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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Hartsfield Area Transportation Management Association, Inc. v. Max Davidovich

Case No. D2006-0743

 

1. The Parties

The Complainant is Hartsfield Area Transportation Management Association, Inc. of Atlanta, Georgia, United States of America, represented by Powell Goldstein, LLP, United States of America.

The Respondent is Max Davidovich of Kiev, Ukraine.

 

2. The Domain Name and Registrar

The disputed domain name <hatmaconnector.org> is registered with Register.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2006. On June 14, 2006, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On June 16, 2006, Register.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 June 16, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2006.

The Center appointed Ian Blackshaw as the sole panelist in this matter on July17, 2005. 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 Complainant is an organization based in Atlanta, Georgia, United States of America, which began operating in September 1999. The Complainant provides and assists with transportation services and facilities for its member employers in the area surrounding Hartsfield-Jackson Atlanta International Airport in the greater metropolitan area of Atlanta, Georgia. The Complainant has continuously used the HATMA trade name since March 2002, the HATMA name has become synonymous in the metro Atlanta area for transportation services provided in the Hartsfield-Jackson Airport area, and the Complainant consequently holds common law trademark and service mark rights to the HATMA name. The Complainant owns and has been operating the “www.hatma.org” and “www.hatma.com” websites since 2001. The Panel has been provided with evidence in support of these statements in the form of an Affidavit of Cheryle J. DeDios, Executive Director of the Complainant; copies of the above-mentioned websites; and printouts of the Whois database showing that the Complainant owns the rights to these domain names.

In February 2004, the Complainant registered the domain name <hatmaconnector.org> and began operating the website “www.hatmaconnector.org”, which was a website devoted to the Complainant’s HATMA Connector newsletter. Until recently, the “www.hatma.org” and “www.hatma.com” websites linked to this website. The “www.hatmaconnector.org” website describes the nature of the Complainant’s business and services, putting the reader on clear notice that HATMA is a trade name used by the Complainant. It also contains a notice of copyright for the materials displayed and posted on the website.

The Complainant did not receive 2006 renewal notices for the <hatmaconnector.org> domain name. As a result, the Complainant did not renew or obtain the <hatmaconnector.org> domain name and the Complainant’s right to operate and control the same expired in early 2006.

Shortly after the Complainant’s rights to the <hatmaconnector.org> domain name lapsed in February 2006, the Respondent acquired and registered it with Register.com as the domain registrar. Evidence of this has been provided to the Panel. As shown from the “www.hatmaconnector.com” website at <hatmaconnector.org> domain name as of May 19, 2006, a copy of which has been provided to the Panel, the Respondent added links to pornography and gambling websites to the “www.hatmaconnector.org” website, but otherwise kept the material identical to the website previously operated by the Complainant, while the Complainant controlled the domain name. Copies of the other, unchanged, pages of the website as of May 19, 2006, have also been provided to the Panel. This has caused the Complainant’s customers to call the Complainant to complain.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights,

(The Policy, paragraph 4(a)(i), the Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The disputed domain name unlawfully incorporates the HATMA common law trademark and service mark, making the Respondent’s domain name confusingly similar to the Complainant’s HATMA mark. This confusion is further fostered by the Respondent because the disputed domain name holds itself out as being owned and operated by HATMA. The website does not advertise any business of the Respondent, but rather contains information about the Complainant’s business. The only difference between the Complainant’s previously registered domain name <hatmaconnector.org> and that of the Respondent is that the Respondent has added links to pornography and gambling sites.

A2. The Respondent has no rights or legitimate interests in respect of the domain name;

(The Policy, paragraph 4(a)(ii), the Rules, paragraph 3(b)(ix)(2))

The Respondent has no apparent rights or legitimate interests in using the disputed domain name other than to use it to refer Internet users to pornography and gambling sites. There is no evidence that the Respondent operates any business or offers any goods or services that use, invoke or are related to the HATMA mark; that the Respondent is or has been commonly known as the disputed domain name; or that the Respondent is in any way connected with the domain name. The Respondent is not making legitimate non-commercial or a fair use of the mark such that the Respondent is commenting, through his website, on the Complainant’s organization or the services it provides. The Respondent is not connected with the Complainant; nor is the Respondent a competitor of the Complainant; nor is the Respondent known to be providing transportation services in the metro-Atlanta area as his website suggests.

