WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hatlapa Uetersener Maschinenfabrik GmbH & Co. v. Direct Privacy ID 13982/ Eurocana
Case No. D2011-0949
1. The Parties
The Complainant is Hatlapa Uetersener Maschinenfabrik GmbH & Co. of Uetersen, Germany, represented by Davis LLP, Canada.
The Respondent is Direct Privacy ID 13982/ Eurocana of Georgetown, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland and of North Vancouver, British Columbia, Canada, respectively.
2. The Domain Name and Registrar
The disputed domain name <hatlapa.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 June 2, 2011. On June 3, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response identifying Direct Privacy ID 13982 as the registrant and providing the contact details. In response to a notification by the Center to the Complaint that an amendment to the Complaint was required, the Complainant filed an amendment to the Complaint on June 22, 2011.
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” 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 the Respondent of the Complaint, and the proceedings commenced on June 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2011.
The Center appointed Francine Tan as the sole panelist in this matter on July 26, 2011. 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 submitted affidavit evidence in support of its claims in the Complaint. It states that it is a marine equipment company that was founded in Germany in 1919. It manufactures and sells winches, compressors, steering gears and other equipment for the shipbuilding industry and offers services such as commissioning, repairs and maintenance. With 42 agents in 35 countries, and subsidiaries and offices in various countries, the Complainant’s products are sold internationally in association with its HATLAPA trade mark. The Complainant’s annual net revenue in 2010 was approximately EUR 120 million.
The Complainant submitted evidence of its German trade mark registration for the mark in Class 7, which was applied for in 1991 and registered in 1992.
The Complainant established its website at “www.hatlapa.de” in or about 1997. The website is available in German and English, and the Complainant asserts that it is an important means by which their business is promoted.
From the limited information that the Complainant has been able to gather of the Respondent, it appears that the latter is based in or has a connection to British Columbia, Canada, and is involved in, or has a direct or indirect connection to, the marine equipment business.
The disputed domain name was registered on July 10, 2001.
In June 2010, the Complainant’s marketing executive sent an email to the Respondent’s administrative contact on record to inquire whether the Respondent would be “interested in releasing” the disputed domain name to the Complainant. A response was received a couple of weeks later from a lady from Eurocana in which she stated that they had “evaluated [the Complainant’s] request and may be willing to come to an arrangement regarding” the disputed domain name. The Complainant was asked to “make a realistic offer” which would then be communicated to their “GenTech engineering dept”. Subsequent attempts by the Complainant to contact the Respondent were met with silence.
The WhoIs search made by the Complainant in November 2010 showed the owner of the disputed domain name to be “Eurocana”, with an address in North Vancouver, British Columbia. On January 14, 2011, the WhoIs records were reflected to show the Respondent’s identity as Direct Privacy ID13982. The Complainant asserts that the Respondent, after having been contacted by the Complainant, took steps to shield its identity by implementing the Registrar’s privacy services.
5. Parties’ Contentions
The Complainant asserts firstly, that the disputed domain name is identical to its HATLAPA trade mark.
Secondly, the Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, and that this is supported by the following:
(i) The Complainant commenced business under the name HATLAPA in 1919, and has since then used its HATLAPA trade mark extensively. This use pre-dates the registration of the disputed domain name by 80 years. The burden is therefore on the Respondent to establish its rights or legitimate interests in the disputed domain name. However, it would not be possible for the Respondent to demonstrate it has rights or legitimate interests since there is no relationship between the Complainant and the Respondent that would establish any licence or permission by which the Respondent could own or use any domain name incorporating the Complainant's HATLAPA trade mark. Further, the Complainant has not authorized the Respondent to use the HATLAPA trade mark or to register any domain names incorporating or derived from that trade mark.
(ii) The Respondent has not made any bona fide offering of goods or services in association with the dispute domain name. The disputed domain name resolved to a parked site (“the Site”) that featured a list of “related premium domains for sale” and links to sub-pages with titles such as “Mortgage,” “Credit,” and “Debtors”. The Internet Archive located at “www.archive.org” contained images of the Site as at September 2003, January 2004, December 2004 and March 2008, all of which showed a website substantially similar to the Site. The Complainant submits that (a) this indicates that the Site has only ever been used as a parking site established to generate Internet traffic and income for the Respondent through the sponsored links; and (b) registering and using the disputed domain name solely for commercial gain (by deriving a financial benefit from the web traffic that is diverted to the Site and the Site’s sponsored links) is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use purpose.
(iii) The Respondent has not been commonly known by the disputed domain name, and the disputed domain name bears no relationship to the Respondent’s business. It appears that the Respondent may go by the name “Eurocana” or “Eurocana Marketing and Production Ltd.”, and may have been related to or affiliated with a corporation named “North American Marine Equipment Ltd.” None of these business names incorporate the term or name “hatlapa”. An Internet search for the term “hatlapa” does not reveal other businesses that use the name “hatlapa”; rather, most of the search results relate to the Complainant and/or its trade mark. It also seems that the Respondent is based in or conducts business in Canada. However, a search of Canadian businesses has not surfaced any Canadian businesses that use the name “hatlapa” in their business names.
