Complainants are Sam Ash Music Corporation and Samson Technologies Corporation of Hicksville, New York, United States of America, represented by Katten Muchin Rosenman LLP, United States of America.
Respondent is Speedy Web of New Orleans, Louisiana, United States of America.
The disputed domain name <hartkeamps.com> is registered with DirectNIC, Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2009. On December 22, 2009, the Center transmitted by email to DirectNIC, Ltd. a request for registrar verification in connection with the disputed domain name. Later on December 22, 2009, DirectNIC, Ltd. transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on January 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 26, 2010.
The Center appointed Seth M. Reiss as the sole panelist in this matter on January 29, 2010. 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.
Complainant Samson Technologies Corporation is a wholly owned subsidiary of Complainant Sam Ash Music Corporation (hereafter collectively Complainant). Since 1983, Complainant has used the HARTKE mark and name on and in conjunction with professional audio products and accessories. Complainant sells products bearing the HARTKE brand through retail outlets, catalog sales, and via websites including those located by the domain names <hartke.com> and <hartkeamp.com>.
Complainant owns United States federal trademark registrations for the mark HARTKE SYSTEMS TRANSIENT ATTACK, in class 9, for audio equipment since November 1986, and for the mark HARTKE, in classes 9 and 15, for audio equipment and musical instruments since November 2005. Complainant also owns a European Community registration for the HARTKE mark as well as registrations for the mark in countries of Europe, Latin America and Asia, dating from 1991.
Respondent or its predecessor registered the <hartkeamps.com> domain name on February 22, 2003. Respondent is currently using the disputed domain name to point to a website that that depicts and describes audio equipment and musical instruments and that provides links to other websites that sell audio equipment and musical instruments. The linked to sites offer products that are in direct competition with the products Complainant sells under its HARTKE mark.
On August 3, 2009, and again on September 21, 2009, Complainant sent Respondent letters advising Respondent that its “www.hartkeamps.com” website infringes upon Complainant's rights and demanding that Respondent transfer the disputed domain name to Complainant. Respondent never replied to Complainant's demand letters.
Complainant claims trademark rights in the HARTKE brand as a result of long term, widespread and continuous use and as a result of United States and other national registrations for the mark. Complainant contends that the <hartkeamps.com> domain name is identical to Complainant's HARTKE mark because the disputed domain name incorporates the mark in its entirety and because Respondent uses the disputed domain name in conjunction with the type of goods that Complainant sells.
Complainant further argues that Respondent has neither rights nor any legitimate interests in respect of the disputed domain name in that Respondent has never made use of the name in the context of a bona fide offering of goods or services, is not authorized by Complainant to use the HARTKE mark, and is not commonly known by the Hartke name.
Lastly, Complainant submits that the disputed domain name was registered and is being used by Respondent in bad faith for the reasons that (1) the “www.hartkeamps.com” website promotes and links through to other sites that sell audio equipment and musical instruments in competition with the goods sold by Complainant; (2) Respondent registered the disputed domain name to prevent Complainant from reflecting the HARTKE mark in a corresponding domain name; and (3) Respondent has engaged in a pattern of registering and using domain names incorporating the trademarks of third parties. Complainant cites to four UDRP decisions in which domains held by Respondent were transferred to the respective complainants.
Complainant request that the disputed domain name be transferred to it.
Respondent did not reply to Complainant's contentions.
Paragraph 15(a) of the Rules instructs that: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant has the burden with respect to each of the following:
1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) the respondent has no rights or legitimate interests in respect of the domain name; and,
3) the domain name has been registered and is being used in bad faith.
Respondent's <hartkeamps.com> domain name incorporates Complainant's HARTKE mark in its entirety. HARTKE is a fanciful term that, apart from its functioning as a mark, neither describes nor brings to mind audio equipment or any other product or service. HARTKE is thus among the strongest varieties of marks generally accorded the strongest protection. Merrell Pharmaceuticals Inc. and Aventis Pharma SA. v. Lana Carter, WIPO Case No. D2004-1041.
“Amps” is generic for and descriptive of a feature of the type of goods sold by Complainant under its HARTKE mark. Combining a complainants' trademark with a generic or descriptive term fails to distinguish the disputed domain name from the trademark and, according to some WIPO panels, can serve to aggravate the likelihood of confusion. Volvo Trademark Holding AB v. e-motordealer Ltd., WIPO Case No. D2002-0036.
This Panel is satisfied that the disputed domain name is confusingly similar to a trademark in which Complainant has rights and finds that the first element of the Policy has been met.
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name and that Complainant never licensed or otherwise authorized Respondent to use the HARTKE mark. This establishes a prima facie case and shifts the burden to Respondent to demonstrate rights or legitimate interests in the domain name. This Respondent has failed to do. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name and that the second element of the Policy is met.
The paragraphs 4(b)(i), 4(b)(ii), and 4(b)(iii) examples of bad faith registration and use under the Policy are not evident from the facts of the present case. However, the circumstances of paragraph 4(b)(iv) of the Policy do appear evident in this case. Complainant's HARTKE mark is well established internationally and was, in 2003, when Respondent first registered the disputed domain name. Given the fanciful nature of the HARTKE mark, it is difficult in these circumstances to conceive of any reason why Respondent would register the <hartkeamps.com> domain name except to trade on the recognition value and goodwill of Complainant's HARTKE brand.
Respondent's site includes a photo of audio equipment of the type sold by Complainant under the HARTKE mark and lists a variety of audio equipment and musical instruments that link through to sites selling such equipment and instruments. There is little doubt but that Respondent earns link-through revenues as a result of visitors to its “www.hartkeamps.com” website. “[I]t is now a well known practice to display on a web page or search engine various links to other commercial websites, every link activated by an Internet user enables the host of the search engine to collect financial remuneration proportional to the number of connections.” Deutsche Telekom AG v. WWW Enterprise, Inc., WIPO Case No. D2005-1136.
The Panel finds that the Respondent here is using the disputed domain names to intentionally attract for commercial gain Internet users to its site by creating a likelihood of confusion with Complainant's HARTKE mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website.
Accordingly, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith and that the third and final element of the Policy has been established.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <hartkeamps.com> be transferred to the Complainant.
Seth M. Reiss
Date: February 9, 2010.