A search of the “www.google.com” website, a copy of which has been provided to the Panel, lists the Complainant’s organization as the first three (3) search returns. The <hatmaconnector.org> site is listed as the 6th response, but it links to pages which remain as when the Complainant owned the disputed domain name. The Respondent does not have any entity listed (other than <hatmaconnector.org>) that advertises or suggests that the Respondent is in any way linked to a product of the Complainant. In fact, the Respondent offers no goods or services of his own at all on the website, but rather continues to advertise the Complainant’s services, while adding links to gambling and pornography websites. As such, the Respondent is clearly trying to mislead and divert consumers to these gambling and pornography websites by making it appear that the Complainant endorses or approves of such websites, with the result that the Complainant’s reputation is being damaged.

A3. The domain name is registered and being used in bad faith.

(The Policy, paragraphs 4(a)(iii), 4(b); the Rules, paragraph 3(b)(ix)(3))

The Respondent was clearly on notice when he purchased and began operating the disputed domain name that the Complainant had been using HATMA and HATMA Connector tradenames in the marketplace - each page which the Respondent appropriated has a “Copyright” notice that the contents of the website are owned by the Complainant. Despite this notice, the Respondent simply copied the Complainant’s website and added his own links to pornography and gambling websites and passed the domain name off as the Complainant’s so that the Respondent could gain hits by Internet users searching for the Complainant’s services or the HATMA Connector newsletter.

The Respondent has no apparent legitimate business or commercial connection to the HATMA or HATMA Connector name, and is using the disputed domain name to parrot the website as it was being run by the Complainant, when the Complainant operated the website, except that the Respondent has added scores of links to gambling and pornography websites. Given these facts, it is obvious that the Respondent is intentionally attempting to piggy-back on the Complainant’s good will and reputation in the community and on the Internet to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. See generally Six Continents Hotels v. Seweryn Nowak, WIPO Case No. D2003-0022 (“whatever the motivation of Respondent, the diversion of domain names to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”; “it is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques”).

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings.

 

6. Discussion and Findings

To qualify for transfer of the disputed domain names, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

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

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

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the 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.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the complaint; and (b) if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondent failed to file a response, the Panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the complainant’s favor solely based on the respondent’s default see Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140. The Panel must decide whether the complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

In accordance with prior UDRP decisions, where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See, for example, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

In the present case, the Respondent incorporates the Complainant’s trade name and service mark HATMA; and the addition of the word ‘connector’ is purely descriptive and does not serve to distinguish the Respondent’s use of the Complainant’s mark HATMA. See F. Hoffman-La Roche AG v. DNS Administrator/Turvill Consultants Ltd-Rd, WIPO Case No. D2006-0047, in which the Panel found that “….the addition of the suffixes “information”, “purchase” and “dosage” are descriptive and add no distinctiveness or source of origin elements whatsoever to the domain names at issue, which essentially incorporate the Complainant’s well-known trademark.”

In any case, the use of the descriptor ‘connector’, which refers to the Complainant’s newsletter HATMA Connector, which describes the Complainant’s business and the services the Complainant provides, with which the Respondent has no connection whatever, is misleading and causes confusion in the market place.

Likewise, the addition of the suffix “org”, which is a generic top-level domain name(gTLD), is also irrelevant, for trademark purposes, and does not, therefore, serve to distinguish the disputed domain name from the trademark of the Complainant. See on this general principle, Pomellato S.p.A v. Tonetti, WIPO Case No. D2000-0493, in which the Panel found that the domain name <pomellato.com> is identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO, is not relevant. And Blue Sky Software Corp. v. Digital Sierra Inc., WIPO Case No. D2000-0165, in which the Panel held that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the “addition of the suffix .com is not a distinguishing difference”. The same principle and rationale also apply to the addition of the suffix ‘.org’.

