WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American City Business Journals, Inc. v. Whois Protection, this company does not own this domain name s.r.o / Hulmiho Ukolen, Poste Restante
Case No. D2018-0186
1. The Parties
The Complainant is American City Business Journals, Inc. of Charlotte, North Carolina, United States of America ("United States"), represented by Sabin Bermant & Gould, LLP, United States.
The Respondent is Whois Protection of Prague, the Czech Republic / Hulmiho Ukolen, Poste Restante of Helsinki, Finland.
2. The Domain Name and Registrar
The disputed domain name <wwwhemmings.com> (the "Domain Name") is registered with Gransy, s.r.o. d/b/a subreg.cz (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 30, 2018. On January 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 5, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 9, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 9, 2018. The Complainant filed an amendment to the Complaint on February 12, 2018, to correct an administrative formality.
The Center verified that the Complaint together with the amendment to the Complaint and 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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 8, 2018.
The Center appointed Jane Seager as the sole panelist in this matter on March 15, 2018. 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
Hemmings Motors News, Inc. (now part of the Complainant), was founded in 1954 and is a publisher of collector car magazines. Its main website is available at "www.hemmings.com" (the corresponding domain name was registered in 1996).
The Complainant has supplied evidence that it owns numerous registered trademarks including the term "hemmings", for example:
- HEMMINGS MOTOR NEWS United States trademark registration No. 1059232, registered on February 15, 1977,
- HEMMINGS MUSCLE MACHINES United States trademark registration No. 2903767, registered on November 16, 2004,
- HEMMINGS CLASSIC CAR United States trademark registration No. 3163096, registered on October 24, 2006,
- HEMMINGS SPORTS&EXOTIC CAR United States trademark registration No. 3159611, registered on October 17, 2006,
all of which significantly predate the registration of the Domain Name.
The Domain Name was registered on August 12, 2015, and at the time the Complaint was filed it was redirecting to various websites, including those of the Complainant's competitors.
5. Parties' Contentions
The Complainant argues that the Domain Name consists of the Complainant's identical trademark HEMMINGS as well as "www" which is generic/descriptive. The Complainant also contends that the Domain Name was purposefully registered for cybersquatting, namely to capture users omitting the dot when typing "www.hemmings.com" into their browser. According to the Complainant, the Domain Name has caused and will cause consumer confusion.
The Complainant further asserts that the Respondent does not have rights or legitimate interests in the Domain Name. The Complainant states that it has never granted the Respondent the right to use or register its trademark, either in connection with a domain name registration or a bona fide offering of goods or services or for any other reason.
In the Complainant's view, the Respondent registered and is using the Domain Name in bad faith. According to the Complainant, the Domain Name was purposefully registered for "typosquatting" and the Registrant used false and misleading registration details to mask its true identity.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove each of the following three elements:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The standard of proof is on the balance of probabilities (Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434).
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.
In addition, paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the Respondent has failed to respond to the Complaint. The Respondent's failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules, see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
Taking the aforementioned provisions into consideration, the Panel finds as follows:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to first consider whether the Complainant has established relevant trademark rights. The Complainant has provided evidence of a number of registered trademarks including the term "hemmings".
The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant's trademarks. The Panel observes that the Domain Name is confusingly similar to the dominant part of Complainant's trademark with the mere addition of "www". The Panel accepts the Complainant's contention that the "www" does nothing to distinguish the Domain Name from the dominant part of the Complainant's trademark. See Forest Laboratories Inc. v. Andrew Miller, WIPO Case No. D2008-1722.
Furthermore, it is widely accepted that the ".com" generic Top-Level Domain ("gTLD") is generally irrelevant for the purpose of assessing identity or confusing similarity between a trademark and a domain name.
The Panel therefore finds that the Domain Name is confusingly similar to the Complainant's trademark. Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:
(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) 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 consumers or to tarnish the trademark or service mark at issue.
Based on the statements and evidence put forward by the Complainant, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name and that, as a result of its default, the Respondent has failed to rebut such a showing.
The Complainant has stated that it has not authorized the Respondent to make any use of its trademark and, furthermore, it is highly unlikely that the Respondent would be "commonly known" by the Domain Name, given the notoriety surrounding the Complainant's trademark.
As evidenced by the Complainant, when the Complainant filed the Complaint the Domain Name was being used to redirect to various websites, including those of the Complainant's competitors. As a result, the Respondent's use of the Domain Name cannot be considered use in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use, because the Respondent is unduly profiting from the Complainant's rights by using the Domain Name (consisting of the Complainant's trademark preceded by "www") to mislead Internet users searching for the Complainant and divert them to other websites instead including those of the Complainant's competitors (see section 2.9 of the WIPO Overview 3.0).
The Panel is also of the view that the Respondent's failure to submit a response is, in the circumstances of this case, also evidence of the Respondent's lack of rights or legitimate interests in the Domain Name. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 ("non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one's own rights").
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name. As such, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, including:
(i) circumstances indicating that the respondent has registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented
out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trademark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online 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 the respondent's website or location.
The evidence put forward by the Complainant shows that the Complainant's registered trademarks including the term "hemmings" predate the Domain Name and have been used extensively. In this regard, it is also significant that the Complainant's predecessor, Hemmings Motor News, Inc., was founded in 1954 and registered its domain name <hemmings.com> in 1996, almost 20 years before the Respondent registered the Domain Name. The Panel therefore finds that the Respondent was aware of the Complainant's rights at the time of registration of the Domain Name, and thus registered it in bad faith seeking to profit from the Complainant's rights.
The Panel is also of the view that the inclusion of the "www" prefix in the Domain Name was a deliberate attempt by the Respondent to take advantage of a common mistake made by Internet users searching for the Complainant's official website at "www.hemmings.com" and thus a strong indication of the Respondent's bad faith at the time of registration. See Schering-Plough Corporation, Schering Corporation, Schering Plough Ltd. v. Stementali Quemistas, WIPO Case No. D2009-0841 (the Panel held that "Because many domain names begin with "www" followed by a period followed by the name of the website, the disputed domain name is calculated to divert Internet traffic of end users seeking to find the website of Complainant, who accidentally omit the period after the "www" prefix. This is a classic case of typosquatting. […] Respondent's registration is intended to disrupt and divert Complainant's business and such registration was undertaken in bad faith").
Moreover, the Panel further finds that the Respondent's use of the Domain Name, which incorporates the Complainant's trademark and the element "www", to point to other websites, including those of the Complainant's competitors, is, under the circumstances, evidence of bad faith. The Panel thus finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website, in accordance with paragraph 4(b)(iv) of the Policy.
Finally, the Panel finds that the Respondent's use of a privacy service to mask its details in the WhoIs strongly indicates the Respondent's bad faith. For instance, this was clearly intended to frustrate the enforcement of the Policy and so underlines the Respondent's bad faith. Furthermore, the underlying WhoIs information is clearly false (for example the postcode is listed as "12345") which also illustrates the Respondent's bad faith.
The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith, in accordance with paragraph 4(a)(iii) of 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 Domain Name <wwwhemmings.com> be transferred to the Complainant.
Date: March 28, 2018