WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hillenbrand Industries, Inc. v. Sagent Hostmaster, Sagent Group, Inc.
Case No. D2007-0503
1. The Parties
The Complainant is Hillenbrand Industries, Inc., Indiana, United States of America, represented by Baker & Daniels, United States of America.
The Respondent is Sagent Hostmaster, Sagent Group, Inc., Belize City, Belize.
2. The Domain Name and Registrar
The disputed domain name <hillenbrandindustries.com> is registered with Red Register, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2007. At the time of filing, the domain name was registered with Nameview Inc., using Whois Identity Shield facilities.
On April 4, 2007, the Center transmitted by email to Nameview, Inc. a request for registrar verification in connection with the domain name at issue. On April 9, 2007 Nameview Inc. replied stating that “[w]e are not the Registrar for this domain. Our client had us remove the domain from their account prior to receiving the complaint.”
According to the information available on the InterNic Whois database on April 13, 2007, the domain name was still registered with Nameview Inc. but under redemption period status. So replied the Center to Nameview Inc.
The registrar thus invited the Complainant to contact him to restore the domain name at their cost.
The Complainant tried to contact Nameview Inc. several times between April 27, 2007, and May 9, 2007, to redeem the domain name, but apparently received no response.
Even on May 7, 2007, the Center contacted Nameview Inc. directly to facilitate proceeding in the matter.
On June 19, 2007, Nameview informed the Center that it was no longer the registrar for the disputed domain name and provided registry data indicating that the new registrar was Red Register Inc.
On June 20, 2007, the Center sent a request for registrar verification to Red Register Inc by e-mail. This request and all subsequent reminders by e-mail and fax (June 26, July 5, 2007) remained unanswered.
The Center sent a request to obtain further registrar contact details to ICANN Contractual Compliance Department on July 16, 2007.
Upon receipt, the Center sent another request for registrar verification using details provided by ICANN.
On August 23, 2007, Red Register, Inc. finally transmitted by email to the Center its verification response informing that the registrant in the present proceedings is Sagent Hostmaster, Sagent Group, Inc. and providing the contact details.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 28, 2007.
The Center verified that the Complaint together with the amendment to 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 31, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2007.
The Center appointed Alexandre Nappey as the sole panelist in this matter on October 17, 2007. 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 Complaint is based upon common law trademark rights on the words Hillenbrand Industries which are also used by Complainant as its company name.
Complainant is a publicly traded company acting in the health care and funeral services industries, with two wholly owned businesses Hill-Rom Inc and Batesville Casket Company.
Complainant’s businesses have been providing services and products for over seventy-five years.
Complainant filed for incorporation under the corporate name Hillenbrand Industries Inc on August 1969, and began using the marks Hillenbrand and Hillenbrand Industries in connection with its businesses.
The disputed domain name is registered since May 16, 2005.
5. Parties’ Contentions
Complainant states that it has used the marks Hillenbrand and Hillenbrand Industries in commerce for a substantial period of time in association with its products and services and has established common law trademark rights in these names, even though Complainant has not registered the marks Hillenbrand or Hillenbrand Industries.
According to Complainant’s assertions, the disputed domain name is “virtually” identical to its Hillenbrand and Hillenbrand Industries common law marks, except the “.com” gtld suffix added.
Respondent has not been authorized by Complainant to use the Hillenbrand and Hillenbrand Industries trademarks.
Complainant infers that the Hillenbrand and Hillenbrand Industries trademarks are well-known and therefore claims it is likely that Respondent knew of its trademarks when he registered the disputed domain name. Respondent’s use of the domain name to attract internet users to its website from which Respondent likely derives a financial benefit by selling advertising space shows evidence of bad faith according to Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with Paragraph 4(a) of the Policy, and to demonstrate that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
However, under Paragraph 14 (b) of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences there from as it considers appropriate”.
Having consideration to the parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above cited elements are the following:
A. Identical or Confusingly Similar
The first question is to determine whether Complainant has trademark rights in the name Hillenbrand Industries it contends the disputed domain name is virtually identical to.
