WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Haworth, Inc. v Larry Sharaga
Case No. D2001-1382
1. The Parties
The Complainant is Haworth, Inc., a corporation incorporated in Michigan, United States of America and having an address at One Haworth Center, Holland, MI 49423, United States of America.
The Respondent is named as Larry Sharaga of P.O. Box. 1242, Nana Post Office, Bangkok, 10112, Thailand.
2. The Domain Name and Registrar
The contested domain name is <haworthasia.com>.
The registrar is iHoldings.com, Inc. (d.b.a. DotRegister) of 13205 SW 137th Avenue, Suite #133, Miami, FL, 33186, United States of America.
3. Procedural History
The electronic version of the Complaint was filed on November 21, 2001. The hardcopy of the Complaint was received on November 26, 2001.
On November 23, 2001, the Center transmitted via email to Verisign. Inc., a request for registrar verification in connection with this case.
On December 10, 2001, the Center transmitted via email to the Complainant a Complaint Deficiency Notification notifying the Complainant that the Complaint did not correctly identify the registrar with which the disputed domain name is registered.
An amended version of the Complaint was filed on December 13, 2001, and the hardcopy was received on December 19, 2001.
In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN Rules") and Paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("ICANN Policy"), ICANN Rules and Supplemental Rules.
On December 20, 2001, the Center formally notified the Respondent of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.
The last day for submitting a Response was January 19, 2002 (the deadline was extended to this date by agreement between the Complainant and Respondent). The Respondent failed to submit a Response by that date and on January 22, 2002, the Center formally notified the Respondent of its failure to submit a Response by that deadline.
On January 25, 2002, the Complainant filed supplemental submissions.
On February 7, 2002, the parties were notified that Mr. Swinson had been appointed as the sole panelist and that a decision was to be handed down by February 21, 2002 (save exceptional circumstances).
The language of the proceeding is English.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the ICANN Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complainantís compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the ICANN Rules; the Respondent was properly notified of its failure to submit a Response within the time period allowed in the Notification of Complaint and Commencement of Administrative Proceeding in accordance with paragraph 2(b) of the ICANN Rules and the Administrative Panel was properly constituted.
4. Factual Background
The Complainant is the worldís second largest designer, manufacturer and marketer of office furniture. Founded in 1948, it carries on business in over 120 countries, including Thailand where the Respondent lives. Its office products are distributed and marketed under the "Haworth" mark, which now has substantial goodwill value.
The Complainant is the registered proprietor of the "Haworth" mark in Thailand in class 20. It is also the registered proprietor of the following marks in the United States:
- Haworth ten (application pending - class 20);
- Haworth device (class 20);
- Haworth (class 20);
- Haworth (class 20).
The following is based on information in the Complaint, and is not contradicted by the Respondent:
The Respondent was employed as a project manager and consultant in the Complainantís Bangkok office until he was dismissed on November 10, 2000. His dismissal followed requests made by him for a change to the terms of his employment, including a special bonus and increase in fees.
The disputed domain name was registered by the Respondent on January 9, 2000, prior to termination of his employment with the Complainant. The Complainant discovered that the domain name was not available when it sought to register that name in July 2001.
The Complainant sent a cease and desist letter to the Respondent, following which the Complainantís website was amended to include a disclaimer of connection or authorization from the Complainant for the site.
The Complainantís lawyers engaged an investigation firm on about July 23, 2001. Those investigations revealed the following:
1. The Respondent appears to have been feeling ill-disposed towards the Complainant;
2. Upon termination of his employment, the Respondent signed a Release and Waiver in favour of the Complainant to the effect that he does not have any claims or demands of any nature against the Complainant;
3. The Respondent told the investigator that he had assisted another individual to register <haworthindia.com>;
4. The Respondent commented that he intended to make the Complainant "beg" for the <haworthasia.com> domain name and that he was hoping to be paid more than US $1,000,000.00 to transfer it; and
5. The Respondent stated that he had registered other domain names such as <microsoftasia.com> for which he was also hoping to be paid a large sum of money.
Subsequent to this investigation, the Complainant verified by search that <microsoftasia.com> was registered in the name of the Respondent and that <haworthindia.com> was registered in the name of Mark Zagrodnik, an employee of the Complainantís office in Singapore.
The domain names <haworthasia.com>, and <microsoftasia.com> were all registered on January 9, 2002.
The Respondent did not respond to the Complainantís cease and desist letter which was sent on September 5, 2001. The Complainant made further attempts to contact the Respondent culminating in a telephone conversation on September 19, 2001, in which the Respondent rejected an offer to transfer the name so as to avoid legal and administrative proceedings, and costs arising from those proceedings, and asked the Complainantís solicitors to put their demands in writing.
The Respondent is not associated with the Complainant and has not been authorised to use the "Haworth" mark.
5. Partiesí Contentions
The Complainantís submissions can be summarized as follows:
The disputed domain name is confusingly similar to the "Haworth" mark. A number of WIPO panel decisions were quoted in support of the claim that the domain name is confusingly similarly to the Complainantís mark. Principles referred to in these cases include the following:
1. the adaptation of a recognised trademark by simply altering the spelling or inserting words and acronyms does not negate a finding of confusing similarity;
2. the addition of a geographical designation to a Complainantís mark does not prevent there being confusing similarity in the domain name; and
3. the use of a prefix or suffix in a domain name may increase the likelihood of confusion with a distinctive mark.
In view of the size and extent of the Complainantís business, it is likely that those using the internet would reasonably associate the disputed domain name with the Haworth group of companies.
The Respondent has no rights or legitimate interests in the dispute domain name. In contrast, the Complainant has used the Haworth mark since its incorporation in 1948. The Respondentís website has been under construction for over 21 months and it is clear that the Respondent has not used and is not using the disputed name in connection with the bona fide offering of goods and services. It is also clear that the Respondent is not making any legitimate non-commercial or fair use of the disputed name.
