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WIPO Domain Name Decisions D2002

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					                WIPO Arbitration and Mediation Center

                       ADMINISTRATIVE PANEL DECISION

                             Oy Heartagram Ltd. v. Wes Hudson

                                  Case No. D2002-1148




1.   The Parties

     The Complainant is Oy Heartagram Ltd., Kapteeninkatu 5 C 34, 00140 Helsinki,
     Finland, represented by Benjon Oy of Finland (“Complainant”).

     The Respondent is Wes Hudson, 6108 Dorsett Place, Wilmington, North Carolina
     28403, United States of America, (“Respondent”).


2.   The Domain Name and Registrar

     The disputed domain name <heartagrambelt.com> is registered with Go Daddy
     Software (“Registrar”).


3.   Procedural History

     The Complaint was filed with the WIPO Arbitration and Mediation Center
     (the “Center”) on December 18, 2002.

     On December 18, 2002, the Center transmitted by email to the Registrar a request for
     registrar verification in connection with the domain name at issue.

     On December 19, 2002, the Registrar 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.

     In accordance with the Rules, paragraphs 2(a) and 4(a), the Center on
     December 26, 2002, formally notified the Respondent of the Complaint, and the
     proceedings commenced on December 27, 2002. In accordance with the Rules,
     paragraph 5(a), the due date for Response was January 16, 2003. The Response was
     filed with the Center on January 12, 2003.




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     The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on
     February 23, 2003. 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

     Complainant is the owner of the trademark HEARTAGRAM, registered in Finland, the
     United States and the European Community for the classes 9, 16, 25 and 41. See e.g.
     USPTO trademark application no. 78135743, CTM application no. 2715423 and the
     pending Finnish trademark application no. T200200880.

     The domain name <heartagrambelt.com> was registered on May 30, 2002, by
     Respondent.

     On July 17, 2002, Complainant sent a Cease and Desist Letter to Respondent. In this
     letter Complainant summoned Respondent to stop using Complainant’s trademarks on
     his website, to cease and desist with the use of the domain name <heartagrambelt.com>
     and to transfer the domain name in question to Complainant.

     On July 29, 2002, the Cease and Letter was returned to Complainant with the
     notification that Respondent had refused to accept the letter.

     On November 12, 2002, Complainant’s agent sent a second Cease and Desist Letter to
     Respondent. Respondent did not reply to this letter.


5.   Applicable rules

     Paragraph 4 (a) of the Policy directs that Complainant must prove each of the
     following:

          (i)    the domain name at issue is identical or confusingly similar to a trademark
                 in which the Complainant has rights

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

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

     Paragraph 4 (b) of the Policy sets out, by way of example, four circumstances, each of
     which, if proven, shall be evidence of the registration and use of the domain name in
     bad faith for the purpose of Paragraph 4 (a) (iii) above.

     Paragraph 4 (c) of the Policy sets out, by way of example, three circumstances, each of
     which, if proven by Respondent, shall demonstrate Respondent’s rights or legitimate
     interest to the domain name for the purpose of Paragraph 4 (a) (ii) above.




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6.   Parties’ Contentions

     A.    Complainant

     Complainant is a company related to the Finnish band named “Him” and its vocalist
     Mr. Ville Valo. Complainant is the domain name holder of <heartagram.com>.
     Mr. Ville Valo is the creator of the HEARTAGRAM-logo. Complainant, the band
     “Him” and Mr. Valo began to use the HEARTAGRAM-logo at the end of 1997, first in
     Finland and later in Europe and since 1999 also in the United States. The
     HEARTAGRAM-logo was registered as a trademark on April 16, 1999. Complainant
     has also trademark rights to the word “heartagram”.

     The grounds for the Complaint are:

     (1)   the domain name is identical or confusingly similar to a trademark or service
           mark to which Complainant has rights.

           Complainant has trademark rights to the word “heartagram”. “Heartagram” is an
           invented word and therefore can be categorised as very distinctive. The
           beginning of the domain name <heartagrambelt.com> is identical to
           Complainant’s trademark and the addition of the indistinctive word “belt” does
           not lessen the similarity between the marks. Therefore, it is clear that the domain
           name at issue is confusingly similar to Complainant’s trademark
           HEARTAGRAM.

     (2)   Respondent has no rights or legitimate interests in respect of the domain name.

           Respondent has no trademark rights to HEARTAGRAM or “heartagrambelt”.
           Respondent registered and started using the domain name <heartagrambelt.com>
           several years after Complainant started using HEARTAGRAM.

     (3)   The domain name was registered and is being used in bad faith.

