HTL Automotive, Inc. v. Techshire
Claim Number: FA1203001435046
Complainant is HTL Automotive, Inc. (“Complainant”), represented by Marvin H. Kleinberg of Kleinberg & Lerner, LLP, California, USA. Respondent is Techshire (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hooman.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 16, 2012; the National Arbitration Forum received payment on March 16, 2012.
On March 19, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <hooman.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on March 20, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 23, 2012.
Complainant’s Additional Submission was received on March 28, 2012 and was deemed to be in compliance with Supplemental Rule 7.
Respondent’s Additional Submission was received on April 2, 2012 and was deemed to be in compliance with Supplement Rule 7.
On April 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends as follows:
The disputed domain name is identical to Complainant’s registered mark HOOMAN.
The Respondent has made no use of the mark in commerce. Complainant has used the mark in commerce for the past 10 years. The web site home page of <hooman.com> includes the legend “This Web page is parked FREE courtesy
of godaddy.com.” The page is replete with ads directing potential automobile buyers to competitors of Complainant confusing and misleading anyone searching for Complainant.
From the appearance of Respondent’s website, there is no evidence that
Respondent has any legitimate interest in the domain name other than to
cybersquat until someone with superior rights to the name seeks to acquire it. Respondent does have, as Administrative Contact, an individual whose first name is “HOOMAN” but there is nothing to show that there is any business being conducted under that name. When contacted by a representative of Complainant, Respondent offered to “sell” the domain name for $25,000. There are solicitations to buy the domain name on the Web Page itself. The lack of a business using the domain name, coupled with the solicitation to buy and the quotation of a price are all evidence of circumstances indicating that Respondent has registered 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 and service mark. Further, it would appear that from the presence of several ads for dealers in competing automobiles Respondent has registered the domain name primarily for the purpose of disrupting the business of Complainant.
By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent’s web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or of an automobile or automotive service on Respondent’s web site or location
Respondent contends as follows:
Respondent is the original registrant of the disputed domain name since January 8, 1998. Respondent’s name is Hooman, which is a popular surname. Respondent asserts that there is no content available through its website, and that the site itself is inaccessible because there is no IP address associated with it and no DNS server assigned to it. Respondent has not solicited the sale of its domain name. Respondent was contacted by Complainant’s representative and was asked many times to identify a price at which Respondent would sell the domain name as a negotiating tool and eventually Respondent told the person it was speaking to that it would “at least look at his bosses offer if that makes makes [sic] any difference . . . .” On initial inquiry from the Complainant’s representative Respondent explained that the at-issue domain name was not for sale and that he planned to use it at some time in the future.
Complainant has fabricated evidence regarding the solicitation to sell the domain name for $25,000 in an attempt to gain hold of Respondent’s rightfully registered domain name.
C. Additional Submissions
Complainant in its Additional Submission contends as follows:
David Arnold, a representative of Complainant, declares that he had conversation with Respondent in which Respondent offered to sell the domain name for $25,000.
Respondent in his Additional Submission contends as follows:
Respondent has not profited from Go Daddy’s parking page. Respondent has attempted to remedy Complainant’s concerns about Go Daddy’s parking page by bringing it to the attention of Go Daddy. However Go Daddy refused to take any action claiming that the page was locked.
By declaration Respondent denies that he telephonic contact on several occasions with David Arnold but rather had one conversation that lasted approximately 6 minutes. Respondent further declares that he did not offer to sell the at-issue domain name for a price of $25,000, contrary to the declaration of Arnold.
Respondent takes issue with numerous statements made in the Complaint and the conclusions made by the Complainant.
Respondent has no relation to the automotive business field of commerce for which Complainant’s mark is relevant. Respondent’s rights to use the HOOMAN mark would only be junior to Complainant’s rights if Respondent’s use pertained to the field of automotives, which it does not.
Respondent registered the <hooman.com> domain name years before Complainant began using the mark and more than a decade before the trademarks were issued.
Complainant has rights in the trademark HOOMAN.
Complainant first used its HOOMAN mark in commerce in 2002.
Respondent registered the at-issue domain name in 1998.
Respondent is named Hooman and goes by such name.
Hooman is a common surname.
The domain name was registered by Respondent prior to Complainant’s acquiring any trademark rights in the domain name.
Respondent was unaware of the Complainant prior to the instant dispute.
The domain name resolves to a parking page under the control of Go Daddy, Inc., the registrar.
The domain name is not being used in a trademark sense, but rather is descriptive of its registrant.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant has rights in the HOOMAN mark under Policy ¶ 4(a)(i) through its trademark registration of that mark with the USPTO (e.g., Reg. No. 4,073,639 filed April 27, 2011; registered December 20, 2011). Complainant’s trademark registrations are sufficient to establish rights under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The at-issue <hooman.com> domain name is identical to Complainant’s HOOMAN mark. The domain name merely inconsequentially adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark).
Therefore, Complainant demonstrates that the at-issue domain name is identical to a mark in which it has rights.
Under Policy ¶4(a)(ii), Complainant must first make out a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. The threshold for such showing is low. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). Once a prima facie case is established, the burden then, in effect, shifts to Respondent who must demonstrate that he nevertheless has rights or legitimate interests in respect of the domain name. Complainant argues that the appearance of Respondent’s website leads to a conclusion that Respondent has no legitimate interest in the domain. Complainant admits, and the record supports, that the Respondent is named Hooman but counters this undisputed fact solely by asserting that any unspecified inquiry to the “State of Texas” did not disclose any business to be using the name HOOMAN. Indeed, Complainant admits to speaking with Hooman Moghtaderi by telephone prior to filing its Complaint. The Panel is not persuaded that the facts alleged by Complainant tend to prove that Respondent lacks rights and interest in the domain name pursuant to Policy ¶4(a)2. Thus, Complainant fails to make out even a prima facie case.
