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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

HBH, L.P. v. Honeybake/John Doe

Case No. D2005-1278

 

1. The Parties

The Complainant is HBH, L.P., Norcross, Georgia, United States of America.

The Respondent is Honeybake alias John Doe, General Delivery, Georgetown, Grand Cayman GT, Cayman Islands.

 

2. The Domain Name and Registrar

The disputed domain name <honeybake.com> is registered with DSTR Acquisition IV, LLC dba AddressCreation.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2005. On December 9, 2005, the Center transmitted by email to DSTR Acquisition IV, LLC dba AddressCreation.com a request for registrar verification in connection with the domain name at issue. On December 15, 2005, DSTR Acquisition IV, LLC dba AddressCreation.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 December 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2005.

The Center appointed Edward C. Chiasson Q.C. as the Sole Panelist in this matter on January 24, 2006. The panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Administrative Panel finds that it was properly constituted.

 

4. Factual Background

Complainant

The following information derives from the Complaint.

The following are trademarks, for which the Complainant is the record owner:

HONEY BAKED HAM
U.S. Registration Number: 1,384,504
Registration Issued: February 25, 1986
Goods: Spiral sliced glazed hams (in class 029).

HONEY BAKED HAM and Design
U.S. Registration Number: 1,519,978
Registration Issued: January 10, 1989
Goods: Spiral sliced glazed hams (in class 029).

HONEYBAKED and Design
U.S. Registration Number: 1,553,044
Registration Issued: August 22, 1989
Goods: Poultry and meats, namely, turkey breast, ham, sausage, bacon and spare ribs (in  class 029). Condiments, namely, mustards, horseradish sauce and barbecue sauce (in class 030).

HONEYBAKED and Design
U.S. Registration Number: 1,861,924
Registration Issued: November 8, 1994
Goods: Poultry and meats, namely, turkey and pork, including ham and pork ribs; vegetable salads, namely, three-bean salad and coleslaw, and potato salad (in class 029). Confectioneries, namely, cheesecakes, fruit and nut pies; condiments, namely horseradish sauce, relishes, and mustards, barbecue sauce, and chili sauce; salads, namely, macaroni salad (in class 030).

HONEYBAKED and Design
U.S. Registration Number: 1,883,717
Registration Issued: March 14, 1995
Goods and Services: Poultry and meats, namely, turkey and pork, including ham and pork ribs; vegetable salads, namely, three-bean salad and coleslaw, and soup mixes and potato salad (in class 029). Confectioneries, namely, cheesecakes, fruit and nut pies; condiments, namely, horseradish sauce, relishes, and mustards, barbecue sauce, and chili sauce; salads, namely, macaroni salad (in class 030). Mail order services for prepared foods (in class 042).

THE HONEYBAKED HAM COMPANY EST. 1957 AUTHENTIC SPIRAL SLICED and Design
U.S. Registration Number: 2,026,371
Registration Issued: December 31, 1996

Goods and Services: Paper goods, namely, cups, napkins and plates (in class 016). Clothing, namely, polo shirts, sweatshirts, sweaters and smocks (in class 025). Poultry, namely, chicken and turkey; beef, namely beef ribs and roasts; pork, namely, hams, bacon, pork loins, pork ribs and Canadian bacon; vegetable salads, namely, potato salad, three-bean salad and coleslaw; and soup mixes (in class 029). Confectioneries, namely, cheesecakes and fruit and nut pies; condiments, namely, horseradish sauce, relishes and mustards; sauces, namely, barbecue sauce and chili sauce; macaroni salad; and coffee and tea (in class 030). Soft drinks for consumption on and off the premises (in class 032). Mail order services for prepared foods and restaurant services (in class 042).

THE HONEYBAKED HAM COMPANY and Design
U.S. Registration Number: 2,045,359
Registration Issued: March 18, 1997
Goods and Services: Poultry, namely chicken and turkey; beef, namely beef ribs and roasts; pork, namely ham, bacon, pork loins, pork ribs and Canadian bacon; vegetable salads, namely potato salad, three-bean salad and coleslaw; and soup mixes (in class 029). Confectioneries, namely cheesecakes and fruit and nut pies; condiments, namely horseradish sauce, relishes and mustards; sauces, namely barbecue sauce and chili sauce; macaroni salad; and coffee and tea (in class 030). Mail order services for prepared foods and restaurant services (in class 042).