           Respondent became aware of Complainant’s trademark HEARTAGRAM and
           incorporated it into its domain name. This is proven by the fact that Respondent
           has registered himself as the user of Complainant’s Internet site
           “www.heartagram.com”. In fact Respondent has registered himself twice as a
           user.

           Furthermore, the source code of Respondent’s website includes the following
           terms as meta-names: heart-a-gram, heart a gram, heartagram, heartagrambelt,
           HIM and him. It is therefore clear that Respondent was aware of the band “Him”,
           the trademark HEARTAGRAM and Complainant’s registration of the domain
           name <heartagram.com>.

           Ten percent of the visitors to Complainant’s website “heartagram.com” are from
           the United States. This proves that not only Respondent but also other US
           Internet users are aware of Complainant’s trademark.

           Consequently, the domain name has been registered in bad faith.

           Respondent is illegally using Complainant’s trademarks at his website.
           Respondent is not only infringing on Complainant’s trademark rights to the word

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     “heartagram” , but also to the HEARTAGRAM-logo, the HIM-logo and the
     HER-logo (also registered trademarks by Complainant).

     Respondent’s has posted on his website, among other things, a picture of a man
     wearing a t-shirt on which the HEARTAGRAM-logo and the HER-logo are
     printed. (The band “Him” is known in the US by the name “Her”.) The belt
     buckles that are offered for sale are identical to the HEARTAGRAM-trademark.
     A CD of the band “Him”, including the trademark HEARTAGRAM and the HIM
     logo, is shown on the site.

     The use of Complainant’s trademarks is commercial as Respondent is offering
     belts with the HEARTAGRAM logo for sale.

     Respondent has offered free “Him” cd’s together with buckle order. By doing so,
     Respondent has infringed on the copyright of Complainant.

     Respondent has not replied to two Cease and Desist letters. The passive and
     indifferent attitude of Respondent is a clear indication that he is not acting in
     good faith.

     Respondent was earlier involved in a domain name dispute (WIPO case no.
     D2000-0659), in which case it was decided that the domain names registered by
     Respondent had to be transferred to the Complainant.

     On the basis of the foregoing it is clear that Respondent has been using the
     domain name in bad faith.

B.   Respondent

     Respondent requests the Panel to deny the remedies requested by Complainant.

     The mark Respondent uses is used primarily for a belt buckle design that is
     different to the mark for which Complainant claims a monopoly. Complainant’s
     version is not used on a belt or buckle offered for sale. Complainant is trying to
     assert monopoly status on any design bearing a heart and/or triangle.

     The domain name <heartagrambelt.com> is not confusingly similar to the name
     <heartagram.com>. The addition of the word “belt” does in fact differentiate the
     sites. Visitors cannot be confused as to the content of that offered on the
     websites, <heartagram.com> offers music, <heartagrambelt.com> offers a belt.

     In order to prove that names are confusingly similar, <heartagram.com> must
     prove that it is well-known. Respondent states that HEARTAGRAM is not well-
     known.

     Respondent claims to have a legitimate interest in the domain name at issue due
     to his bona fide offering of goods on the website prior to the Complaint, and the
     fact that the website has been commercially used prior to the Complaint.
     Furthermore, Respondent states that he has been generally known by the name
     “heartagrambelt” since he began marketing his products in February 2002.

     Respondent states that he is not tarnishing the image of <heartagram.com>.



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           Respondent states that there have been no pictures of Mr. Vallo or “Him” on his
           website for some time. His website is in a constant state of revision and was not
           altered after receiving the Complaint but prior to receiving the Complaint.

           Respondent has not registered or used the domain name in bad faith.

           Respondent states that he has not registered the domain name in order to prevent
           Complainant from registering this name. Furthermore, Respondent claims not to
           be a competitor of Complainant.

           Respondent has not intentionally attempted to attract web traffic by creating a
           likelihood of confusion with Complainant’s trademark. Respondent’s web traffic
           is self-generated through advertising and referrals. Respondent states that his
           website is not even ranked on Google the search engine under the word
           “heartagram”.


7.   Discussion and Findings

     Complainant must provide evidence of all elements of Paragraph 4 (a) of the Policy.
     Since the decision to transfer or cancel a domain name may have serious consequences
     for the domain name holder, the evidence should be sufficient in all respects to support
     such a decision.

     A.    Trademark rights

     Complainant has provided sufficient evidence of its rights to the trademark
     HEARTAGRAM.

