|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
Hickory Farms, Inc. v. 1550507 Ontario
Inc.
Claim Number: FA0406000282454
PARTIES
Complainant
is Hickory Farms, Inc. (“Complainant”),
represented by Paul D. McGrady of Ladas & Parry,
224 South Michigan Avenue, Chicago, IL 60604.
Respondent is 1550507 Ontario
Inc. (“Respondent”), represented by Glen
A. Bloom of Osler, Hoskin & Harcourt LLP,
Suite 1500, 50 O'Connor
Street, Ottawa, Ontario, Canada, K1P 6L2.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <hickory-farm.com>,
registered with Namescout.com.
PANEL
The
undersigned certifies that he has acted independently and impartially and, to
the best of his knowledge, has no known conflict
in serving as Panelist in this
proceeding.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 1, 2004; the Forum received
a hard copy of the Complaint
on June 2, 2004.
On
June 2, 2004, Namescout.com confirmed by e-mail to the Forum that the domain
name <hickory-farm.com> is
registered with Namescout.com and that the Respondent is the current registrant
of the name. Namescout.com has verified
that Respondent is bound by the Namescout.com registration agreement and has
thereby agreed to resolve
domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
June 7, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 28,
2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail,
post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts,
and to postmaster@hickory-farm.com by e-mail.
A
timely Response was received and determined to be complete on June 28, 2004.
On
July 1, 2004, a timely Additional Submission was received from Complainant.
On July 6, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The <hickory-farm.com> domain name is
confusingly similar to the HICKORY FARM mark; (2) Respondent has no rights nor
legitimate interests in the domain
name; and (3) Respondent has registered and
used the domain name in bad faith.
B.
Respondent
Respondent
asserts that the domain name registration expired on May 26, 2004 and has been
cancelled by Respondent’s registrar.
Respondent contends that pursuant to ICANN Rule 17(b) the proceeding
should not go forward in light of the domain name cancellation. Respondent fails to address the merits of
the Complaint.
C.
Additional Submissions
Complainant
contends that the expiration date for the disputed domain name registration is
May 26, 2005. The WHOIS information at
the time the proceeding was filed and the confirmation information provided by
the registrar show that the
registration does not expire until May 26, 2005,
and not on May 26, 2004 as Respondent asserts.
Complainant further alleges that subsequent to the confirmation of the
expiration date, Respondent likely changed the expiration date
to 2004 to avoid
an adverse decision. Furthermore, even
if Respondent has allowed the registration to expire, Complainant asserts that
Respondent still retains sufficient
legal right to make it subject to this
proceeding. Complainant contends that
the domain name registration remains in the grace period until July 26, 2004,
during which time only Respondent
can redeem it. Thus, Complainant argues that the Panel may find that it is in
the parties’ interest to proceed with the case to prevent any prospective
disputes, because the domain name will be released for purchase by the public
upon termination of the grace period if a decision
is not rendered by that
time.
Hickory Farms, Inc. (“Hickory Farms”) is the owner of
numerous registrations for trademarks incorporating the element HICKORY
FARMS. Complainant is a premier
specialty food gift retailer.
Complainant markets its goods and services under the HICKORY FARMS marks
around the world. Complainant gives
people a taste of old-fashioned quality and value in a country store atmosphere
offering a line of specialty foods
including cheeses, meats, crackers, candies,
gift packs and other products.
Complainant filed applications for registrations for the
marks containing the element HICKORY FARMS beginning in 1986 in the United
States. On May 26, 2003, well after
Complainant began use of the HICKORY FARMS mark on a global scale, and the
filing of the U.S. registrations
of the HICKORY FARMS mark by Complainant,
Respondent registered the domain name <hickory-farm.com>.
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint
on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of
law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that
a domain name should be
cancelled or transferred:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain
name has been registered and is being used in bad faith.
Procedural Issue
The
WHOIS information at the time the proceeding was filed and the confirmation
information provided by the registrar show that the
registration does not
expire until May 26, 2005, and not on May 26, 2004, as Respondent asserts. Even if Respondent has allowed the
registration to expire, Respondent still retains sufficient legal right in the
domain name to subject
it to this proceeding.
The domain name registration remains in the grace period until July 26,
2004, during which time only Respondent can redeem it. Thus, the Panel finds that it is in the
parties’ interest to proceed with the case to prevent any prospective disputes,
because the
domain name will be released for purchase by the public upon
termination of the grace period if a decision is not rendered by that
time. See Gassan Diamonds B.V. v. Van Etten Bernardus Jacobus, AF-0149b
(eResolution May 25, 2000) (finding that despite a willingness to transfer by
Respondent, any lack of settlement or actual
transfer compels the Panel to
issue a decision to prevent recurring disputes); see also Vantico AG v.
Bruno, D2003-0404 (WIPO Aug. 13, 2003) (finding that if the subject domain
name has been expired for over two months, the respondent should
no longer have
passive legitimization since it no longer has any rights in the domain
name).
