WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hummert International Inc. v. Manila Industries, Inc.
Case No. D2006-0777
1. The Parties
The Complainant is Hummert International Inc., Missouri, United States of America, represented by Armstrong Teasdale, LLP, United States of America.
The Respondent is Manila Industries, Inc., Santa Ana, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <hummerts.com> is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2006. On June 22, 2006, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On July 5, 2006, Compana LLC 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 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 July 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2006.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on August 14, 2006. 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 is a commercial distributor of horticultural supplies and equipment based in Earth City, Missouri. The Complainant’s company was established in 1934.
Through considerable advertising and effort, Hummert has become known as a source for horticulture goods having an inventory of over 32,000 products. Its catalogue is an industry standard for the presentation of horticultural products.
In 1996, Complainant registered the domain name <hummert.com> as a means to offer its horticulture products through an online order entry service. In addition to its vast products catalogue and online store, Hummert offers a variety of publications to its customers.
Through its catalogue, Internet service and publications, Hummert acquired a substantial customer base and has become well-known in the United States and internationally.
5. Parties’ Contentions
The Complainant asserts, inter alia, as follows:
The domain name is identical or confusingly similar to the Complainant’s mark, HUMMERT, in which the Complainant has rights.
The disputed domain name <hummerts. com> is identical or nearly identical to the Complainant’s mark making it confusingly similar.
The Respondent modified the Complainant’s mark, HUMMERT, merely by adding the letter “s” to create the disputed domain name, <hummerts.com>. Such modifications have been held to be a “close variant” of a complainant’s mark and confusingly similar.
The disputed domain name also is confusingly similar to the Complainant’s domain name and website address for its online horticulture products retail service. Again, the difference between the domain names is the addition of the letter “s” .
The Respondent engages in typosquatting, which by definition, renders a domain name confusingly similar to the Complainant’s mark.
The Respondent has no legitimate interest in the disputed domain name. The Respondent is not related to the Complainant, has no relationship with the Complainant and does not have the Complainant’s permission to use the Complainant’s mark.
The Respondent does not use the disputed domain name or the mark in connection with a bona fide offering of goods or services. Rather, the Respondent, in registering the disputed domain name, engages in typosquatting by introducing a slight variation in the Complainant’s famous mark.
The Respondent incorporated the slightly modified trademark into the disputed domain name primarily to profit from the success and popularity of the Complainant. The Respondent’s use of the Complainant’s modified domain name diverts users looking for horticulture products from the Complainant’s site to its website which provides advertisements and links to the Complainant’s competitors’ websites. By using a domain name consisting of a minor variation of the Complainant’s mark, the Respondent not only generates Internet traffic to its site but also gains advertising revenue.
The Respondent registered and is using the disputed domain name in bad faith.
For nearly seventy-five years, the Complainant has acquired substantial goodwill and recognition among consumers that is associated with the Complainant. The Respondent uses the confusingly similar domain name in an attempt to appropriate the goodwill of the Complainant for its own purposes. Moreover, the domain name obviously is connected to the Complainant and its goods and services that its very use by the Respondent, who has no connection with the Complainant, is indicative of “opportunistic bad faith.”
The practice of typosquatting, in itself, is evidence of bad faith registration of a domain name. It is inconceivable that the Respondent was unaware of the Complainant’s mark at the time the disputed domain name was registered.
The Complainant has been in business since 1934 and is well-known for its horticulture products. The Respondent diverts customers for his own commercial gain with intent to profit at the Complainant’s expense by creating a likelihood of confusion with the Complainant’s well-known mark.
The Respondent’s bad faith is further evidenced by the fact that this is not the first time such a charge has been made against the Respondent. The Respondent has a history of typosquatting, routinely registering domain names to profit off famous marks and the goodwill of others.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as the Panel considers appropriate (see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark or service mark;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Complainant has made use of its mark “HUMMERT” for over 70 years, and has registered the domain name <hummert.com>.
The domain name <hummerts.com> merely adds the letter “s” to the Complainant’s domain name and mark. The domain name incorporates the dominant feature of the Complainant’s mark and is, in the Panel’s view, confusingly similar to the Complainant’s mark (see Olympus USA, Inc., Olympus America, Inc., and Olympus Optical Co., Ltd v. World Photo Video and Imaging Corp., WIPO Case No. D2001-1464).
Therefore, the Panel finds that the domain name is confusingly similar to the Complainant’s mark pursuant to paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, several WIPO UDRP decisions have held that “once a complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain name; the Panel finds that the use of the domain is not fair or noncommercial as the website is used to offer competing services to the Complainant’s services.
The Respondent has not submitted a proper response. Therefore, the Respondent has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the domain name under paragraph 4(c) of the Policy.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the domain name pursuant to paragraph 4(b) of the Policy.
D. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the domain name in bad faith in violation of paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for a complainant to show bad faith registration and use of domain names. One such criteria which indicates bad faith, listed under paragraph 4(b)(iv), includes “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”.
The Panel finds that the Complainant has adequately supported the inference that the Respondent’s actions satisfy the requirement of paragraph 4(b)(iv) of the Policy. The Respondent is, in using the domain name, diverting Internet users to the Respondent’s website offering competing services to the Complainant’s services. The mere fact of diverting users in this misleading manner is evidence of bad faith (see Big Dog Holding, Inc. v. Day, NAF Claim No. FA 93554 (March 9, 2000)).
It may be inferred from the nature of the Respondent’s domain name website – a portal site that leads to various services similar to those provided by the Complainant – that the Respondent was aware of the Complainant’s mark.
The Panel is also of the view that the Respondent’s actions constitute typosquatting. The Panel notes that the Respondent has registered other domain names incorporating the slightly modified marks of other entities. The practice of typosquatting, of itself, is evidence of bad faith (see, Longs Drug Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069; Lexar Media, Inc. v. Huang, WIPO Case No. D2004-1039; Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816).
The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes that the Complainant has proven bad faith in registration and use on the part of the Respondent.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <hummerts.com> be transferred to the Complainant.
Thomas P. Pinansky
Dated: August 18, 2008