THE HONEYBAKED HAM COMPANY
U.S. Registration Number: 2,126,500
Registration Issued: January 6, 1998
Goods and Services: Poultry, namely, chicken and turkey; beef, namely, beef ribs and roasts; pork, namely, ham, bacon, pork loins, pork ribs and Canadian bacon; vegetable salads, namely, potato salad, three-bean salad and cote slaw; and soup mixes (in class 029). Confectioneries, namely, cheesecakes and fruit and nut pies; condiments, namely, horseradish sauce, relishes and mustards; sauces, namely, barbecue sauce and chili sauce; macaroni salad; and coffee and tea (in class 030). Mail order services for prepared foods and restaurant services (in class 042).

THE HONEY BAKED HAM COMPANY EST. 1957 and Design
U.S. Registration Number 2,136,466
Registration Issued: February 17, 1998
Goods and Services: Clothing, namely, polo shirts, sweatshirts, sweaters, jackets, smocks and aprons; poultry, namely, chicken and turkey; beef, namely, beef ribs and roasts; pork, namely, hams, bacon, pork loins, pork ribs and Canadian bacon; vegetable salads, namely, potato salad, three-bean salad and coleslaw; and soup mixes (in class 029). Confectioneries, namely, cheesecakes and fruit and nut pies; condiments, namely, horseradish sauce, relishes and mustards; sauces, namely, barbecue sauce and chili sauce; macaroni salad; and coffee and tea (in class 030). Mail order services for prepared foods and restaurant services (in class 042).

THE HONEYBAKED HAM COMPANY EST. 1957 and Design
U.S. Registration Number: 2,150,993
Registration Issued: April 14, 1998
Services: On-line mail order catalog services in the field of processed and prepared foods (in class 35).

THE HONEYBAKED CAFЙ
U.S. Registration Number: 2,524,038
Registration Issued: January 1, 2002
Services: Dine-in and take-out restaurant services (in class 042).

THE HONEYBAKED HAM CO. AND CAFE U.S.
Registration Number: 2,534,573
Registration Issued: January 29, 2002
Goods and Services: Retail store services in the field of processed meats, namely: poultry, namely, chicken and turkey; beef, namely, beef ribs and roast; pork, namely, ham, bacon, pork loins, pork ribs and Canadian bacon; vegetable salads, namely, potato salad, three-bean salad and coleslaw; baked beans; soup mixes; confectioneries, namely, cheesecakes and fruit and nut pies; condiments, namely, horseradish sauce, relishes and mustards; sauces, namely, barbecue sauce and chili sauce; macaroni salad; coffee and tea; and prepared food trays comprised of pork, poultry, beef and vegetable sandwiches; sliced pork, poultry and beef; meat, vegetable, fruit and pasta salads; cheeses; fresh vegetables; fresh fruits; baked beans; pickles; olives; relishes; breads, cookies, cakes and pies; and condiments (in class 035). Restaurant services (in class 042).

THE HONEYBAKED HAM COMPANY EST. 1957 and Design
CTM Registration Number: 000256750
Registration Issued: October 10, 1998
Goods and Services: Poultry, namely chicken and turkey; beef, namely beef ribs and roasts; pork, namely ham, bacon, pork loins, pork ribs and Canadian bacon; vegetable salads, namely potato salad, three-bean salad and coleslaw; and soup mixes (in class 029). Confectioneries, namely cheesecakes and fruit and nut pies; condiments, namely horseradish sauce, relishes and mustards; sauces, namely barbecue sauce and chili sauce; macaroni salad; coffee and tea (in class 030). Restaurant services (in class 042).