Complainant has established rights in the HICKORY
FARMS mark by registering it with the United States Patent and Trademark Office
on October 14, 1986 (Reg. No. 1,413,521).
Complainant also owns numerous other registrations for trademarks
associated with the HICKORY FARMS mark.
See Men’s
Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently
distinctive and
have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
Respondent’s
<hickory-farm.com> domain name is confusingly similar to
Complainant’s HICKORY FARMS mark because the domain name fully incorporates the
mark, deviating
only by the addition of a hyphen and the deletion of the letter
“s.” The addition of a hyphen and the
deletion of a letter are not sufficient to distinguish the disputed domain name
from Complainant’s
mark. See InfoSpace.com v. Ofer, D2000-0075 (WIPO
Apr. 27, 2000) (“The domain name ‘info-space.com’ is identical to Complainant’s
INFOSPACE trademark. The addition
of a hyphen and .com are not distinguishing
features”); see also Reuters Ltd.
v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a
domain name which differs by only one letter from a trademark has a greater
tendency
to be confusingly similar to the trademark where the trademark is
highly distinctive); see also Victoria's
Secret v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000)
(finding the domain name <victoriasecret.com> to be confusingly similar
to Complainant’s
trademark, VICTORIA’S SECRET).
The
Panel finds that Policy ¶ 4(a)(i) has been established.
Once Complainant makes a prima facie
case that Respondent has no rights or legitimate interests in respect to the
domain name, the burden shifts to Respondent to establish
rights or legitimate
interests in the domain name. See
Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding
Respondent's conduct purporting to sell the domain name suggests it has no
legitimate use);
see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests with
respect to the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate
interests in the domain name). Respondent has submitted no evidence of
rights or legitimate interests in the domain name.
Respondent is
not commonly known by the <hickory-farm.com> domain name, and
Complainant did not authorize Respondent to use its HICKORY FARMS mark. Therefore, Respondent lacks rights and
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish
Country Store, FA 96209
(Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights
in a domain name when Respondent is not known
by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark
and never applied for a
license or permission from Complainant to use the trademarked name).
Furthermore, the <hickory-farm.com>
domain name resolves to a website featuring a search engine and links to
websites promoting gambling and a variety of goods and services,
as well as
links to Complainant’s website and to websites promoting goods and services of
Complainant’s competitors. Respondent’s
use of a domain name confusingly similar to Complainant’s mark to divert
Internet users to an online directory and search
engine, which includes links
to Complainant’s competitors, does not constitute a bona fide offering of goods
or services pursuant
to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See
Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17,
2003) (finding that Respondent’s diversionary use of Complainant’s mark to
attract Internet
users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of goods
or
services nor a legitimate noncommercial or fair use of the disputed domain
names); see also Toronto-Dominion Bank v.
Karpachev, 188 F.Supp.2d
110, 114 (D.
Mass. 2002) (finding that, because Respondent's sole purpose in selecting the
domain names was to cause confusion with Complainant's
website and marks, its
use of the names was not in connection with the offering of goods or services
or any other fair use); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31,
2002) (finding that Respondent’s diversionary use of Complainant’s marks to
send Internet users
to a website which displayed a series of links, some of
which linked to competitors of Complainant, was not a bona fide offering
of
goods or services).
The
Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent
has received financial benefits from its use of the <hickory-farm.com>
domain name by creating a likelihood of confusion with Complainant’s mark. Therefore, Respondent registered and used
the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding bad faith where Respondent attracted users to a website
sponsored by Respondent and created
confusion with Complainant’s mark as to the
source, sponsorship, or affiliation of that website); see also Entrepreneur
Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to
confuse consumers is not required for a finding of trademark infringement,
intent to deceive
is strong evidence of a likelihood of confusion"); see
also Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain
name in question is obviously connected with Complainant’s
well-known marks,
thus creating a likelihood of confusion strictly for commercial gain).
Furthermore,
Respondent registered the <hickory-farm.com> domain name with
actual or constructive knowledge of Complainant’s use of the HICKORY FARMS
mark, because Respondent had the choice
to use any domain name for his website
but chose to use a domain name confusingly similar to Complainant’s mark. Respondent’s registration of a domain name
that incorporates Complainant’s well-known registered mark, deviating only by
the addition
of a hyphen and the omission of the letter “s,” suggests that
Respondent knew of Complainant’s rights in the HICKORY FARMS mark. Thus, Respondent chose the disputed domain
name based on the distinctive and well-known qualities of Complainant’s mark,
which is
evidence bad faith registration.
See Samsonite Corp. v.
Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that
evidence of bad faith includes actual or constructive knowledge of a commonly
known mark at the time of registration); see also Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a
legal presumption of bad faith, when Respondent reasonably should
have been
aware of Complainant’s trademarks, actually or constructively”).
Accordingly,
the Panel finds that Complainant has established Policy ¶ 4(a)(iii).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hickory-farm.com>
domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: July 12, 2004
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/918.html