The Complainant has indeed not registered Hillenbrand Industries as a trademark.
However it is a consensus view that the application of the Policy is not limited to registered trademarks or service marks.
As stated by the Panel in Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322:
“it is undisputed and accepted practice, that paragraph 4(a)(i) of the Policy refers merely to a “trademark or service mark” in which the complainant has rights, and does not expressly limit the application of the Policy to a registered trademark or service mark. (…)Therefore, in the Panel’s view, the fact that in this case Complainant has no registered trademark or service mark for THE IDEA LEAGUE does not preclude a finding that it has established trademark or service mark rights in that name for the purpose of the Rules. Indeed, a fundamental principle of trademark law is that rights in a trademark can be acquired through use, and such rights exist even though the trademark may not be registered.”
To assert common law trademark rights the Complainant must establish that the name has achieved secondary meaning or association with the Complainant.
In order to demonstrate secondary meaning the Complainant may show evidence of continuous use of the proposed mark, revenues invested in the promotion of the Complainant’s products and services under the mark, awareness of the name’s association with Complainant and appearing in marketing materials.
See decision in Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786.
In the present case it is indisputable that Complainant has been identifying itself under the Hillenbrand Industries name for at least 1969. Complainant shows it has continuously raised its revenue in connection with its use of the name Hillenbrand Industries. Complainant finally provided numerous documentation showing that the name Hillenbrand Industries appears on materials, press releases written by Complainant, including on its website “www.hillenbrand.com”.
Therefore the Panel finds that Complainant has provided sufficient evidence to establish it holds common law trademark rights on the name Hillenbrand Industries.
The disputed domain name <hillenbrandindustries.com> is indisputably identical to this mark, except for the “.com” suffix which is without any legal significance.
The Complainant has met its burden of proving that the disputed domain name is identical to the Complainant’s mark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent is not affiliated with the Complainant, nor has the Complainant authorized, licensed or permitted the Respondent to use the common law trademark Hillenbrand Industries.
There is no evidence that the Respondent has ever been known by the name Hillenbrand Industries, or that it has any rights or legitimate interest in respect of the domain name <hillenbrandindustries.com>.
There is no indication that the Respondent is using the domain name in connection with a bona fide offering of goods or services, whereas the Respondent is apparently using the domain name as a way to attract Internet users to its website offering sponsored links.
Numerous decisions have found that the operation of sponsored link services to divert Internet users to other commercial sites by the use of domain names identical or similar to a complainant’s mark, do not confer a right to or legitimate interest in a domain name. See for instance Antigua Group, Inc v. Vanilla Ltd, WIPO Case No. D2004-0543.
The Panel is satisfied that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the domain name <hillenbrandindustries.com>. The Respondent failed to rebut this presumption.
The Panel therefore finds that the Complainant has satisfied the second requirement of
paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In light of the evidence provided by the Complainant, the Panel finds that the Complainant’s mark is well established and widely known in the health care and funeral services, at least in the United States of America.
It is the Panel opinion that the Respondent most likely knew about the Complainant’s existence and rights at the time of the registration of the disputed domain name <hillenbrandindustries.com>.
The Complainant has shown that the disputed domain name resolves to a parking web-page offering sponsored links. The Panel finds that the Respondent, by such use, intentionally attempted to attract Internet users, expecting to reach the website corresponding to the Complainant’s services, by creating a likelihood of confusion with the Complainant’s trademarks and business.
By exploiting the reputation of the Hillenbrand Industries mark, the Respondent diverts Internet users looking for the Complainant’s website and seeks to gain profit out of the domain name by providing sponsored links on the corresponding website obtaining revenues from the diverted traffic.
In light of all the above, the Panel is satisfied that the third element is met and that the domain name <hillenbrandindustries.com> has been registered and is used in bad faith.
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 <hillenbrandindustries.com> be transferred to the Complainant.
Dated: November 1, 2007