The Complainant also has registered the following domain names:

<honeybaked.com> Registered on November 21, 1995

<honeybakedham.com> Registered on December 22, 1996

<honeybakedham.net> Registered on January 30, 1997

<honeybakedhamonline.com> Registered on February 24, 1999

<honeybakedonline.com> Registered on February 25, 1999

<honeybaked.net> Registered on February 25, 1999

<honeybakedhamco.com> Registered on April 14, 2000

<honeybakedham.org> Registered on October 8, 2002

<honeybakedhamcompany.org> Registered on October 8, 2002

(hereinafter referred to as the “Registered Domain Names”).

Each of the registered domain names remains active and in the Complainant’s possession.

The Complainant’s first use of the mark HONEY BAKED HAM, is recorded on the registration certificate as December 15, 1949.

The Complainant and its licensees, together with their predecessors (collectively “The HoneyBaked Ham Companies”), have used the HONEYBAKED Marks in some cases for over fifty years in connection with high quality food products known for their exceptional taste and freshness.

Throughout the United States of America, the HoneyBaked Ham Companies sell approximately $200 million worth of products in connection with the HONEYBAKED Marks each year.

Over the last fifty years, the HoneyBaked Ham Companies have sold hundreds of millions of pounds of products under the HONEYBAKED Marks, generating hundreds of millions of dollars in gross sales.

The HoneyBaked Ham Companies have expended substantial sums advertising, marketing, and promoting products sold in connection with the HONEYBAKED Marks. Millions of people have been exposed to the HONEYBAKED Marks, either through advertising or purchase of the HoneyBaked Ham Companies’ products.

The HoneyBaked Ham companies have sold their products over the Internet since at least as early as 1995. The Complainant registered the domain name <honeybaked.com> on November 21, 1995, <honeybakedham.com> on December 22, 1996, <honeybakedham.net> on January 30, 1997, <honeybakedhamonline.com> on February 24, 1999, <honeybakedonline.com> and <honeybaked.net> on February 25, 1999, <honeybakedhamco.com> on April 14, 2000, and <honeybakedham.org> and <honeybakedhamcompany.org> on October 8, 2002 (see Exhibit D).

The HoneyBaked Ham Companies have used these domain names extensively since the time of registration.

In addition, the HoneyBaked Ham Companies have experienced a tremendous increase in sales conducted over the Internet over the last five years. In 2002, for example, Internet sales grew 20% over sales in 2001.

As a result of the HoneyBaked Ham Companies’ substantial sales, marketing, advertising, and promotional efforts and activities – through catalogs, stores, and the Internet – the consumer public and the trade recognize and associate the HONEYBAKED Marks with the HoneyBaked Ham Companies. Accordingly, the HONEYBAKED Marks have acquired a high degree of public recognition, fame and distinctiveness as a symbol of the source of high quality goods and services offered by the HoneyBaked Ham Companies and embody valuable reputation and goodwill belonging exclusively to the Complainant and the HoneyBaked Ham Companies.

The Respondent registered the subject domain name on or about July 17, 2003, long after the Complainant first began use of the HONEYBAKED Marks in connection with food products and services.

The Respondent uses the subject domain name to resolve to a website that directs visitors to a directory that contains commercial links and triggers pop-up advertisements and the Respondent earns a commission for generating and redirecting Internet traffic on a cost-per-click basis.

The content of the directory website includes: (i) “Sponsored Links” to various web sites offering ham products; (ii) “Popular Categories” links for travel, financial planning, e-commerce, people searches, and real estate; (iii) “Related Categories” links including one entitled “Honey Baked Ham”.

Internet users that click on these links are redirected to other commercial directory web sites containing more links, some of which advertise ham products.

The Respondent does not have any affiliation, association, or connection with the Complainant, or any of its subsidiaries or affiliates and has not been authorized to use the HONEYBAKED Marks.

The Respondent is not known commonly by the name “honeybake” outside of the Respondent’s self-proclaimed designation as “honeybake” in the subject domain name registration contact information.

When the Complainant learned of the Respondent’s use of the subject domain name, the relevant registrar – Address Creation – listed the Respondent’s e-mail address in its WHOIS database as webmaster@honeybake.com.

