WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Oy Heartagram Ltd. v. Wes Hudson
Case No. D2002-1148
1. The Parties
The Complainant is Oy Heartagram Ltd., Kapteeninkatu 5 C 34, 00140 Helsinki, Finland, represented by Benjon Oy of Finland ("Complainant").
The Respondent is Wes Hudson, 6108 Dorsett Place, Wilmington, North Carolina 28403, United States of America, ("Respondent").
2. The Domain Name and Registrar
The disputed domain name <heartagrambelt.com> is registered with Go Daddy Software ("Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 18, 2002.
On December 18, 2002, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue.
On December 19, 2002, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center on December 26, 2002, formally notified the Respondent of the Complaint, and the proceedings commenced on December 27, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was January 16, 2003. The Response was filed with the Center on January 12, 2003.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on February 23, 2003. 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
Complainant is the owner of the trademark HEARTAGRAM, registered in Finland, the United States and the European Community for the classes 9, 16, 25 and 41. See e.g. USPTO trademark application no. 78135743, CTM application no. 2715423 and the pending Finnish trademark application no. T200200880.
The domain name <heartagrambelt.com> was registered on May 30, 2002, by Respondent.
On July 17, 2002, Complainant sent a Cease and Desist Letter to Respondent. In this letter Complainant summoned Respondent to stop using Complainantís trademarks on his website, to cease and desist with the use of the domain name <heartagrambelt.com> and to transfer the domain name in question to Complainant.
On July 29, 2002, the Cease and Letter was returned to Complainant with the notification that Respondent had refused to accept the letter.
On November 12, 2002, Complainantís agent sent a second Cease and Desist Letter to Respondent. Respondent did not reply to this letter.
5. Applicable rules
Paragraph 4 (a) of the Policy directs that Complainant must prove each of the following:
(i) the domain name at issue is identical or confusingly similar to a trademark in which the Complainant has rights
(ii) the Respondent has no rights or legitimate interest in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4 (b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of Paragraph 4 (a) (iii) above.
Paragraph 4 (c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondentís rights or legitimate interest to the domain name for the purpose of Paragraph 4 (a) (ii) above.
6. Partiesí Contentions
Complainant is a company related to the Finnish band named "Him" and its vocalist Mr. Ville Valo. Complainant is the domain name holder of <heartagram.com>. Mr. Ville Valo is the creator of the HEARTAGRAM-logo. Complainant, the band "Him" and Mr. Valo began to use the HEARTAGRAM-logo at the end of 1997, first in Finland and later in Europe and since 1999 also in the United States. The HEARTAGRAM-logo was registered as a trademark on April 16, 1999. Complainant has also trademark rights to the word "heartagram".
The grounds for the Complaint are:
(1) the domain name is identical or confusingly similar to a trademark or service mark to which Complainant has rights.
Complainant has trademark rights to the word "heartagram". "Heartagram" is an invented word and therefore can be categorised as very distinctive. The beginning of the domain name <heartagrambelt.com> is identical to Complainantís trademark and the addition of the indistinctive word "belt" does not lessen the similarity between the marks. Therefore, it is clear that the domain name at issue is confusingly similar to Complainantís trademark HEARTAGRAM.
(2) Respondent has no rights or legitimate interests in respect of the domain name.
Respondent has no trademark rights to HEARTAGRAM or "heartagrambelt". Respondent registered and started using the domain name <heartagrambelt.com> several years after Complainant started using HEARTAGRAM.
(3) The domain name was registered and is being used in bad faith.
Respondent became aware of Complainantís trademark HEARTAGRAM and incorporated it into its domain name. This is proven by the fact that Respondent has registered himself as the user of Complainantís Internet site "www.heartagram.com". In fact Respondent has registered himself twice as a user.
Furthermore, the source code of Respondentís website includes the following terms as meta-names: heart-a-gram, heart a gram, heartagram, heartagrambelt, HIM and him. It is therefore clear that Respondent was aware of the band "Him", the trademark HEARTAGRAM and Complainantís registration of the domain name <heartagram.com>.
