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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hayata of North America Ltd. v. Michael Sandfort

Case No. D2007-1585

1. The Parties

The Complainant is Hayata of North America Ltd., Dallas, United States of America, represented by Souter, Lipton & Luttrull, P.C., United States of America.

The Respondent is Michael Sandfort, London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <hayata.com>, <hayata.net> and <hayata.org> are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2007. On October 29, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. Later that day, eNom transmitted by email to the Center its verification response confirming that:

(a) it is the registrar for the disputed domain names;

(b) the Respondent is listed as the registrant of the disputed domain names;

(c) the contact details for the administrative, billing, and technical contacts;

(d) English is the designated language under the Registration Agreements for the disputed domain names; and

(e) the registrations of the disputed domain names are subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy”).

The Center verified that the Complaint satisfied the formal requirements of 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 October 31, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2007.

The Center appointed Warwick A Rothnie as the sole panelist in this matter on November 29, 2001. 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.

On December 11, 2007, the Panel issued Administrative Panel Procedural Order No. 1, seeking clarification of the trademark status relied on by the Complainant. Procedural Order No. 1 specified a date for reply by the Complainant and a subsequent date for any reply by the Respondent. In the event, the Complainant submitted a Supplemental Statement on December 12, 2007. The Respondent also submitted a response on December 16, 2007.

4. Factual Background

According to the Complaint, the Complainant commenced using the trademark “HAYATA” in the United States of America and abroad in connection with “cable clamps, cable connectors, electrical cable ducting and electrical connectors” “as early as August 2, 1999”.

The Complainant has been using its trademark since then in connection with an expanding line of business. In 1999, it had sales revenues under the trademark of approximately US$61,000; in 2000, US$720,000 and in 2001, US$2,417,000.

The Complainant has been operating a website via the domain name <hayata-na.com>.

On February 26, 2007, the Complainant applied to register the “HAYATA” trademark as a Federal Trademark in the United States of America, Serial No. 77115963, in respect of goods in international classes 6 and 9. The trademark application was accepted for publication on September 26, 2007 and published on October 16, 2007. The opposition period has passed without notification of any opposition or request for an extension of time. The Complainant therefore expects the trademark to issue as registered in due course.

The trademark as used on the sample business card and the subject of the USPTO filing consists of the word “HAYATA” in capital letters with two curved lines or arcs, one underneath the letters “HAY” and the other over the letters “YATA”.

The Respondent registered the disputed domain names in March 2000. The domain names do not resolve to an active website and it appears from searches of the Internet Archive maintained at <www.archive.org> that they never have.

While the Respondent did not submit a Response within the specified time, a reply has been submitted by the Respondent using an email address identified in the Whois details provided by eNom for the administrative, billing and technical contacts following the Supplemental Filing. The Panel is satisfied, therefore, that the Respondent has been properly served and has had an adequate opportunity to put his case. In this brief reply, Mr. Sandfort stated only that the domain names were registered before October 16, 2007, that “Hayata” is a commonly used family name and that the domain names were registered for this purpose.

5. Discussion and Findings

Under paragraph 4(a) of the Policy the Complainant has the burden of proof in respect 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; and

(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 Panel deals with each of these elements in turn.

A. Identical or Confusingly Similar

There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to it?

The Complainant relies on both its pending trademark application in the United States of America and common law rights. This Panel respectfully adopts the approach outlined in Fashiontv.com GmbH v. Mr. Chris Olic WIPO Case No. D2005-0994, which is generally against treating pending applications as trademark rights. The present case, however, is distinguishable from that decision in at least two respects.

First, the trademark application in the present case has passed through the publication period without opposition. At paragraph 7.30 of the Fashiontv.com GmbH decision, the Panel recognised that it could be neither necessary nor fair to insist on formal registration where it was clear that the complainant would ultimately be awarded a registration. As the trademark here has passed through the opposition period, that appears to be the case here.

Secondly, and in any event, the Complainant specifically asserts its common law rights arising from use both domestically and abroad. These rights have not been disputed by the Respondent. Based on the evidence, the Panel finds that the Complainant has established common law rights in the term HAYATA for the purpose of these proceedings.

The rights relied on by the Complainant, therefore, are sufficient to satisfy the first part of this inquiry.

