WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sam Ash Music Corporation, Samson Technologies Corporation v. Spiral Matrix
Case No. D2006-1018
1. The Parties
The Complainants are Sam Ash Music Corporation (the “First Named Complainant”) and Samson Technologies Corporation, (the “Second Named Complainant”) each of New York, United States of America, represented by Katten Muchin Rosenman LLP, United States of America.
The Respondent is Spiral Matrix, Eldoret, Kenya.
2. The Domain Name and Registrar
The disputed domain name <hartkeamp.com> is registered with Intercosmos Media Group d/b/a directNIC.com (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2006.
On August 11, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name in dispute.
On August 14, 2006, the Registrar transmitted by email to the Center its verification response, confirming that it had received a copy of the Complaint from the Complainant, and that the domain name in dispute is registered with the Registrar, 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 August 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 6, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2006.
The Center appointed James Bridgeman as the sole panelist in this matter on September 21, 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 Complainants are each corporations organised and existing under the laws of the State of New York, United States of America, each having their respective places of business in Hicksville New York, United States of America. The First Named Complainant is a wholly owned subsidiary of the Second Named Complainant.
The First Named Complainant is the owner of the U.S. registered trademark HARTKE, having registration number 3017601 and registered in International class 9 in respect of goods being “sound system equipment, namely, audio speakers and amplifiers, guitar amplifiers and musical instrument amplifiers, signal processors, electronic effect pedals for use with sound amplifiers; Electrical pickups for use with musical instruments” and in class 15 in respect of “musical instruments and accessories therefore (sic), namely, musical instrument stands, carrying cases, carrying bags, guitar picks, frets, guitar straps, guitar and bass strings, tuning apparatuses, capos and pick guards.”
The First Named Complainant’s trademark was registered on November 22, 2005, claiming a first use in commerce since May 31, 1983, and the Complainants have filed evidence of this registration.
5. Parties’ Contentions
In addition to the above referenced U.S. registered trademark, the Complainants further claim that they are the owners of numerous trademark registrations throughout the world and in particular Argentina, Australia, Bolivia, Brazil, Chile, China, Colombia, Ecuador, European Community, Hong Kong, Japan, Korea, Mexico, Peru, Singapore, Taiwan and Thailand, for the trademark HARTKE together with registrations in Canada, China and Germany for the trademark HARTKE SYSTEMS TRANSIENT ATTACK.
The Complainants claim that they, through their predecessor-in-interest have manufactured and sold sound system equipment (including amplifiers) bearing the HARTKE mark since May 1983. The Complainants submit that the trademark HARTKE has acquired distinctiveness and secondary meaning signifying the Complainants and that the mark has become well known and is associated with the Complainants.
The Complainants state that they have established websites at “www.harteke.com” and “www.samsontech.com” addresses and have submitted printouts of pages from a website that contains information about their products. The Complainants claim that they maintain a significant online presence for products bearing the HARTKE trademark.
The Complainants submit that on May 25, 2006, by acquiring the domain name <hartekeamp.com>, the Respondent commenced use of the Complainants distinctive HARTKE trademark, which is identical to and incorporates in its entirety the Complainants’ HARTKE family of marks. The Respondent uses the <hartkeamp.com> domain name to intercept Internet users searching or the Complainant’s well known HARTKE products and to misdirect them to advertising sites for commercial gain. The Respondent uses the domain name specifically in reference to the Complainant’s products.
In addition the site maintained by the Respondent at “www.hartkeamp.com” contains a link which states “buy this domain”. The Complainants submit that the Respondent has purchased the <hartkeamp.com> domain name for no purpose other than to intercept and siphon off Internet traffic intended for the Complainants’ products and to misdirect such traffic to advertising sites for commercial gain as well as for purposes of resale, it is therefore not making any legitimate use of the <hartekeamp.com> domain name.
On June 14, 2006, a cease and desist letter was sent to the Respondent by counsel for the Complainants. Subsequently on July 11, 2006, a follow up letter was sent to the Respondent. The Respondent never replied to either letter. At the time these letters were sent, the Respondent had a link on the site entitled “Buy This Domain!”. The Complainants submit that soon thereafter the Respondent removed that link and submit that this indicates bad faith on the part of the Respondent.
The Complainant submits that the domain name <hartkeamp.com> is identical to the Complainant’s HARTKE trademark in its entirety and uses the Complainant’s trademark in conjunction with the type of goods that the Complainant’s sell, namely amps.
As such the Complainant’s submit that the domain name is confusingly similar to the Complainants’ HARTKE trademark. The Complainants furthermore submit that the addition of the suffix “.com” does not influence the consideration of similarity citing Deutsche Telekom AG v. Domainsforlife.com, WIPO Case No. D2002-0164.
The Complainants further submit that the Respondent does not have any legitimate interest in the HARTKE mark. The Respondent had not made demonstrable preparations to use the <hartekeamp.com> domain name in connection with a bona fide offering of goods or services. Instead, the Respondent has merely used the <hartekeamp.com> domain name in a deliberate attempt to exploit users seeking the Complainants’ website and products. The HARTKE mark is fanciful and arbitrary and deserving of the most heightened protection. The Complainant is thus the only entity with the legal rights to use the HARTKE mark in connection with offerings of professional audio equipment, instruments and accessories.
