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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rolf C. Hagen (USA) Corp. v. Domain Administrator
Case No. D2003-0855
1. The Parties
The Complainant is Rolf C. Hagen (USA) Corp., a Massachusetts company with headquarters in Mansfield, Massachusetts, United States of America. The Complainant is represented by Michael A. Albert, Esq., of Wolf, Greenfield & Sacks, P.C. in Boston, Massachusetts, United States of America.
The Respondent is listed in the WHOIS database as "Domain Administrator," with an address at Huntington Beach, California, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <habitrail.com>. The Registrar of the Domain Name is BulkRegisterSM, whose headquarters is located in Baltimore, Maryland, United States of America.
3. Procedural History
The Complaint was filed with WIPO Arbitration and Mediation Center ("the Center") on October 28, 2003.
Notification of the complaint and commencement of the administrative proceeding were given to the Respondent by notice dated November 3, 2003, and sent by e-mail. The hard copy of the document was also transmitted by courier. The Panelist has seen the courier receipt, which indicates that the hard copy was delivered and signed for at a reception or front desk at Respondent’s address on November 5, 2003, but then the package appears to have been returned to the shipper on November 18, 2003. The Panelist is satisfied that the complaint satisfied the Rules and the Supplemental Rules with regard to notification. No response was received by the expiry of the twenty-day deadline on November 23, 2003. Notification of the Respondent’s default was given on November 26, 2003, to Respondent by e-mail, by courier and by post at the addresses given in the complaint. The Panel is therefore satisfied that the notification of the Respondent’s default was effectively given.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers, or extensions of deadlines. The Panel has not found it necessary to request any further information from the parties.
4. Factual Background
The Complainant is Rolf C. Hagen (USA) Corp. ("Hagen"). The Complainant has owned federally registered trademarks for HABITRAIL since January 1, 1974, and first used the mark on October 31, 1972.
The marks are used in connection with animal cages and accessory products. Complainant annually invests over $500,000 worldwide in advertising and promotion of the HABITRAIL mark. In each of the past several years, Hagen has enjoyed over $10,000,000 in annual sales worldwide under and in conjunction with the HABITRAIL trademark. Hagen currently sells at least 90 different animal cage and accessory products under the HABITRAIL mark.
5. Parties’ Contentions
The Complainant contends:
(i) The domain name registered by Respondent is either identical or confusingly similar to the trademarks in which the Complainant has rights. Complainant contends that, absent the top level domain ".com", the domain name <habitrail.com> is identical to Complainant’s famous registered trademark.
(ii) There is no evidence that the Respondent has any rights or legitimate interests in the domain name. The Complainant contents that Respondent: (a) not licensed by Complainant to use the mark HABITRAIL; (b) does not own any trademarks containing the term HABITRAIL; (c) has not been commonly known by the mark HABITRAIL or by habitrail.com (as an individual, business or other organization); (d) has not made use of <habitrail.com>, nor has Respondent made demonstrable preparations to use <habitrail.com>, in connection with any bona fide offering of goods or services; and (e) is not making any legitimate non-commercial or fair use of <habitrail.com>. Complainant asserts that Respondent’s only use of <habitrail.com> is to provide a pop-up advertisement while re-directing users to Respondent’s "www.coolhits.com" web site, though which it reaps "click-through" profits from hyperlinks to topics such as online gambling and to purported "search" results on matters such as "Romance" and "Viagra".
(iii) The Respondent has registered and used the domain name <habitrail.com> in bad faith. Complainant contends that such bad faith registration and use of <habitrail.com> is reflected in: (a) Respondent’s deliberate attempt to attract Internet users to its own web site, "www.coolhits.com", for commercial gain, by creating a likelihood of confusion with Complainant’s famous registered trademark HABITRAIL; (b) its knowledge of Complainant’s trademark rights at the time it registered <habitrail.com>; (c) its incorporation of Complainant’s famous registered trademark into <habitrail.com> in its entirety; and (d) its decision to provide the Registrar with false contact information.
In the absence of a response from the Respondent, there are, of course, no submissions to counter the Complainant’s submissions. The Panel, therefore, has no alternative but to determine the case on the basis of the Complainant’s submissions only and to determine whether the Complainant has established its complaint.
6. Discussion and Findings
(i) The domain name is identical or confusingly similar
The domain name in dispute, <habitrail.com>, is identical or virtually identical to and confusingly similar to the Complainant’s federally registered trademark HABITRAIL. Annex E of the Complaint includes printouts from the United States Patent and Trademark Office’s Trademark Application and Registration Retrieval ("TARR") database, showing two United States trademark registrations for HABITRAIL. The Panel has verified that the information contained within these TARR printouts remains current.
Thus, the Panel finds for the Complainant on the first element, that Respondent’s domain names are identical or confusingly similar to the service marks in which the Complainant has rights.
(ii) The Respondent has no rights to or legitimate interests in the domain name in question.