Ten percent of the visitors to Complainantís website "heartagram.com" are from the United States. This proves that not only Respondent but also other US Internet users are aware of Complainantís trademark.
Consequently, the domain name has been registered in bad faith.
Respondent is illegally using Complainantís trademarks at his website. Respondent is not only infringing on Complainantís trademark rights to the word "heartagram" , but also to the HEARTAGRAM-logo, the HIM-logo and the HER-logo (also registered trademarks by Complainant).
Respondentís has posted on his website, among other things, a picture of a man wearing a t-shirt on which the HEARTAGRAM-logo and the HER-logo are printed. (The band "Him" is known in the US by the name "Her".) The belt buckles that are offered for sale are identical to the HEARTAGRAM-trademark. A CD of the band "Him", including the trademark HEARTAGRAM and the HIM logo, is shown on the site.
The use of Complainantís trademarks is commercial as Respondent is offering belts with the HEARTAGRAM logo for sale.
Respondent has offered free "Him" cdís together with buckle order. By doing so, Respondent has infringed on the copyright of Complainant.
Respondent has not replied to two Cease and Desist letters. The passive and indifferent attitude of Respondent is a clear indication that he is not acting in good faith.
Respondent was earlier involved in a domain name dispute (WIPO case no. D2000-0659), in which case it was decided that the domain names registered by Respondent had to be transferred to the Complainant.
On the basis of the foregoing it is clear that Respondent has been using the domain name in bad faith.
Respondent requests the Panel to deny the remedies requested by Complainant.
The mark Respondent uses is used primarily for a belt buckle design that is different to the mark for which Complainant claims a monopoly. Complainantís version is not used on a belt or buckle offered for sale. Complainant is trying to assert monopoly status on any design bearing a heart and/or triangle.
The domain name <heartagrambelt.com> is not confusingly similar to the name <heartagram.com>. The addition of the word "belt" does in fact differentiate the sites. Visitors cannot be confused as to the content of that offered on the websites, <heartagram.com> offers music, <heartagrambelt.com> offers a belt.
In order to prove that names are confusingly similar, <heartagram.com> must prove that it is well-known. Respondent states that HEARTAGRAM is not well-known.
Respondent claims to have a legitimate interest in the domain name at issue due to his bona fide offering of goods on the website prior to the Complaint, and the fact that the website has been commercially used prior to the Complaint. Furthermore, Respondent states that he has been generally known by the name "heartagrambelt" since he began marketing his products in February 2002.
Respondent states that he is not tarnishing the image of <heartagram.com>.
Respondent states that there have been no pictures of Mr. Vallo or "Him" on his website for some time. His website is in a constant state of revision and was not altered after receiving the Complaint but prior to receiving the Complaint.
Respondent has not registered or used the domain name in bad faith.
Respondent states that he has not registered the domain name in order to prevent Complainant from registering this name. Furthermore, Respondent claims not to be a competitor of Complainant.
Respondent has not intentionally attempted to attract web traffic by creating a likelihood of confusion with Complainantís trademark. Respondentís web traffic is self-generated through advertising and referrals. Respondent states that his website is not even ranked on Google the search engine under the word "heartagram".
7. Discussion and Findings
Complainant must provide evidence of all elements of Paragraph 4 (a) of the Policy. Since the decision to transfer or cancel a domain name may have serious consequences for the domain name holder, the evidence should be sufficient in all respects to support such a decision.
A. Trademark rights
Complainant has provided sufficient evidence of its rights to the trademark HEARTAGRAM.
B. Identical or confusingly similar
The domain name <heartagrambelt.com> is confusingly similar to Complainantís trademark HEARTAGRAM. The domain name incorporates the trademark HEARTAGRAM with the generic word "belt" and the suffix ".com" (which indicates that the domain name is registered in the ".com" gTLD). It is clear that the distinctive trademark HEARTAGRAM is the most prominent element in this combination, and that may mislead the public into thinking that the domain name is somehow connected to the HEARTAGRAM trademark. (See e.g. WIPO case no. D2000-1554 Daimler Chrysler AG v James Curs, <driveamercedes.com>; WIPO case no. D2001-0055 America Online v Yeteck Communication <aolsportsbat.com>, <aolsports.net>, <aolcasino.com>.)
