WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Häfele America Co. v. Hafele, LLC

Case No. D2000-1839

 

1. The Parties

The Complainant is Häfele America Co., a North Carolina company whose principal place of business is at 3901 Cheyenne Drive, Archdale, North Carolina 27263, USA. The Complainant is represented by Gary L. Beaver and A. Scott Jackson of Adams, Kleemeier, Hagan, Hannah & Fouts, PLLC, with a mailing address of Post Office Box 3463, Greensboro, North Carolina 27402, USA.

The Respondent is Hafele, LLC, whose mailing address is 21 Heritage Drive, Howell, New Jersey 07731, USA. The Respondent is represented by Arthur M. Peslak of Mandel & Peslak, LLC of 80 Scenic Drive, Suite 5, Freehold, New Jersey 07728, USA. The Respondentís e-mail addresses are "paulizzo@NETLABS.NET," "vjb@NETLABS.NET," and "postmaster@HAFELE.COM."

 

2. The Domain Name and Registrar

The domain name at issue is "hafele.com." The Registrar of the domain name is Network Solutions, Inc., of 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.

 

3. Procedural History

The complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") on December 29, 2000, and assigned the case number D2000-1839.

On January 9, 2001, the Center notified Complainant of a deficiency in its complaint because the complaint was not submitted in electronic format as required by the Rules (paragraph 3(b)(iii)). The deficiency in the complaint was corrected by the Complainant by notice dated January 10, 2001.

On January 10, 2001, the Center notified Complainant of an additional deficiency in its complaint in that the Respondent listed in the complaint was not the person or entity then-currently listed as the registrant of the domain name. The WHOIS information provided with the complaint, dated November 28, 2000, listed Paul Izzo & Company as the registrant. On November 29, 2000, the registration changed listing Hafele LLC as the new domain name registrant. The Center asked the Complainant to amend the complaint so as to reflect the name of the new registrant. The deficiency in the complaint was corrected by the Complainant by notice dated January 15, 2001.

On January 15, 2001, the Center notified Complainant of an additional deficiency in its amended complaint in that the caption still listed Paul Izzo & Company as the registrant, instead of Hafele LLC. The Center asked the Complainant to submit a corrected page. The deficiency in the complaint was corrected by the Complainant on January 16, 2001.

WIPO thereafter verified that the amended complaint satisfied the formal requirements of the Rules and Supplemental Rules, in accordance with paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution ("Rules"), and paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"). The Administrative Panelist ("Panel") is satisfied that the complaint satisfied the Rules and Supplemental Rules.

Notification of the complaint and commencement of the administrative proceedings were given to the Respondent by notice dated January 17, 2001. The notification of the complaint and commencement of administrative proceeding were sent by email to the Respondent at the three email addresses noted above. The hard copy of the document was also transmitted by courier and acknowledged by Respondent. The Panel is satisfied that the complaint satisfied the Rules and the Supplemental Rules with regard to notification.

On February 8, 2001, Respondent, through its attorney, contacted the Center to challenge the Complainantís standing to pursue this action because the Complainant stated in its complaint that the Complainant is authorized to use, but is not the owner of, the trademark at issue. Respondent stated that "the only proper party for this action is the company that actually owns the trademark Hafele." On the same day, the Center notified the Complainant of the Respondentís challenge.

On February 8, 2001, Complainant responded that Paragraph 2 of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") and Section 3(b)(ix) imply that the Complainant need only have rights in the trademark at issue.

On February 9, 2001, the Center notified the Respondent and the Complainant that the "issue of who has the right to file a proceeding based on a trademark or rights in a trademark will be submitted to the Panel, once appointed, for determination." On the same day, Respondent thereafter requested that "the issue of standing be decided prior to having to respond on the merits," and the Complainant responded reiterating its prior position. The Center advised both parties that both procedural and substantive matters would be determined by the Panel in accordance with the Rules.

On February 19, 2001, Respondent filed its response to the complaint.

On February 21, 2001, Complainant requested of the Panel an opportunity to submit a reply "to certain statements made in [Respondentís] Response unless the Panel believes it has sufficient information to rule in favor of Hafele America Co." Respondent thereafter objected to Complainantís request, but requested the opportunity to file a sur-reply in the event the Panel allowed Complainant to file a reply.

