltonsundstrand.com" is that these domain names are confusingly similar to the registered HAMILTON STANDARD and SUNDSTRAND marks, as well as to the unregistered HAMILTON SUNDSTRANDÔ mark. Further, Respondentís registrations of the two domain names falsely demonstrate or suggest a relationship or affiliation between Complainant and Respondent, or sponsorship or approval of the actions of Respondent in registering the two domain names. Thus, consumers have likely assumed or will likely assume that these domain names are affiliated with Complainant, or are a reflection of the merger between Hamilton Standard and Sundstrand Corporation, and have been surprised in seeing that they are registered, not by Complainant, but by Respondent.
The Respondent has submitted no response.
6. Discussion and Findings
Even though Respondent has filed no Response and has offered no evidence attacking the contentions of Complainants, the Sole Panelist hereby reviews the evidence before him to determine whether the Complainant has supported each of the required elements in its contentions within the existing record.
Identity or Confusing Similarity
The Panel finds that the domain names at issue are confusingly similar on their face to the trademarks in which the Complainant has rights and the Complainant therefore succeeds under this heading.
Rights or Legitimate Interests
Respondent has no rights or legitimate interests with respect to the subject domain names on the basis that neither Complainant nor its predecessors, Hamilton Standard or Sundstrand Corporation, have previously agreed or consented to the Respondentís use or registration of a domain name comprising the federally registered HAMILTON STANDARD or SUNDSTRAND marks, or the HAMILTON SUNDSTRAND mark.
During the year-and-a-half since Respondent registered the subject domain names, Respondent apparently has not used the subject domain names in connection with a bona fide offering of goods or services nor does it appear that Respondent is making legitimate commercial, noncommercial or fair use of the domain names. (The Internet web sites for "hamilton-sundstrand.com" and "hamiltonsundstrand.com", are currently not in use). Further, Respondent apparently is not commonly known by these domain names.
As discussed above, on February 22, 1999, United Technologies Corporation announced the merger of Hamilton Standard and Sundstrand Corporation and that the new entity would be named Hamilton Sundstrand. News of the announcement was reported the next day, February 23, 1999, in various publications, including the Wall Street Journal and the New York Times. As previously noted, it appears that news of the potential acquisition of Sundstrand Corporation by United Technologies Corporation was known to the public prior to February 22, 1999.
On the merger announcement date of February 22, 1999, Respondent registered the
domain names "hamilton-sundstrand.com" and "hamiltonsundstrand.com".
These domain names continue to be registered by Respondent.
On or about August 3, 1999, a person identified as "Alex" communicated via e-mail with Erik B. White, a then employee of Hamilton Sundstrand Corporation. According to the e-mail, "Alex" was attempting to facilitate the sale of the subject domain names "hamiltonsundstrand.com" and "hamilton-sundstrand.com" to Complainant. "Alex" previously communicated with Mr. White via American Online, wherein Mr. White was informed by "Alex" that the subject domain names could be purchased for a large sum of money (although unclear from the two e-mails, that sum appeared to be either US $25,000 or US $250,000). Mr. White forwarded Alexís August 3, 2000, e-mail to Ms. Tamara Swanson, an employee of Complainant. Mr. Whiteís contact with "Alex" was solely through electronic means and not via oral communication.
It appears that "Alex" is Alexandra Buzanis, an Illinois attorney who owns the residence or business at 2504 W. Gunnison St, Chicago, Illinois 60625, the same address listed in the Whois domain name registration information for Respondent. As such, it is believed that "Alex" was acting on behalf and for the benefit of Respondent.
On June 12, 2000, Complainant forwarded a cease and desist letter to Respondent requesting, inter alia, transfer of the subject domain names to Complainant. Respondent has refused to respond to this letter or to cooperate with Complainant to resolve this domain name dispute.
Based on the above information, the Panel concludes that Respondent registered the subject domain names in bad faith as defined in Paragraph 4(b)(i) of the Policy. The circumstances make clear that Respondent registered the domain names for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain name.
Furthermore, even if the Panel ignores Complainantís allegations relative to the attempted sale of the subject domain name registrations, the circumstances surrounding the registration of the subject domain names makes it clear that Respondent registered them with an eye towards making a profit. As detailed above, Respondent registered these domain names the very day that news of the merger of Hamilton Standard and Sundstrand Corporation was announced. As concluded by a prior WIPO Panel, "[t]he fact that the Domain Name was registered on the very day that news was first published of the merger talks . . . leads the Panel irresistibly to the conclusion that it was an opportunistic act by an alert entrepreneur with a view to making a profit. Accordingly, the Panel finds that the circumstances set out in paragraph 4(b)(i) of the Policy are present." Pharmacia & Upjohn AB v. Sol Meyer, ICANN/WIPO Case No. D2000-0785 (August 23, 2000).
The Sole Panelist concludes (a) that the Domain Names "hamilton-sundstrand.com" and "hamiltonsundstrand.com" are identical with and confusingly similar to Complainantsí trademarks HAMILTON STANDARD, SUNDSTRAND and HAMILTON SUNDSTRAND, (b) that Respondent has no rights or legitimate interest in the Domain Names, and (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the domain names at issue be transferred to Complainant.
Charles E. Miller
Dated: January 18, 2001