     B.    Identical or confusingly similar

     The domain name <heartagrambelt.com> is confusingly similar to Complainant’s
     trademark HEARTAGRAM. The domain name incorporates the trademark
     HEARTAGRAM with the generic word “belt” and the suffix “.com” (which indicates
     that the domain name is registered in the “.com” gTLD). It is clear that the distinctive
     trademark HEARTAGRAM is the most prominent element in this combination, and
     that may mislead the public into thinking that the domain name is somehow connected
     to the HEARTAGRAM trademark. (See e.g. WIPO case no. D2000-1554 Daimler
     Chrysler AG v James Curs, <driveamercedes.com>; WIPO case no. D2001-0055
     America Online v Yeteck Communication <aolsportsbat.com>, <aolsports.net>,
     <aolcasino.com>.)

     In view of the above it is clear that the domain name and the trademark are confusingly
     similar. The ability of the word “belt” to distinguish the domain name from
     Complainant’s trademark is limited. The Panel finds that this addition does not alter
     the likelihood of confusion with Complainant’s trademark.

     C.    Rights or legitimate interests

     Under paragraph 4 (c) of the Policy, Respondent may demonstrate that it has a right or
     legitimate interest to a domain name for the purpose of Article 4 (a) (ii), inter alia, by
     providing evidence of any of the following circumstances:



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      “(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 non commercial 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.”

Respondent has stated that he is using the domain name at issue for the bona fide
offering of buckle belts. This statement cannot be accepted as correct. In the Panel’s
opinion Complainant has provided sufficient evidence that Respondent was aware of
Complainant, the Finnish pop band “Him” (“Her”) and Complainant’s rights in the
trademark HEARTAGRAM before registering the domain name at issue. Respondent
has not contested that he visited Complainant’s website <heartagram.com> before
registering the domain name at issue. Although Respondent has stated that “his
heartagram” is his own design, the Panel has noticed that a picture of a t-shirt with the
HEARTAGRAM logo of Complainant is being displayed at Respondent’s website.
Consequently, the offering for sale of HEARTAGRAM belts does not constitute a bona
fide offering of goods.

Respondent has not provided any tangible evidence of any own right (such as a
trademark or trade name) to the name heartagrambelt or to a corresponding name nor
that he is commonly known by that name. The mere statement of Respondent that he is
known by the name heartagrambelt is - certainly in view of his awareness of
Complainant’s trademark HEARTAGRAM - insufficient to create a legitimate interest
in the sense of Paragraph 4 (b) (iv) under (ii) of the Policy.

In the light of the foregoing, the Panel finds that Respondent has no right or legitimate
interest in the domain name at issue.

D.    Registered and Used in Bad Faith

Complainant is relying on Paragraph 4 (b) (iv) of the Policy, which provides that
sufficient evidence of bad faith may consist of:

      “(iv) By using the domain name, you have intentionally intended to attract for
            commercial gain, Internet users to your website or other on-line locations,
            by creating a likelihood of confusion with 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 Panel finds that Complainant has provided sufficient evidence in this regard. As
set out above, Complainant has provided sufficient evidence that Respondent was
aware of Complainant’s trademark HEARTAGRAM and Complainant’s website
<heartagram.com> prior to his registration of the domain name at issue. In view of
these circumstances (using HEARTAGRAM and “him” as a meta-name for his
website; a picture of a t-shirt with Complainant’s trademarks HER and the
HEARTAGRAM-logo on his website; use of the slogan “A free HIM CD with a buckle
order”) it is clear to the Panel that Respondent, by registering and using the domain

                                       page 6
     name <heartagrambelt.com>, has created the (incorrect) impression of affiliation or
     sponsorship with Complainant, thereby creating a likelihood of confusion with
     Complainant’s trademark. The public that is familiar with Complainant’s trademark -
     which is the public most likely to search for these websites - will expect to find under
     the domain name <heartagrambelt.com> a website belonging to Complainant. The fact
     that Complainant is using this domain name for his own website will therefore
     misleadingly divert customers to Respondent’s website. In this context it is important
     to note - contrary to Respondent’s assertion - that Respondent’s website appears among
     the first 20 hits in a Google search on the word “heartagram”. These facts confirm that
     Respondent has intentionally used the goodwill of Complainant’s trademark to create
     traffic to his website operating under the domain name at issue. (See also e.g. WIPO
     case no. D2000-0413 Chanel Inc. v Estco).

     The Panel therefore concludes that there is sufficient evidence that Respondent’s
     registration and use of the domain name <heartagrambelt.com> is in bad faith.


8.   Decision

     On the basis of the foregoing, the Panel decides that Complainant has provided the
     required evidence to request the transfer of the domain name from Respondent to
     Complainant. Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel orders
     that the registration of the domain name <heartagrambelt.com> be transferred to
     Complainant.




                        __________________________________
                                Wolter Wefers Bettink
                                    Sole Panelist

                                  Date: February 6, 2003




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