In view of the above it is clear that the domain name and the trademark are confusingly similar. The ability of the word "belt" to distinguish the domain name from Complainantís trademark is limited. The Panel finds that this addition does not alter the likelihood of confusion with Complainantís trademark.
C. Rights or legitimate interests
Under paragraph 4 (c) of the Policy, Respondent may demonstrate that it has a right or legitimate interest to a domain name for the purpose of Article 4 (a) (ii), inter alia, by providing evidence of any of the following circumstances:
"(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non commercial 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."
Respondent has stated that he is using the domain name at issue for the bona fide offering of buckle belts. This statement cannot be accepted as correct. In the Panelís opinion Complainant has provided sufficient evidence that Respondent was aware of Complainant, the Finnish pop band "Him" ("Her") and Complainantís rights in the trademark HEARTAGRAM before registering the domain name at issue. Respondent has not contested that he visited Complainantís website <heartagram.com> before registering the domain name at issue. Although Respondent has stated that "his heartagram" is his own design, the Panel has noticed that a picture of a t-shirt with the HEARTAGRAM logo of Complainant is being displayed at Respondentís website. Consequently, the offering for sale of HEARTAGRAM belts does not constitute a bona fide offering of goods.
Respondent has not provided any tangible evidence of any own right (such as a trademark or trade name) to the name heartagrambelt or to a corresponding name nor that he is commonly known by that name. The mere statement of Respondent that he is known by the name heartagrambelt is - certainly in view of his awareness of Complainantís trademark HEARTAGRAM - insufficient to create a legitimate interest in the sense of Paragraph 4 (b) (iv) under (ii) of the Policy.
In the light of the foregoing, the Panel finds that Respondent has no right or legitimate interest in the domain name at issue.
D. Registered and Used in Bad Faith
Complainant is relying on Paragraph 4 (b) (iv) of the Policy, which provides that sufficient evidence of bad faith may consist of:
"(iv) By using the domain name, you have intentionally intended to attract for commercial gain, Internet users to your website or other on-line locations, by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The Panel finds that Complainant has provided sufficient evidence in this regard. As set out above, Complainant has provided sufficient evidence that Respondent was aware of Complainantís trademark HEARTAGRAM and Complainantís website <heartagram.com> prior to his registration of the domain name at issue. In view of these circumstances (using HEARTAGRAM and "him" as a meta-name for his website; a picture of a t-shirt with Complainantís trademarks HER and the HEARTAGRAM-logo on his website; use of the slogan "A free HIM CD with a buckle order") it is clear to the Panel that Respondent, by registering and using the domain name <heartagrambelt.com>, has created the (incorrect) impression of affiliation or sponsorship with Complainant, thereby creating a likelihood of confusion with Complainantís trademark. The public that is familiar with Complainantís trademark - which is the public most likely to search for these websites - will expect to find under the domain name <heartagrambelt.com> a website belonging to Complainant. The fact that Complainant is using this domain name for his own website will therefore misleadingly divert customers to Respondentís website. In this context it is important to note - contrary to Respondentís assertion - that Respondentís website appears among the first 20 hits in a Google search on the word "heartagram". These facts confirm that Respondent has intentionally used the goodwill of Complainantís trademark to create traffic to his website operating under the domain name at issue. (See also e.g. WIPO case no. D2000-0413 Chanel Inc. v Estco).
The Panel therefore concludes that there is sufficient evidence that Respondentís registration and use of the domain name <heartagrambelt.com> is in bad faith.
On the basis of the foregoing, the Panel decides that Complainant has provided the required evidence to request the transfer of the domain name from Respondent to Complainant. Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel orders that the registration of the domain name <heartagrambelt.com> be transferred to Complainant.
Wolter Wefers Bettink
Date: February 6, 2003