WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hama GmbH & Co. KG v. Duke Imoh / Hewlett
Case No. D2015-1372
1. The Parties
The Complainant is Hama GmbH & Co. KG of Monheim, Germany, represented by Boehmert & Boehmert, Germany.
The Respondent is Duke Imoh / Hewlett of Abia, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <hamagmbh.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 3, 2015. On August 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 2015, 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.
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 the Respondent of the Complaint, and the proceedings commenced on August 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 31, 2015.
The Center appointed Evan D. Brown as the sole panelist in this matter on September 7, 2015. 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 following facts, relevant to the Panel's determination, are set forth in the Complaint and are not disputed by the Respondent.
The Complainant has used the trademark HAMA for more than 70 years, and manufactures more than 18,000 products in the fields of photo, video, audio, multimedia, computer, and telecommunications. The Complainant owns dozens of registrations for its HAMA mark, including International Registration No. 907 610 for the mark HAMA, designating no less than 48 countries around the world.
The disputed domain name was registered on May 24, 2015. The Respondent uses the disputed domain name in connection with a phishing website.
5. Parties' Contentions
In June and July 2015, suppliers to the Complainant notified the Complainant about the suppliers' receipt of "phishing" emails purportedly sent by the Complainant. The emails were written in poorly constructed English and some of them provided a link to a URL that included the disputed domain name. When a recipient of one of those emails clicks on the provided link, he or she is taken to a website that displays the Complainant's HAMA mark and provides the means to log into a system whereby information requested in the phishing emails can be transmitted. According to the Complainant, the Respondent uses the website to try to obtain price and sales conditions from suppliers.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that all three of these elements have been met in this case.
A. Identical or Confusingly Similar
The mere addition of non-significant elements to a domain name comprising a trademark do not sufficiently differentiate the domain name from the registered trademark: "The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark." See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. In this case, the disputed domain name contains the Complainant's trademark HAMA in its entirety, as a dominant element, with the addition of"gmbh" (gesellschaft mit beschramkter Haftung), which does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's well-known HAMA trademark. In fact, the term "gmbh" serves as an additional reference to the Complainant and its legal form, thus increasing the confusing similarity.
Similarly, the addition of the generic Top-Level Domain ("gTLD") ".com" to the disputed domain name typically does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Here, the gTLD ".com" is without legal significance since use of a gTLD is technically required to operate the domain name, and it does not serve to identify the source of the goods or services provided by the registrant of the domain name.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of multiple valid and subsisting trademark registrations for the mark HAMA, as noted above.
Accordingly, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. See Canon U.S.A., Inc. v. Miniatures Town, WIPO Case No. D2014-0948, citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1 (after the complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to the respondent).
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. By failing to respond to the Complaint, the Respondent did not overcome its burden of demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent's favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests ("you" and "your" in the following refers to the particular respondent):
(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 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.
In this case, the sending of phishing emails and the use of the disputed domain name to set up a website for the collection of information cuts against any finding of rights or legitimate interests. Moreover, the Respondent is not known to the Complainant. The Complainant has never authorized nor permitted the Respondent to use its company name HAMA, act in the name of the Complainant, send emails on the Complainant's behalf, or register and use the disputed domain name.
Accordingly, the Respondent, does not have any rights or legitimate interests in regard to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy requires a complainant to establish the domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent's bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent "[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent's] web site 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] web site or location or a product or service on [the respondent's] web site or location."
In this case the Panel finds that the Respondent registered and is using the domain name in bad faith. Establishing a phishing website using a domain name that incorporates the Complainant's mark is a strong example of bad faith under the Policy.
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, <hamagmbh.com> be transferred to the Complainant.
Evan D. Brown
Date: September 21, 2015