WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tufco Technologies, Inc., Tufco LP, Hamco Manufacturing and Distributing LLC v. Hamco Alabama, LLC
Case No. D2011-1451
1. The Parties
Complainants are Tufco Technologies, Inc. of Green Bay, Wisconsin, United States of America; Tufco LP and Hamco Manufacturing and Distributing LLC of Newton, North Carolina, United States of America, represented by Davis & Kuelthau s.c., United States of America.
Respondent is Hamco Alabama, LLC of Pelham, Alabama, United States of America.
2. The Domain Name and Registrar
The disputed domain name <hamcoalabama.com> (the “Domain Name”) is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2011. On August 29, 2011, the Center transmitted by e-mail to Network Solutions, LLC a request for registrar verification in connection with the Domain Name. On August 29, 2011, Network Solutions, LLC transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 August 31, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 21, 2011.
The Center appointed Robert A. Badgley as the sole panelist in this matter on September 29, 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
Complainants are Tufco Technologies, Inc. and its wholly-owned subsidiaries, Tufco LP and Hamco Manufacturing and Distributing LLC (collectively “Tufco”). Tufco LP is the owner of United States Patent and Trademark Office Registration No. 1,703,259 for the HAMCO mark, which is licensed to Hamco Manufacturing and Distributing LLC. The mark HAMCO was registered on July 28, 1992, and has been used in commerce since 1987 in connection with “papers and ink ribbons for business machines.”
Complainant operates websites located at “www.hamco.com” and “www.hamco-products.com”, where its products are listed and offered for sale. The HAMCO mark is also used on products and packaging of Hamco’s products.
The Domain Name was registered on September 24, 2003. According to the Complaint, at the website to which the Domain Name resolves Respondent is offering paper and ink cartridges for sale in direct competition with Complainant. The actual web pages in question, however, are not annexed to the Complaint in support of this allegation.
By letter dated February 10, 2005, counsel for Complainant wrote to a Mr. and Mrs. Ken Hamilton (the “Hamiltons”) demanding that the Hamiltons cease and desist from use of the HAMCO mark. There is no reference in this letter to the Domain Name, or to any domain name, for that matter. Indeed, the cease-and-desist letter does not even indicate that alleged infringement was taking place on a website at all.
On February 28, 2005, counsel for “Mr. and Mrs. Ken Hamilton and Hamco Business Information Supplies Co. (collectively, “HAMCO BIS”)” responded to the cease-and-desist letter. In this letter, counsel for HAMCO BIS asserted that “over the past decade, HAMCO BIS has invested substantial time, effort and expense in promoting its business name and the goodwill surrounding the HAMCO mark.” Counsel for HAMCO BIS also asserted that Complainant “has knowingly failed to enforce its trademark rights for over the past ten (10) years.” In addition, counsel asserted, Complainant “knew that HAMCO BIS was using this mark, yet failed to take any action.” Indeed, counsel stated that “we have evidence that, throughout the past ten (10) years, TUFCO [Complainant] actively encouraged HAMCO BIS to use the HAMCO mark.” As a result of the foregoing, counsel for HAMCO BIS stated, Complainant had lost the right to enforce trademark rights against HAMCO BIS by virtue of the doctrines of laches and acquiescence.
Counsel for HAMCO BIS concluded the February 28, 2005 letter as follows (emphasis in original):
“While we do not believe that HAMCO BIS is wrongfully using the HAMCO trademark, solely in the interest of resolving this dispute and future disputes between the parties and to avoid legal expenses, HAMCO BIS is willing to agree to change the name of its business to not incorporate the HAMCO mark and to forgo all use of the term HAMCO to identify its business on or before August 1, 2005.”