The Respondent has no agreements with the Complainants authorizing use of the HARTKE trademark. The Respondent does not own any trademark registrations for the word “HARTKE” or that incorporate the word “HARTKE”, and any use of the HARTKE trademark in connection with the offering of goods and services constitutes infringement of the Complainants’ trademark rights.
The Complainants submit that the domain name in dispute was registered and is being used in bad faith. The domain name was registered by the Respondent with full knowledge of the Complainants’ registered trademark. The Respondent had constructive knowledge of the Complainants’ rights by virtue of the Complainants’ federal registration in the U.S. and was subsequently put on actual notice by the Complainants’ cease and desist letters.
As of the date of the Complaint, the content of the Respondent’s website established at “www.hartkeamp.com” address, contained links to third party advertising sites and this indicates that the domain name is being used for commercial gain. By its use of the domain name in this manner, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location. The Policy provides that such activity amounts to evidence of registration and use in bad faith.
In addition, the Respondent and its affiliated entities, Titan Net and Kentech Inc., have engaged in a pattern of registering domain names incorporating the marks of third parties, as evidenced in Société des Hotels Meridien v. Spiral Matrix/Kentech Inc., WIPO Case No. D2005-1196 and Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc.,WIPO Case No. D2005-0890, wherein the Respondent was found to have abusively registered and used 22 different domain names, including <Porsche.net> and <porsche911magazine.com>.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name in question; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
While these proceedings are taken in the name of two separate corporations, the Complaint does not distinguish between them in any regard and treats them as a single entity. Similarly the correspondence sent by the representatives of the Complainants to the Respondent does not distinguish between these respective undertakings but states that the Second Named Complainant is the wholly owned subsidiary of the First Named Complainant. While the Complaint requests that the domain name be transferred to “Complainant” it does not indicate to which of the Complainants it is wished to have the domain name transferred.
The Complainants have furnished evidence that the First Named Complainant is the owner of the U.S. registered trademark HARTKE, they have also claimed ownership of a large portfolio of other marks but they do not indicate which of the Complainants is the registered owner of these other registrations. They have merely furnished the Panel with a list, without any further evidence of registration or use in these jurisdictions or other explanation of the rights that they claim.
Furthermore, while the Complainants state that they have established websites at “www.harteke.com” and “www.samsontech.com” and they claim to have annexed evidence in that regard, the only such evidence annexed to the Complaint relates to a website established at the “www.samsontech.com” address.
Nonetheless, in the circumstances, this Panel accepts that the Complainants are closely related and accepts that the First Named Complainant has rights in the said registered trademark sufficient to establish its entitlement to bring this Complaint under the first element of the Policy.
The Panel finds that the domain name in dispute is confusingly similar to the First Named Complainant’s U.S. registered trademark HARTKE, as it consists of the word “hartke” and the descriptive word “amp” in circumstances where the Complainants manufacture and sell amplifiers and the said trademark is registered in International class 9 for inter alia “amplifiers, guitar amplifiers and musical instrument amplifiers”
B. Rights or Legitimate Interests
The Complainants have submitted that the Respondent has no rights or legitimate interest in the domain name. They have convincingly argued that the Respondent has not made demonstrable preparations to use the <hartekeamp.com> domain name in connection with a bona fide offering of goods or services and that the Complainant is the only entity with the legal rights to use the HARTKE mark in connection with offerings of professional audio equipment, instruments and accessories.
In the circumstances, the onus shifts to the Respondent to establish its rights or legitimate interest in the domain name. Despite having been given the opportunity to do so on two occasions prior to the institution of this Complaint, when it received the Complainants’ cease and desist letters, and despite having been subsequently given the further opportunity to establish any rights it may claim by filing a Response in these proceedings, the Respondent has not made any submissions or given any explanation as to why this particular domain name was chosen.
In the circumstances, the Panel accepts the Complainants’ submissions that the Respondent has no rights or legitimate interest in the domain name.
C. Registered and Used in Bad Faith
Finally, having considered the Complaint, the Panel accepts the Complainants’ submission that the Respondent registered and used the domain name in bad faith.
On the balance of probabilities, the Respondent registered the domain name to take a predatory advantage of the Complainants’ reputation and goodwill in the HARTKE trademark. While the Respondent may or may not have had actual knowledge of the Complainants’ rights in the HARTKE trademark for amplifiers and other similar goods, all the indications are that it was aware of the Complainants’ goodwill and reputation at the time of the registration. There seems no other reason for choosing the unlikely combination of the words “hartke” and “amp”.
Subsequent to the receipt of the two cease and desist letters from the Complainant, the Respondent had actual knowledge of the Complainants trademark rights.
The evidence is that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation or endorsement of its website.
There is also a prima facie case made out that the Respondent registered the domain name in order to sell it on in certain circumstance.
This Panel therefore accepts that on the balance of probabilities and in the absence of any Response from the Respondent, the Complainants have established that the domain name was registered and is being used in bad faith.
In the circumstances the Complainants have established the three elements of the test in paragraph 4 of the Policy and are entitled to succeed in this application.
Given that the Complainants have not indicated which of them is to receive transfer of the domain name, and given that the trademark rights are registered in the name of the First Named Complainant, the Panel directs that the domain name be transferred to the First Named Complainant.
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 <hartkeamp.com> be transferred to the First Named Complainant, Sam Ash Music Corporation.
Dated: October 5, 2006