In view of all this, the Panel finds that the domain name registered by the Respondent is confusingly similar to the service mark HATMA, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established, and commercially valuable rights through prior exclusive commercial use for several years. The Panel therefore finds for the Complainant in relation to the first element of the Policy.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of 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;

- Whether 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;

- Whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. In fact, the Respondent’s failure to answer the Complaint tends to show that the Respondent does not have any such rights or interests, otherwise the Respondent would have asserted them. In other words, the Respondent’s silence may be tantamount to admitting the Complainant’s case. A majority of Panel decisions have, however, taken the view that while the complainant has the burden of proof on the issue of rights or legitimate interests, once the complainant has made a prima facie showing, the burden of production shifts to the respondent. (see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624). In any case, in the present circumstances it appears on the material before the Panel that the Complainant has made such a prima facie showing, and that this has not been rebutted by the Complainant. Indeed, in the particular circumstances of the present case, as summarized above, the Respondent must have known that, when registering the disputed domain name, the Respondent could not have, or indeed, have claimed any such rights or interests.

In particular, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the domain name for a website that directs Internet users not to the Complainant but to the website of the Respondent.

Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor is it making a legitimate non-commercial or fair use of the domain name; nor has the Respondent been authorized or licensed by the Complainant to use the Complainant’s well-known trade name and service mark HATMA in the domain name.

Furthermore, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s mark inevitably leads to the diversion of the Complainant’s consumers, wishing to access the Complainant’s website, to the website of the Respondent (see further on this point below), with added links to pornography and gambling websites, alien to the business of the Complainant, with the consequential tarnishing of the Complainant’s trade name and service mark HATMA. In other words, the Respondent is trading, for commercial gain, on the good name, notoriety and well-earned reputation of the Complainant’s business and thereby unfairly attracting to its own business and activities the goodwill that the Complainant has established over many years in its well-known trade name and service mark, evidence of which has been provided to the Panel, without any right or legal justification for doing so.

Indeed, as was pointed out in Red Bull GmbH v. Bayer Shipping & Trading Ltd., WIPO Case No. D2003-0271, the linking to competitive third-party websites “shows that Respondent is well aware of Complainant as well as of its products and activities, and, instead of making a bona fide use of the domain name, rather intends to have a free ride on the fame and goodwill of Complainant and its trademarks”.

Furthermore, as was stated in Hoffman-La Roche Inc. v. WhoisGuard, WIPO Case No. D2005-1288: “Whether or not Respondent profits directly from the redirection of the disputed domain name to a commercial website is not determinative. The fact is that someone other than Complainant is profiting from the use of the disputed domain name – a name that is confusingly similar to Complainant’s mark. Consequently, the for-profit nature of the use of the disputed domain name may be imputed to Respondent.”

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No.  D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 its website or location.”

Based on the evidence provided in the case file, the Panel agrees with the Complainant’s contention that the Respondent by registering the disputed domain name is trading on the Complainant’s valuable goodwill established in its trade name and service mark HATMA.

Again, by registering and using the disputed domain name incorporating the Complainant’s trade name and service mark HATMA, the Respondent is misleading Internet users and consumers into thinking that it is, in some way or another, connected, sponsored or affiliated with the Complainant and its business, or the Respondent’s activities are approved or endorsed by the Complainant, none of which, in fact, is the case.

All of this constitutes, in the view of the Panel, bad faith on the part of the Respondent. See further on this point the decision in Six Continents Hotels v. Seweryn Nowak, WIPO Case No. D2003-0022, in which the panel held that “…. the diversion of domain names to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”

In addition, in relation to the Respondent's use of the disputed domain name to add of links to pornography and gambling sites to material otherwise identical to a website previously operated by the Complainant (see further Factual Background), the Panel considers that this has caused confusion; and could potentially cause the Complainant's customers to believe that the Complainant sponsors, endorses or condones these websites or the activities that they promote, and further gives the appearance that the Complainant does not police its own website from hackers or infringers.

Finally, the failure of the Respondent to file any answer to the present Complaint or otherwise participate in the present proceedings, in the view of the Panel, also shows bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <hatmaconnector.org> be transferred to the Complainant.


Ian Blackshaw
Sole Panelist

Dated: July 18, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-0743.html

 

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