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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hemmings Motor News Inc. v. Paul Walters

Case No. D2012-1809

1. The Parties

The Complainant is Hemmings Motor News Inc. of Vermont, United States of America, represented by Sabin Bermant & Gould, LLP, United States of America.

The Respondent is Paul Walters, with address in Lilburn, US, Italy for the disputed domain name <hemmings-payments.com>, and in Lilburn, United States of America for the disputed domain name <hemmings-classifieds.com>.

2. The Domain Names and Registrars

The disputed domain name <hemmings-classifieds.com> is registered with Click Registrar, Inc. d/b/a publicdomainregistry.com.

The disputed domain name <hemmings-payments.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2012. On September 11, 2012, the Center transmitted by email to the Registrars Tucows Inc. and Click Registrar, Inc. d/b/a publicdomainregistry.com requests for registrar verification in connection with the disputed domain names. On September 11 and 12, 2012, the Registrars Tucows Inc. and Click Registrar, Inc. d/b/a publicdomainregistry.com respectively transmitted by email to the Center their verification response confirming that the Respondent is listed as the registrant and providing the contact details in each case. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 19, 2012.

The Center verified that the Complaint together with the amended 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 20, 2012. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2012.

The Center appointed Brigitte Joppich as the sole panelist in this matter on October 17, 2012. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is a publishing company which was founded in 1954. Today, it publishes a series of motor magazines, namely “Hemmings Motor News”, “Hemmings Muscle Machines”, “Hemmings Classic Car” and “Hemmings Sports & Exotic Car”, and has more than 175,000 subscribers. Since 1998, the Complainant has also provided information on the Internet at “www.hemmings.com”, including searchable car-for-sale ads, car club listings, dealer showrooms and forums.

The Complainant is registered owner of several US trademark registrations, namely trademark registration No. 1059232 HEMMINGS MOTOR NEWS, registered on February 15, 1977 and claiming first use in January 1954, trademark registration no. 2903767 HEMMINGS MUSCLE MACHINES, registered on November 16, 2004, trademark registration no. 3163096 HEMMINGS CLASSIC CAR, registered on October 24, 2006, and trademark registration no. 3159611 HEMMINGS SPORTS & EXOTIC CAR, registered on October 17, 2006 (the HEMMINGS Marks).

The disputed domain names were registered on August 5, 2012 (<hemmings-payments.com>) and August 9, 2012 (<hemmings-classifieds.com>) and at the date of the Complaint were used to link to websites that copied the look and feel of the Complainant’s website at “www.hemmings.com” and were used to carry out phishing attacks.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

(1) The Complainant states that the disputed domain names are confusingly similar to the HEMMINGS Marks as they consists of the Complainant’s trademark HEMMINGS and the generic words “payments” and “classifieds”, respectively.

(2) The Respondent has no rights or legitimate interests in respect of the disputed domain names, as the Complainant never granted the Respondent the right to use or register the HEMMINGS mark, either in connection with a domain name registration or a bona fide offering of goods and services or for any other reason, and as the Respondent had no legitimate use or right to use the HEMMINGS brand prior to the registration of the disputed domain names.

(3) The Complainant contends that the disputed domain names were registered and are being used in bad faith. The Complainant states that the Respondent registered the disputed domain names primarily for use in connection with phishing attacks on the Complainant’s customers, that the Respondent registered the disputed domain names in order to purposefully confuse and defraud consumers, and that the Respondent registered the disputed domain names using intentionally false and misleading registration and contact information.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the disputed domain names are identical or confusingly similar to the Complainant’s trademark; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain names consist of the term “hemmings”, which is included in the HEMMINGS Marks, and are confusingly similar to such trademarks.

Firstly, the fact, that the Complainant’s Marks contain additional elements, namely MOTOR NEWS, MUSCLE MACHINES, CLASSIC CAR, and SPORTS & EXOTIC CAR, respectively, does not hinder a finding of confusing similarity. With regard to the trademarks at issue, the Panel finds that they are all dominated by “Hemmings” as the above mentioned additional elements are merely generic. It is well established that the similarity between a trademark and a disputed domain name is not eliminated only by the fact that the trademark includes generic elements which are not included in the disputed domain name (cf. Corcom, Inc. v. Jazette Enterprises Limited, WIPO Case No. D2007-1218: omission of the word “sports”; Shell Vacations LLC, Shell Vacations Club, L.P. v. Pluto Domain Services Private Limited/PrivacyProtect.org, WIPO Case No. D2008-1713: omission of the word “club”; Stanworth Development Limited v. Michael Rand, WIPO Case No. D2008-0158: omission of the word “online”).

Secondly, the fact that the disputed domain names include the generic terms “payments” and “classifieds”, which are not included in the HEMMINGS Marks, does not hinder a finding of confusing similarity under the Policy either. It is also established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words, such as “payments” or “classifieds” (cf. Comerica Incorporated v. Comerica Merchant Services, WIPO Case No. D2012-1678; The Royal Bank of Scotland Group plc v. rbspayments, NAF Claim No. 0728805; OLX, Inc. v. Y. K. P., WIPO Case No. D2011-1491; Denver Newspaper Agency v. MediaNews Group c/o Host Master, NAF Claim No. 1294673).

Finally, the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between a complainant’s trademark and a disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:

(i) before any notice to the respondent of the dispute, the use by the respondent 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) has 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 customers or to tarnish the trademark or service mark at issue.

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the domain name will then shift to the respondent.

The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.

The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain names.

Based on the evidence before the Panel, the Respondent’s use of the disputed domain names was not bona fide under the Policy. The Respondent used the disputed domain names in connection with phishing activities. Such use does not constitute rights or legitimate interests under paragraph 4(c)(i) of the Policy.

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain names under paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, 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 the respondent’s website or location or of a product or service on its website or location.

The Panel is satisfied that the Respondent registered the disputed domain names with full knowledge of the Complainant and thus in bad faith under paragraph 4(a)(iii) of the Policy. The name “Hemmings” is highly distinctive and has been used by the Complainant in connection with its publications for many decades. Given that the Respondent registered the disputed domain names to use them in connection with websites that copied the look and feel of the Complainant’s website at “www.hemmings.com” and which were used to carry out phishing attacks, it is almost inconceivable that the Respondent registered the disputed domain names without knowledge of the Complainant.

As to bad faith use, the Panel finds that the disputed domain names were used by the Respondent in an intentional attempt to benefit from the goodwill of the Complainant’s trademark for financial gain by creating a slavish copy of the Complainant’s website with the likely purpose of collecting the data of people reaching such website (so-called “phishing”, cf. Confédération Nationale du Crédit Mutuel v. Nicolas Pete, WIPO Case No. DBZ2009-0001; Banca Intesa S.p.A. v. Moshe Tal, WIPO Case No. D2006-0228; Grupo Financiero Inbursa, S.A. de C.V. v. inbuirsa, WIPO Case No. D2006-0614; Australia and New Zealand Banking Group Limited v. Bashar Ltd, WIPO Case No. D2007-0031; Confédération Nationale du Crédit Mutuel and Crédit Industriel et Commercial S.A. v. Trabaja Jayam, Zeb Fi Tarmatek, WIPO Case No. DLC2009-0002).

Therefore, the Respondent has also been using the disputed domain names in bad faith and the Complainant has thus satisfied the requirements of paragraph 4(a)(iii) of the Policy as well.

7. Decision

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 names <hemmings-classifieds.com> and <hemmings-payments.com> be transferred to the Complainant.

Brigitte Joppich
Sole Panelist
Date: October 29, 2012

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