On March 9, 2001, this case was submitted to the Panel, consisting of a single Panelist, and establishing March 23, 2001 as the deadline for the Panelís decision.

 

4. Factual Background

The facts in this case that do not appear to be in dispute are as follows:

A. Complainant

The Complainant is "Häfele America Co." ("Häfele America"). Häfele America distributes products and services related to building, furniture, household and kitchen supplies and equipment. Häfele America has used the trademark or service mark Hafele in varying forms since at least 1992. (See Paragraphs 1 and 2 of Affidavit of Gary A. Crysel, establishing that Häfele America has been using the trademarks Hafele and Häfele America for the eight years he has been employed by Häfele America.)

The owner of the United States trademark registration for the trademark "Hafele" is not the Complainant, but is Häfele KG Partnership of Germany. Häfele KG Partnership has been in business since 1923. The Complainant provided evidence of Häfele KG Partnershipís United States trademark, which was registered on September 28, 1982, with registration number 1210236.

The Respondent is not a licensee of Complainant, nor is Respondent otherwise authorized by Complainant to use the Complainantís mark.

B. Respondent

Respondent acquired the domain name "hafele.com" on or about November 29, 2000. Prior to that date, the domain name was registered to Paul Izzo & Co.

 

5. Partiesí Contentions

A. In addition to the procedural contentions set forth in Section 3 above, the Complainant contends:

Respondent, Paul Izzo & Company registered the domain name "hafele.com" on January 8, 1997. On November 29, 2000, the registrantís name was changed from Paul Izzo & Company to Hafele, LLC, though the administrative contact remains Paul Izzo of Paul Izzo & Company.

(i) The domain name registered by the Respondent is identical to the trademark in which the Complainant has rights. The domain name "hafele.com" is spelled the same as the registered trademark "Hafele," as provided in Annex E of the complaint.

(ii) There is no evidence that the Respondent has any rights or legitimate interest in the domain name. The Respondent has not received any consent, license or authorization for the use or registration of the subject domain name from Complainant. Hafele is a German family name of the family that founded the Hafele companies, as provided in Annex A at paragraph 2 of the complaint. The word "hafele" does not appear in English dictionaries and has no meaning in the English language.

(iii) The Respondent has registered and used the domain name "hafele.com" in bad faith. A WHOIS search in August 2000 revealed that Paul Izzo & Company had registered at least five other domain names that appear to be infringing on registered trademarks or borrowing from the names of companies involved in manufacturing or distributing cabinets, hardware, furniture, etc., as provided by Annex F of the complaint. One of the businesses, Arturo Salice S.p.A., brought a successful complaint through the Center under the Policy, Case No. D2000-0537, against Paul Izzo & Company (the "Salice Decision"). The Salice Decision found that the Paul Izzo & Company had registered and was using the domain name "salice.com" in bad faith and the Administrative Panel ordered the domain name transferred to Arturo Salice S.p.A., as provided in Annex H of the complaint.

Paul Izzo & Company had not made any use of the domain name "hafele.com" until after Häfele America contacted Paul Izzo & Company in July 2000. At that time, Häfele America asked Paul Izzo & Company to transfer the domain name to Häfele America due to Häfele Americaís trademark rights. In October 2000, Paul Izzo demanded that Häfele America pay Paul Izzo & Company ten thousand dollars ($10,000.00) to use the domain name, as provided by Annex A at paragraph 3 of the complaint. To avoid the cost of litigation, Häfele America offered to pay one thousand dollars ($1,000.00) to transfer "hafele.com" to Häfele America. Paul Izzo & Company did not respond to the offer and the offer expired. Complainant contends that Respondent registered the domain name in bad faith primarily to sell the domain name to Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.

Complainant contends that Respondent tried to take advantage of Complainantís customer goodwill through the unlawful use of Hafeleís name. This would be accomplished by the development of a website which may take advantage of the goodwill created by Häfele America, as well as the other five trademarks and/or companies involved in businesses similar to Häfele America for which Paul Izzo & Company has registered domain names. Complainant states there is no evidence of Paul Izzo using the Hafele domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services as provided by Annex A, paragraph 4 and Annex I of the complaint.