Further, searches of the Canadian, American and European trademark databases have not revealed any “Hatlapa” or Hatlapa-derivative trade mark registrations nor applications by anyone other than the Complainant.
(iv) “Hatlapa” is not a word with a known or generic meaning. The Respondent had no reason to acquire the disputed domain name other than for purposes of creating a false impression of association or affiliation with the Complainant.
Thirdly, the Complainant submits that the disputed domain name was registered and is being used in bad faith, and this is evidenced by the following:
(a) What the Complainant has been able to ascertain about the Respondent is that the latter is connected to or involved in the marine equipment industry. This makes the Respondent’s ownership of the disputed domain name even more suspect, given that the Complainant and its HATLAPA trade mark have a long-standing and well-established international reputation in that industry. Those knowledgeable of the marine equipment industry will know of the Complainant, and will recognize the mark HATLAPA as that of the Complainant. They will presume that any business or entity using HATLAPA in association with marine equipment is related to, affiliated with or authorized by the Complainant.
(b) The Respondent’s bad faith is demonstrated by its use of the disputed domain name to host the Site, with the purpose of diverting the Complainant’s customers, potential customers, suppliers and potential suppliers to its own website for commercial gain. Internet users seeking the Complainant’s website would expect the disputed domain name either to lead to the Complainant’s site or to a site that is sponsored by or affiliated with the Complainant.
(c) The Site not only contained sponsored links, but also links entitled “Marines” and “Compressors”. This shows that the Respondent was aware of the nature of the Complainant’s business, and was seeking to profit from the Complainant’s reputation and goodwill in its HATLAPA trade mark.
(d) The Respondent’s failure to respond to the Complainant’s offer or to any of its subsequent communications suggest that the Respondent registered the disputed domain name for the purpose of selling it to the Complainant, which constitutes bad faith registration and use. The Complainant submits that the failure to respond to the Complainant’s communications supports an inference of bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
>6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to obtain a finding in its favour and the remedy sought. These elements are that:
(i) the respondent’s 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 name; and
(iii) the respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established rights in the trade mark HATLAPA, by virtue of its German trade mark registration as well as by virtue of its long-established use in relation to its business.
Since the gTLD “.com” should be disregarded when considering the issue of identity or confusing similarity, the Panel therefore finds that the disputed domain name is identical to the Complainant’s trade mark HATLAPA.
The first element of paragraph 4(a) of the Policy has therefore been satisfied.
B. Rights or Legitimate Interests
Complainants are only required to establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, after which the burden would be shifted to the respondent to prove otherwise, by showing any of the following circumstances (per paragraph 4(c) of the Policy):
“(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The requirement for complainants to establish, in relation to paragraph 4(a)(ii) of the Policy, only a prima facie case, is consistent with the general consensus view established by previous UDRP panel decisions. (See item 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition).
The Panel is of the view that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. As regards the use by the Respondent of the disputed domain name for the parked website, whilst the use of a domain name to post parking pages or sponsored links is not wrong per se, UDRP panels have recognized that such use “would not of itself confer rights or legitimate interests arising from a bona fide offering of goods or services” especially where they result in a connection to competing goods or services. “[W]here domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value.” (See item 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.)
In this case, the disputed domain name involves a wholesale adoption of a word which has no generic or other known meaning or significance other than as a trade mark. Further, the disputed domain name appears to have been used, inter alia, in relation to goods which are related to those of the Complainant. The Respondent’s choice of the word “hatlapa” is therefore indeed suspicious and in the absence of contrary evidence from the Respondent to show otherwise, the Panel draws a negative inference. The Panel therefore finds that the Complainant has established that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The second element of paragraph 4(a) of the Policy has therefore been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
The Panel is of the view that the evidence submitted does not support an unequivocal finding that the circumstances fall within that described in paragraph 4(b)(i) of the Policy. It is not clear that the Respondent registered the disputed domain name for the primary purpose of selling it to the Complainant or a competitor of the Complainant, and to profit thereby.
However, the Panel finds that the circumstances do indicate that the Respondent must have known of the Complainant’s business and of its trade mark HATLAPA, and had registered the disputed domain name for the purpose of attracting, for commercial gain, Internet users to its 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 its website or of a product or service on the website or other location. Even if Internet users would subsequently realize that the Respondent’s website has nothing to do with the Complainant, the disruption to the Complainant’s business would have already been caused by the initial interest confusion.
Although the fact that the Respondent subsequently implemented a privacy registration service is not conclusive evidence of bad faith registration and use, the timing of its implementation and the content of the Site do lead the Panel to draw a negative inference.
In the circumstances, the Panel finds that the Complainant has established bad faith registration and use of the disputed domain name.
The third element of paragraph 4(a) of the Policy has therefore been satisfied.
For 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 <hatlapa.com> be transferred to the Complainant.
Dated: July 28, 2011