The record contains no evidence of any response to this letter from HAMCO BIS until six and a half years later. In June 2011, Complainant became aware of Respondent and of the Domain Name when a potential new distributor for Hamco’s products surveyed potential customers. Most of the potential customers it approached said they were already buying products from Respondent and believed that they were receiving genuine Hamco products. According to the records of Alabama Secretary of State, Kenneth James Hamilton, John Mason Hamilton, Shirley May Hamilton and Stacey Joplin Hamilton are listed as members of Hamco Alabama, LLC. The Hamiltons who, by Complainant’s account, “agreed” to cease and desist from use of the “Hamco” name in 2005 are alleged to be the same Hamiltons now using the Domain Name. This allegation is not rebutted by Respondent, who filed no Response in this proceeding.
Complainant alleges that, in spite of their 2005 “agreement” to cease use of the HAMCO mark, the Hamiltons, via Respondent, Hamco Alabama, LLC, are again trying to build a business around infringing the HAMCO trademark. Complainant thus characterizes the February 28, 2005 letter from Respondent’s counsel as an agreement to forgo use of the HAMCO mark. However, the actual letter belies this characterization. In fact, Respondent’s counsel had indicated a willingness to cease use of the HAMCO mark by a date nearly six months later (August 1, 2005), but this offer was contingent upon Complainant agreeing not to take any other action against Respondent. As far as the record here shows, this offer was never accepted by Complainant.
By letter dated June 22, 2011, new counsel for Complainant wrote to Hamco Alabama, LLC (attn.: Kenneth Hamilton, member). This letter alleged trademark infringement by Hamco Alabama, and made reference to the Domain Name. (Complainant did not, though, demand transfer of the Domain Name in this letter.) The letter also made reference to the above-quoted portion of the February 28, 2005 letter from HAMCO BIS’s counsel, and asserted that counsel’s “representation has been breached.” The record does not indicate whether any response to this letter was received.
5. Parties’ Contentions
Complainant’s main factual assertions are set forth above in the Factual Background discussion, or will be set forth below in the context of particular elements under the Policy.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
A. Identical or Confusingly Similar
Complainant clearly has rights in the registered mark HAMCO. The Domain Name incorporates this mark and adds the geographical indicator “Alabama”. The addition of this indicator does not, in the Panel’s view, diminish the confusing similarity between the Domain Name and Complainant’s mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.
B. Rights or Legitimate Interests
The Panel declines to rule on this element of the Policy, since the Panel finds (below) that the Domain Name was not registered and is not being used in bad faith.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the Domain Name in “bad faith” :
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds that Complainant has failed to establish on this record1 that the Domain Name was registered and is being used in bad faith. This case does not present a clear instance of cybersquatting. Rather, it appears that the dispute between the parties is a longstanding trademark infringement dispute, the merits of which are beyond the scope of the Policy.
The Domain Name was registered in September 2003, and, according to the record, its registration was not even acknowledged by Complainant until June 2011. The correspondence between the parties (or their predecessors) in February 2005 made no mention of the Domain Name. Moreover, as stated above, Respondent did not concede in 2005 that Complainant was correct in its assertions and did not unconditionally agree to cease all use of the HAMCO mark. The Panel also finds it telling that Complainant evidently did not respond to the assertions by Respondent’s counsel in February 2005 that Complainant had known of Respondent’s use of the HAMCO mark and had acquiesced in such use. This assertion, whether true or not, called for a response, either by letter back in 2005 or in the Complaint in this proceeding. This unexplained silence underscores the Panel’s impression that the entire relevant picture of the parties’ dealings has not been presented in this record. It also underscores the Panel’s conclusion that this is not a clear case of abusive domain name registration and use. Rather, this appears to be a dispute best subjected to the jurisdiction of a judicial court.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has not been satisfied.
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Dated: October 13, 2011
1 The Panel has given due consideration in this matter to the possibility of issuing a Panel Order to solicit further evidence, if any were available, from the Complainant on the issue of the Respondent’s bad faith registration and use under the Policy but has determined that giving the Complainant a second bite at the apple would not be in line with the spirit of expediency and efficiency suggested in the Policy.