On October 29, 2004, the Complainant’s attorney sent a demand letter by e-mail to the Respondent at this address. In the letter, the Complainant notified the Respondent of the Complainant’s rights and demanded that the Respondent transfer the subject domain name to the Complainant and stop all infringing acts.

The message was returned as undeliverable on October 30, 2004.

The Complainant’s attorney notified Address Creation, by e-mail, of the inaccuracy in the Respondent’s contact information. Having received no response by November 5, 2005, the Complainant’s attorney further notified Address Creation of the inaccuracy in the Respondent’s contact information by way of correspondence sent through the United States’ mail.

Sometime between October 2004 and February 2005, the Respondent modified its contact information, providing a new e-mail address. On June 12, 2005, the Complainant's attorney sent another demand letter by e-mail to the Respondent at this new address. As of the date of the Complaint, the Complainant had received no response from the Respondent.

Respondent

The Respondent did not participate in this proceeding.

 

5. Parties’ Contentions

A. Complainant

The Complainant relies on its long use and registration of the word “honeybaked” and asserts that the subject domain name is confusingly similar to it because the name differs only by the absence of the letter “d”.

The Complainant contends that the Respondent does not have a legitimate interest in the subject domain name, noting that the Respondent is not known by the word “honeybaked” and has no affiliation with or authorization from the Complainant to use the word. In addition, the Respondent is using the website to which the subject domain name resolves to attract and mislead users.

It is the Complainant’s position, “…Respondent, prior to its adoption and use of the Disputed Domain Name, was aware that Complainant used the HONEYBAKED Marks because of Complainant’s widespread use and advertisement of such designations”.

The Complainant says the Respondent, “…has also wholly failed to identify itself, choosing instead to hide behind the alias “honeybake”. Such conduct is further evidence of registration of the Disputed Domain Name in bad faith”.

B. Respondent

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

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(i) the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that the Respondent has registered or has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names registration to the Complainant who is the owner of the trademark or service mark 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 domain names;

(ii) registration of the domain names 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;

(iii) registration of the domain names primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain names, intentionally attempting 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 website or location or of a product or service on the website or location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

The Complainant relies on previous domain name dispute decisions. While often these are helpful, they are neither controlling nor binding on this Administrative Panel.

A. Identical or Confusingly Similar

It is clear that the Complainant has rights to the word “honeybaked” through registration and through the long and extensive use of the word by the Complainant and its licensees.

The subject domain name differs only by the omission of the letter “d” and the addition of “.com”. The latter is of no significance.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant properly relies on the usual indicia of a lack of legitimate interest: not known by the subject domain name; not authorized to use the Complainant’s mark.

A respondent is not required to participate in a domain name dispute proceeding, but if it were to fail to do so, it would be open to the natural inferences that flow from the not unreasonable factual assertions of a complainant.

Often simple competition is not offensive, but in this case the Respondent is not using the subject domain name to compete with the Complainant, but is using it to draw users to a website for various products sold by others. It is not proper to do so. The use is not legitimate, which, in the circumstances of this case, leads to an inference that the Respondent’s interest in the subject domain name is not legitimate.

The Respondent has done nothing to supplant the inference.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

A finding that a respondent does not have a legitimate interest in a domain name that is confusingly similar to the mark of a complainant does not lead automatically to a conclusion of bad faith, but the facts that gave rise to the finding often are relevant to the bad faith inquiry.

The Complainant’s mark is a specific word that reflects specific products. It was in use long before the subject domain name was registered. The subject domain name resolves to a website that, for the most part, has not relationship with the word “honeybake”. There is no explanation why the word “honeybake” was used in the subject domain name even after the Complainant made its position known to the Respondent.

For its own personal gain, the Respondent is exploiting the notoriety and reputation of the Complainant’s mark. It appears to have hidden behind incorrect contact information and ignored the Complainant’s efforts to resolve the dispute.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii) of the Policy.

 

7. Decision

Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainant has established its case.

The Complainant asks that that the subject domain name <honeybake.com> be transferred to it. The Administrative Panel so orders.


Edward C. Chiasson Q.C.
Sole Panelist

Dated: February 5, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1278.html

 

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