B. In addition to the procedural contentions set forth above in Section 3 above, the Respondent contends:

"As an initial matter, it should be noted that the complaint was initially filed against Paul Izzo & Co. Complainant revised the name of respondent to the present owner of the disputed domain name but failed to revise anything else in the complaint. The present complaint contains numerous allegations directed to Paul Izzo & Co. and not the Respondent. Respondent is a separate legal entity that acquired the disputed domain name. Therefore, any allegations relating to the actions of Paul Izzo & Co. are irrelevant in this matter and should be stricken and not considered by the Panel."

With respect to 4(a)(i), the Respondent claims that the name "Hafele" reflects Respondentís company name, Hafele, LLC. Respondent contends that at the time it created the name "Hafele" for its business, it was unaware of any company providing similar services under that name or a name confusingly similar thereto. Respondent submits that Respondent and Complainant are not competitors and do not provide similar goods or services. Respondent claims that Complainant has not set forth any evidence of actual confusion by any member of the public with respect to Respondentís use of the subject domain name. Respondent states that there can be no actual confusion since it would be obvious to anyone viewing the website that Respondent has no connection to Complainantís cabinet hardware business. Respondent states that the Complainant has offered no evidence at all that it has in the past or intends in the future to provide services similar to those offered by Respondent. Respondent claims there will never be a likelihood of confusion between Respondent and Complainantís rights to the registered trademark.

With respect to 4(a)(ii), of the Rules, Respondent claims that it has lawfully acquired the domain name in good faith and its rights in the domain name rest in the fact that it is the legal registrant and owner. Respondent claims that it thought "hafele" would be a good name for a business. Respondent states that it was unaware of any company providing similar services under that name or a name confusingly similar thereto. Respondent claims that Complainant is attempting to use its financial leverage as a larger company to force Respondent to give away the subject domain name.

With respect to 4(a)(iii), of the Rules, Respondent submits that it has never used the domain name "hafele.com" in bad faith, has not done anything to tarnish Complainantís trademark, and has not caused Complainant harm. Respondent states that the domain name at issue was obtained in January 1997 in good faith for a new business venture and long prior to any notification of this dispute. Respondent submits that Respondent has never initiated contact with Complainant or a competitor in order to sell the domain name. Respondent submits that Complainant approached Respondent three times inquiring if Respondent would be interested in selling the domain name. Respondent claims it adamantly refused to sell or transfer the domain name in response to Complainantís offer to purchase. In addition to the solicitations by the Complainant, Respondent received one other offer to sell the subject domain name but refused this offer also as provided in Annex B of Respondentís answer to the complaint.

The Respondent claims the Complainant waited over three years prior to taking any action to assert whatever rights it claims to possess in the "HAFELE" trademark. Respondent states the only evidence provided of this alleged right to "use" the "HAFELE" mark is a hearsay affidavit submitted by the Complainant. Respondent contends there is no evidence from the owner of the mark to corroborate Complainantís allegation that it has a right to use the mark. Respondent states there are no documents evidencing any agreement between the trademark owner and the Complainant. Respondent submits that Complainant has no standing to maintain this action and the Panel should dismiss the complaint.

The Respondent submits that a large number of other domain names containing "HAFELE" registered by Complainant shows that this complaint is an improper attempt to restrain trade and monopolize the use of the word "HAFELE" in a manner not permitted by traditional concepts of Trademark Law. Respondent points out that there can be no actual confusion in the domain names since it would be obvious to anyone viewing the website that Respondent has no connection to Complainantís cabinet hardware business. Respondent contends that it has not used this domain name to attract users to the website for commercial gain by creating a likelihood of confusion with Complainantís mark.

Respondent states that prior to the complaint at issue being filed, Complainant was informed that Respondent was providing services entirely different from the goods sold by Complainant as noted in Annex C of Respondentís answer to the complaint. Respondent suggest that if Complainantís relief is granted, it would effectively require any new company to select a trademark and corresponding domain name that had never been previously used regardless of whether the businesses are in competition.