The gTLD “.com” has no distinguishing capacity and does not alter the value of the trademark represented in the domain name (Telecom Personal, S.A., v. NAMAZERO.COM, Inc, WIPO Case No. D2001-0015; Nokia Corporation v. Private, WIPO Case No. D2000-1271).

Both the pending US application and the common law rights are for the trademark HAYATA in a stylized device as discussed above. While the embellishments are rather simple, they are arguably significant features of the trademark. In any event, the term HAYATA is the key feature of the trademark. It cannot seriously be contended that the domain names, which are based on the exact term, are confusingly similar to the Complainant’s trademark rights.

For these reasons, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark, and that the requirements of the Policy, paragraph 4(a)(i), are satisfied.

B. Rights or Legitimate Interests

The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain names.

Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:

“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.”

These are not an exhaustive enumeration of rights or legitimate interests, they are examples only.

The Complainant has not authorised the Respondent to use the domain name.

In addition, the domain name has no apparent connection at all with the Respondent’s own name or any business he is operating. The Respondent’s albeit brief response to the Supplemental Filing does not claim otherwise.

These considerations provide sufficient basis to raise a prima facie case under this factor. As a result, an evidential burden shifts to the Respondent to rebut that prima facie case.

As previously stated, in his response to the Complainant’s Supplemental Filing, the Respondent asserts that the domain names were registered before October 16, 2007 and were registered because “Hayata” is a commonly used family name.

It is clearly correct that the domain names were registered before October 16, 2007, the date that the Complainant’s US trademark application was published. The Respondent’s reliance on the October 16, 2007 date is misplaced, however, as it overlooks both that the trademark is based on first use in August 1999 and, moreover, the Complainant’s common law rights deriving from use in the United States of America and abroad from that earlier date.

Further, the Respondent has not offered any support of his claim that the domain names were registered because HAYATA is a common surname. If it is a surname, it is not obviously a surname in the class of Jones, or Nguyen or Garcia. Nor is it obviously connected either with the Respondent or the United Kingdom, where the Respondent is located.

In addition, more than seven years has passed since the domain names were registered. As already noted, the domain names do not appear to have ever been actively used. The Respondent has not contended otherwise. Nor has the Respondent provided any evidence of demonstrable preparations to use the disputed domain names, or any of them.

As discussed below, the Complainant has charged that the Respondent knew of the Complainant’s trademark and business name when the disputed domain names were registered. The Respondent has not disputed that allegation.

Finally, in this connection, it is noteworthy that this justification is offered only in response to the Complainant’s Supplemental Filing. It was not put forward within the time limited for the Response under the Rules. Nor has the Respondent offered any explanation for why this justification was not put forward in due time.

In these circumstances, the Panel considers it was incumbent on the Respondent to advance evidence in support of his claims of rights or legitimate interests, rather than rely on bare assertion.

Accordingly, the Panel finds that the Complainant has sufficiently proved that the Respondent does not have rights or legitimate interests in the domain names.

C. Registered and Used in Bad Faith

The third requirement that the Complainant must demonstrate to succeed is that the disputed domain names have been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:

“(b) Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The Complainant relies on the term “Hayata” not being a common name and as having significance only in the designation of the Complainant’s business and goods. It also emphasises that the domain names have lain dormant for more than seven years. It contends therefore that the domain names were registered with the intention of either trading on the Complainants reputation and goodwill in the trademark or to block the Complainant from registering it as a domain name.

As noted above, the Respondent disputed this allegation by claiming that “Hayata” is a common surname and was registered “for that reason and purpose”. The Respondent did not advance this claim in the Response provided for in the Rules, but only for the first time in his reply to the Complainant’s Supplemental Filing.

As discussed in section 5.B above, that bare assertion by the Respondent does not succeed in the circumstances of this particular case in the absence of supporting evidence both of the surnominal significance of the term and either the purpose or an explanation why it has not been possible to effect that purpose to date.

That brings this case in line with those decisions that have ruled that the registration and long term passive holding of a domain name with knowledge of another’s trademark rights amounts to registration and use of the domain name in bad faith. See e.g. Jones Apparel Group, Inc. v. Robin Sousa WIPO Case No. D2001-1308.

6. 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 names, <hayata.com>, <hayata.net> and <hayata.org> be transferred to the Complainant.

Warwick A Rothnie
Sole Panelist

Date: December 20, 2007