Furthermore, Policy ¶4(C) provides that if a Panel finds that a respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights, it shall demonstrate respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii). Therefore, upon finding that Respondent in fact is commonly known as Hooman, the Panel is compelled to conclude that Respondent Techshire, also known as Hooman Moghtaderi, has demonstrated rights or interests in respect of the at-issue domain name.
The undisputed facts foreclose the Panel issuing a finding of bad faith registration and use under Policy 4(a)iii.
Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.
WIPO, WIPO Overview of WIPO Panel Views on Selected UDRP Questions ¶ 2.1 (2d ed.).
It is axiomatic that if a complainant does not have trademark rights at the time of an at-issue domain name’s registration (even though it may have such rights at the time of the parties’ dispute), there can be no bad faith registration on the part the domain registrant/respondent. Numerous decisions support this very logical proposition. For example see: Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001); Digital Vision, Ltd. v. Advanced Chemill Sys., D2001-0827 (WIPO September 23, 2001); PrintForBusiness B.V v. LBS Horticulture, D2001-1182 (WIPO December 21, 2001).
Although there may be exceptions to the rule, such exceptions require that “it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights.” See supra, WIPO Overview. The record contains absolutely no evidence to support any contention that might hang on this exception. A common sense assessment of the undisputed facts leads to the conclusion that Respondent registered the at-issue domain name because it was his name and for no other reason. While Complainant currently claims that it has rights in the mark HOOMAN by virtue of its trademark registration, such rights do not magically extend to Respondent’s domain name (which is comprised of a common name) or relate back to a time four years before the HOOMAN mark was used in commerce. Moreover, here the Respondent is not using the mark in a trademark sense for goods or services and a fortiori not using it in a class similar or identical the limited commercial scope granted in Complainant’s trademark registration. The domain name is being used by Respondent only in a descriptive sense.
Although the undisputed fact that Complainant had no trademark rights at the time Respondent registered his domain name is a sufficient ground to conclusively deny there being any bad faith registration and use by Respondent, Complainant’s bad faith claims fail for additional independent reasons as well. For one, since Respondent shows that it has rights or legitimate interests in its descriptive domain names pursuant to Policy ¶ 4(a)(ii), without more the Panel may find that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”). For another, Complainant fails to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Finally, Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Respondent was approached by Complaint who pressured Respondent to sell the domain name. Whether or not Respondent actual suggested a price of $25,000 to sell the domain name is highly contested, but even if Respondent made an offer doing so would appear to have been initiated at Complainant’s request. Respondent has not been shown to be engaged in domain name trafficking, is not a competitor of Complainant and is not seeking to disrupt the Complainant’s business. The domain name in not used by Respondent to divert Internet users for Respondent’s commercial gain notwithstanding that Go Daddy the registrar has used the domain name as a parking page. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith).
Therefore, based on any one of the independently sufficient reasons set out above, the Panel concludes that Complainant fails to meet it burden of proof regarding Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii).
REVERSE DOMAIN HIJACKING
Rule ¶15(e) defines reverse domain name hijacking as the filing of a complaint in bad faith resulting in the abuse of the UDRP administrative process.
If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
There is no requirement that this issue be raised on the record for a Panel to hold that a complaint was filed in bad faith. Therefore, and for at least the following reasons, the Panel finds that Complainant was brought in bad faith.
While a layman might not recognize the implications of not being able to support its contentions or perhaps not be familiar with UDRP’s requirements, any reasonable attorney would have known that the Complaint could not succeed on its merit, even if Respondent did not respond. Complainant is represented by competent counsel in this matter; nevertheless not one UDRP case is cited to support the Complaint. Instead the Complaint offers little but sparsely supported conclusions.
In bringing the Complaint, Complainant overtly disregards two pivotal facts which were known to Complainant prior to filing. First, Respondent is named Hooman. There was no denial of this fact by Complainant and Complainant admits it spoke to Hooman by telephone. It is undeniable that the presence of this fact causes the Complaint to fail pursuant to paragraph 4(c)ii as applied to paragraph 4(a)ii. Second, the domain name was registered four years prior to Complainant having any trademark interest in the HOOMAN mark. It is black letter that in all but very specific circumstances (which were not argued to be present) a complaint must fail where the complainant lacks trademark rights at the time the domain was first registered. While the presence of either of these factors is sufficient to tell a well counseled Complainant that its Complaint cannot be sustained on the merits, the presence of both factors certainly must not be ignored.
Since Complainant, through counsel, knew with certainty that its Complaint would fail but nevertheless choose to file the complaint anyway, the only purpose for doing so must have been for some objective other than to have the domain transferred away from the Respondent. Since there is no other justifiable reason for filing the Complaint outside of transferring the domain name from Respondent, and since the Complaint must have known that filing a Complaint would cause the domain name to be locked, would interfere with Respondent’s use of the domain name, would possibly intimidate the Respondent, and would likely cause the Respondent to expend resources in responding to the Complaint even though Complainant knew there was no viable basis from which it could possibly prevail, the Complaint is found to be brought in bad faith and an abuse of the UDRP administrative proceedings.
Having NOT established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. The Panel also concludes that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Accordingly, it is Ordered that the <hooman.com> domain name REMAIN WITH Respondent.
Paul M DeCicco, Panelist
Dated: April 16, 2012
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