Respondent contends that Complainant presents a list of domain names allegedly registered by Paul Izzo & Company. Respondent states as an initial matter, it should be noted that those other domain names have no relevance with respect to the present Respondent. Respondent states that Complainant has no ownership or other interest in any of those domain names and regardless of whatever happened with any of those names is entirely irrelevant to the issues involved in the current dispute.

Therefore, Respondent respectfully request that the panel dismiss the complaint with prejudice and that the relief requested by Complainant be denied.

 

6. Discussion and Findings

Respondent states that Complainant is not the owner of the trademark at issue and merely has permission to "use" the trademark, and therefore the Complainant lacks standing in this complaint. The Rules define the Complainant as "the party initiating a complaint concerning a domain-name registration." The Rules do not otherwise require the Complainant to prove it is the owner of the trademark or service mark alleged to be identical to or confusingly similar to the domain name in question. In particular, paragraph 3(b) of the Rules and paragraph 4(a) of the Policy only refer to the trademark or service mark in which the Complainant has rights. Although Paragraph 4(b)(i) of the Policy refers to the "Complainant who is the owner of the trademark" and paragraph 4(b)(ii) of the Policy refers to the "owner of the trademark," both paragraphs are exemplary of evidence of bad faith, but not requirements of standing. In particular, with respect to paragraph 4(b)(i), there would be no point in identifying the "Complainant who is the owner" if the Complainant must always be the owner. The Panel therefore finds that a Complainant need not be the owner of the trademark registration as long as the Complainant has rights under the same trademark. Since the Panel finds that Complainant does have rights under the trademark, as set forth below, the Panel finds that Complainant had standing to bring the complaint.

In order to prevail on its complaint, Complainant must prove the three elements set forth in paragraph 4(a) of the Policy. With respect to these three elements, the Panel finds as follows:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Domain Name is spelled identically to the registered trademark HAFELE. The domain name "hafele.com" contains the entire registered trademark HAFELE as well as portions of other trademarks (such as "hafeleamerica" and "hafeleonline" that were not mentioned by Complainant, but were brought to the attention of the Panel by Respondent). With respect to the registered mark, the additional element ".com" is irrelevant in trademark terms, since it is wholly descriptive and non-distinctive, and merely identifies "hafele.com" as a top-level generic domain name.

The Complainant has been using the registered trademark primarily in the areas of cabinetry, hardware, building supplies and tools for at least eight years. Respondent claims that it thought "hafele" would be a good name for a business and that it was unaware of any company providing similar services under that name or a name confusingly similar thereto at the time it, or its predecessors (Paul Izzo and/or Paul Izzo & Company), registered the domain name "hafele.com" along with a number of other domain names that are all related to the cabinetry, hardware, building supply and tool industry. As a result, the Panel finds it impossible to believe Respondentís claim that Respondent did not know that the name "hafele" was not a trademark used in that same industry. As for Respondentís claim that the acts or knowledge of its predecessors have no relevance to this matter, the Panel disagrees. A registrant cannot cleanse a domain name of its potentially unclean aspects by simply transferring it to another legal entity.

Respondent claims its use of "hafele," as a domain name does not create any confusion with Complainantís trademark because it is in a different line of business than Complainant. Based on the evidence, however, Respondent appears to have recently started using the domain name in any fashion, let alone one that is different from Complainantís use, and began such use after being contacted by Complainant. For purposes of this complaint, and in particular, in relation to Paragraph 4(a)(i) of the Rules, the Panel is only required to determine if the domain name is identical "or" confusingly similar to a trademark in which the Complainant has rights. It is clear to the Panel that the relevant portion of the domain name "hafele.com" is identical to the trademark HAFELE. Whether Complainant has a "legal" right to use the trademark, or has been "authorized" by the owner of the registered trademark to use the trademark is not for the Panel to decide. The Panel agrees that the Affidavit of Gary A. Crysel is inadmissible with respect to the rights granted to Hafele America by Häfele KG Partnership. No other evidence of this grant of rights was submitted. Nevertheless, that same Affidavit is admissible with respect to Mr. Cryselís knowledge of Complainantís own use of the "hafele" trademark since 1992. Respondentís evidence only goes to the issue of whether Complainant was authorized to use the trademark or otherwise legally using the trademark, but not whether Complainant had any rights at all in the trademark. The Policy only states that the Complainant must have rights in the trademark, which Complainant has shown by virtue of its use over the last eight years. The Complainant therefore succeeds in proving the first element.