The Respondent has registered and used the domain name in bad faith. In view of his previous employment with the Complainant, the Respondent was fully aware of the Complainantís rights in the Haworth mark. He registered the domain name with the deliberate intent of disrupting the Complainantís business.
Statements made by the Respondent to the Complainantís investigator to the effect that he was hoping to reap payment of US $1,000,000.00 from the Complainant for the disputed domain name are evidence of his intention to sell the domain name for more than his documented out of pocket costs in respect of the contested name, which is evidence of bad faith in accordance with paragraph 4(b)(i) of the Policy.
Amendments made by the Respondent to the <haworthasia.com> website following receipt of the Complainantís cease and desist letter are further evidence of bad faith.
The Respondent has also engaged in a pattern of cybersquatting in view of his previous registration of <microsoftasia.com> and his statements to the Complainantís investigator regarding the sale of that domain name.
The Respondentís bad faith in registering and using the mark, and intending to profit from it, together with his lack of any legitimate interest in the disputed domain name, satisfy the requirements of the Policy and would also give rise to actions under US Trade Mark Protection and Anti-cyber squatting legislation.
The Respondent has not submitted a Response.
6. Discussion and Findings
In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the ICANN Policy, namely:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) the domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
As a preliminary point, the panel has been asked to make a decision as the admissibility of certain of the Complainantís evidence, specifically the investigation report by the Complainantís investigator and the transcript of its video recording of discussions with the Respondent.
Under the Rules, the Panel has the power to determine the admissibility and weight to be attached to evidence submitted to it. Having reviewed the evidence the subject of the Respondentís request, and the facts of the case, the panel admits the investigation report and transcript of discussions between the Respondent and the Complainantís investigator.
The panel also accepts the supplementary submissions made by the Complainant. The Respondent was afforded an extension of time to submit a Response, which it subsequently failed to do. There is no prejudice to the Respondent in allowing supplemental submissions, given that the Respondent has chosen not to respond to the initial Complaint.
6.1 Identical or confusingly similar to a trade mark or service mark
The Panel must find that: (a) the Complainant has a trade mark or service mark; and (b) that the contested domain name is identical or confusingly similar to that trade mark or service mark.
It is clear from the evidence that the Complainant has rights to the "Howarth" trademark. The Complainant has registrations for the mark in Thailand, where the Respondent is located, and the United States. The mark derives from the name of the founder of the Complainant and has been used extensively by the Complainant since 1948.
The panel agrees with the arguments presented by the Complainant that the disputed domain name is confusingly similar to Howarth mark. It is likely that members of the public would associate the domain name with the Complainant. The addition of the geographic identifier, "Asia", only serves to strengthen the likelihood that members of the public would assume the website was operated by Howarth for its business operations in that market.
Under Paragraph 4(c) of the ICANN Policy, the Respondent may demonstrate its rights and interests in the contested domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparations to use, the contested domain name or a name corresponding to the contested domain name in connection with a bona fide offering of goods or services before any notice to it of the dispute; or
(ii) it (as an individual, a business, or other organization) has been commonly known by the contested domain name, even if it has acquired no trade mark or service mark rights; or
(iii) it is making a legitimate noncommercial or fair use of the contested domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Those circumstances are not exhaustive of the circumstances that may establish rights or legitimate interests. The Respondent had the opportunity to respond and present evidence, for example, that it has legitimate business and registered the domain name without knowledge of the Complainantís rights. The Respondent chose not to respond or present evidence. The Complainant is not entitled to win simply by default, but the Panel can and does draw evidentiary infancies from the failure to respond.
From the evidence presented by the Complainant, the only conclusion open to the panel is that the Respondent does not have any legitimate interests or rights in the disputed domain name. The Respondent is not using the website in connection with any business, nor does it appear to have any legitimate intention to do so. The Respondent is not known by the disputed domain name and the evidence clearly indicates that the Respondent registered and used the domain name in order to extract financial benefit from the Complainant.
The panel notes that the website at <haworthasia.com> does not now appear to be functioning. The reason for this is not clear. However, it is further evidence that the Respondent is not making any bona fide use of the domain name.
6.3 Bad Faith
Paragraph 4(b) of the ICANN Policy states that any of the following circumstances, in particular but without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the contested 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 trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the contested domain name; or
(ii) the Respondent has registered the contested domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondentís website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website or location or of a product or service on the Respondentís website or location.
There is compelling evidence that the Respondent registered and has used the disputed domain name in bad faith:
(a) the Respondent was clearly aware when he registered the domain name that it incorporated a mark belonging to the Complainant and which was well-known to consumers throughout the world;
(b) his comments to the Complainantís private investigator indicate an intention and desire to sell the domain name to the Complainant for US$1,000,000.00, a sum clearly in excess of his documented out of pocket costs directly related to the contested domain name;
(c) the Respondentís actions following receipt of the cease and desist letter from the Complainant amount to an ill-conceived attempt to "legalise" his use of the Howarth mark. Following receipt of that letter, the referral of users of the website to an employee of the Complainant for inquiries about Howarth products was a disingenuous and contrived attempt to give the site the appearance of legitimacy; and
(d) the Respondentís conduct indicates a pattern of cybersquatting, in view of his statements to the Complainantís private investigator regarding registration of other domain names such as <microsoftasia.com>.
The panel finds that paragraphs 4(b)(i) and (ii) of the ICANN Rules are satisified.
For the reasons set forth above and pursuant to Paragraph 4(i) of the ICANN Policy and paragraph 14 of the ICANN Rules, the Panel orders that the contested domain name <haworthasia.com> be transferred to the Complainant.
Dated: February 27, 2002