Paragraph 4(c) of the Uniform Domain Name Dispute Resolution Policy (the "Policy") provides a non-exclusive list of circumstances that can demonstrate a Respondent’s rights to or a legitimate interest in a domain name.
Policy Paragraph 4(c)(i) provides that respondent may demonstrate rights and interest in a domain name by, before any notice of the dispute, using or making 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.
Respondent has not alleged to have any rights or legitimate interests in the domain name <habitrail.com>. Complainant alleges that, although at the time of the filing of the Complaint, Respondent was using the domain name at issue to provide a pop-up advertisement entitled "HIT THE BEAR AND WIN", that such use does not constitute a right or legitimate interests. By associating complainant’s mark, in the form of the domain name, with a pop-up advertisement relating to hitting a bear, Respondent was merely creating confusion with complainant’s mark. Furthermore, the pop-up advertisement merely sought to re-direct users to Respondent’s "www.coolhits.com" web site, through which it reaps "click-through" profits from hyperlinks to topics such as online gambling, and to purported "search" results such as "Romance" and "Viagra".
The Panel’s investigation of the domain name <habitrail.com>, at the time of the issuance of this Decision, reveals that Respondent has changed its use subsequent to the filing of the Complaint. The <habitrail.com> domain name presently purports to offer access to a product or service named the "Habitrail Music Tracker", which appears to relate to the "sharing" of computer files. Respondent presently claims in a notice at the bottom of the "www.habitrail.com" web site that "Habitrail Music Tracker & HABITRAIL.COM are both trademarked TM". None of the hyperlinks on the "www.habitrail.com" web site, however, currently provide any information about any "Habitrail Music Tracker" product or service. Instead, all hyperlinks on the "www.habitrail.com" web site (with the exception of the "Contact Us" and "Technical Support" links), currently are to the link http://www.regnow.com/softsell/visitor.cgi?affiliate=24226&action=site&vendor=7846. Visitors to <habitrail.com> that click on these <regnow.com> links are then forwarded to a web site for the "BearShare Pro" fee-based file-sharing program and service, "http://www.bearshare.com/pro.htm". The organization that provides these forwarding services, RegNow, offers on its "www.regnow.com" web site an "Affiliate Network" that provides web site operators the opportunity to "[s]ell your favorite RegNow products right from your own web site" and "earn a portion of each sale that your web site receives". The Panel concludes that Respondent is being compensated for or otherwise benefits from its re-direction of visitors to the "www.habitrail.com" web site to the "www.regnow.com" web site and then to web sites such as "www.bearshare.com".
Several previous panels have held that using a web site with a name that is
confusingly similar to the trademark of another for re-directing Internet web
traffic is not a bona fide offering of goods or services, (see The Planetary
Society v. Salvador Rosillo Domainsforlife.com, WIPO
Case No. D2001-1228; Van Gogh Museum Enterprises BV and Stichting Van
Gogh Museum v. M. Ohannessian, WIPO Case
No. D2001-0879). The Panel, therefore finds that the Respondent has not,
both before and after the filing of the Complaint, used the domain names in
connection with a bona fide offering of goods or services.
There is no evidence that Respondent has been commonly known by the domain name in accordance with Policy Paragraph 4(c)(ii).
Finally, there is no evidence that Respondent is, in accordance with Policy Paragraph 4(c)(iii), 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 at issue. Instead, Respondent appears to have registered the domain name in order to create confusion with regard to Complainant’s mark and then divert consumers to other web sites for Respondent’s commercial advantage.
It is clear to the Panel that the Respondent has no rights or legitimate interests in the domain name, other than to trade off of the goodwill of the Complainant. The Complainant therefore succeeds in proving the second element.
(iii) The domain name was registered and is being used in bad faith.
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that, in particular, but without limitation, demonstrate that the Respondent registered and used the disputed domain name in bad faith.
Respondent has demonstrated the conduct of Policy Paragraph 4(b)(iv), by registering
and using the domain name with the intent to attract, for commercial gain, Internet
users to its web sites by creating confusion as to source, sponsorship, affiliation,
or endorsement of its web site. Many Internet users would assume that the Complainant
had endorsed, sponsored or authorized the domain name <habitrail.com>,
which completely includes the Complainant's famous mark. By clicking on almost
every one of the hyperlinks located at the domain name in question, these users
would then be re-directed to other sites for Respondent’s commercial gain. Other
panel decisions have specifically found such diversion and re-direction to be
bad faith activity. (See Cox Holdings, Inc. v. Private, WIPO
Case No. D2001-1446).
The Panel therefore concludes that the Complainant has succeeded in proving that the domain name has been registered and is being used in bad faith.
It follows that the Complainant has proven each of the three elements paragraph 4(a) of the Rules, and that accordingly, the Complainant has succeeded in its complaint.
Pursuant to paragraph 4(i) of the Uniform Domain Name Dispute Resolution Policy, the Administrative Panel requires that registration of the domain name <habitrail.com> be transferred to Complainant.
Timothy D. Casey
Dated: December 30, 2003