(ii) The Respondent has no rights of legitimate interest in respect of the domain name.

Respondentís predecessors, Paul Izzo and/or Paul Izzo & Company, registered the domain name "hafele.com" on January 8, 1997. On November 29, 2000, the registrantís name was changed to Hafele LLC, although the administrative contact and address remains that of Paul Izzo of Paul Izzo & Company. The Panel acknowledges that some association between Paul Izzo and Hafele LLC remains.

The word "hafele" does not appear in English dictionaries. The Respondent has not established that the word "hafele" is a word known in the English language or a common word used in trade or corporate names. The Respondent has not produced any credible evidence as to why the Respondent registered the domain name "hafele.com," or changed its company name to Hafele LLC one month before the complaint was filed.

The Respondent is not licensed or otherwise permitted to use the "hafele" trademark or to apply for any domain name incorporating the mark. The Respondent has not proven that it has rights or a legitimate interest in the domain name. Although Respondent claims that it is using the domain name for a legitimate business, the Respondent has not shown any credible evidence regarding this business, which appears to have been concocted to improve its position in this matter. The Panel takes note of the Salice Decision, in which the domain name "Salice.com," relating to another building supply company, had been registered by Paul Izzo & Company. The circumstances associated with the Salice Decision, and the other domain names registered by Paul Izzo & Co, seriously undermine the believability of Paul Izzoís affidavit.

The Panelist, therefore, concludes that the Respondent has no rights or legitimate interest in the domain name. The Complainant therefore succeeds in proving the second element.

(iii) The domain name was registered and is being used in bad faith.

The Complainant has established that the word "hafele" is not a word in the English language. While Paul Izzo asserts that he made up the name Hafele for a new business and was unaware of any company providing similar services under that name, the Panel finds this contention unsupported by the evidence.

This evidence includes activities by Respondent and/or its predecessor that it has engaged in a pattern of cybersquatting conduct or has registered a series of domain names containing well-known trademarks for possible gain. The Complainantís evidence shows that the Respondent has a history of acquiring multiple domain name registrations that incorporate trademarks owned by others. A list of the domain names generated by a search of WHOIS directory on August 2000, revealed that Paul Izzo & Company, who was the same person as Respondent up until November 29, 2000 when the registrant was changed, owned at least ten domain name registrations, including the registration at issue. Many of the registrations incorporate well-known trademarks that are the subject of federal registrations or applications and are in the same field as Complainant, the cabinet hardware business. As noted above, the Panel in the Salice Decision found that the domain name "salice.com" was registered and was being used in bad faith by Paul Izzo & Company. The facts of this case are very similar to the facts at issue in the Salice Decision, as the name "salice" is not a word found in the English language and Paul Izzo claims to have made up the name to use for his new business venture. Both the Complainant and Salice are in the cabinet hardware business.

The Respondent appears to have registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, who is an authorized user of the trademark or to a competitor of that Complainant for valuable consideration in excess of the Respondentís out-of-pocket costs directly related to the domain names. Although Complainant sought out Respondent to purchase the domain name, this fact is not relevant to the issue at hand. The fact that Complainant asserts that Respondent made a counter offer is relevant. The Panel is more inclined to believe Complainantís assertion that Respondent acted in bad faith by attempting to sell the domain name for $10,0000, given the otherwise completely unbelievable nature of Respondentís claims and Paul Izzoís affidavit.

The Panel therefore concludes that the Complainant has succeeded in proving that the domain name has been registered and is being used in bad faith.

It follows that the Complainant has proved its three submissions in accordance with paragraph 4(a) of the Rules, and that accordingly, the Complainant has succeeded in its complaint.

 

7. Decision

In light of the foregoing, the Administrative Panel decides that the domain name registered by Respondent is confusingly similar to the trademark used by Complainant, that the Respondent has no rights or legitimate interests in respect of the domain name, and that Respondentís domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Uniform Domain Name Dispute Resolution Policy, the Administrative Panel requires that registration of the domain name "hafele.com" be transferred to Complainant.

 


 

Timothy D. Casey
Sole Panelist

Dated: March 23, 2001