WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Hun, BV v. Hun.com
Case No. D2005-0406
1. The Parties
The Complainant is The Hun, BV dba The Hun‟s Yellow Pages, Wervershoof,
Netherlands, represented by Idell, Berman, Seitel & Rutchik, LLP,
United States of America.
The Respondent is Hun.com, in Dallas, Texas, United States of America, represented
by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center
(the “Center”) on April 15, 2005. On April 18, 2005, the Center transmitted by email
to eNom a request for registrar verification in connection with the domain name at
issue. On April 19, 2005, eNom 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 April 22, 2005. In
accordance with the Rules, paragraph 5(a), the due date for Response June 1, 2005.
The Response was filed with the Center June 2, 2005.
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The Center appointed Daniel J. Gervais, David W. Quinto and Nelson A. Diaz as
panelists in this matter on June 29, 2005. The Panel finds that it was properly
constituted. Each member of 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 June 4, 2005 the Complainant filed a supplemental statement. The Respondent
objected to the filing and requested, should the filing be admitted, permission to file a
reply to said supplemental statement.
4. Factual Background
The Complainant is The Hun, BV, whose principal office is located in Wervershoof,
the Netherlands. The Complainant is the owner and/or exclusive licensee of the marks
THE HUN‟S YELLOW PAGES, THE HUN‟S, and HUN CARD. These marks are
used in relation to the Complainant‟s business, which is offering the users a
compilation of links to adult-oriented pre-existing URLs. Complainant maintains
Internet websites located at “www.thehun.net” and “www.thehun.com” and has offered
its goods and services since 1997. The Complainant applied for registration of his
marks in 2000 and 2001. The marks were registered in 2003.
The Respondent operates a website at “www.hun.com”, which was registered in 1999,
where he promotes adult personals and web cams. The Respondent‟s website uses the
following motto “Hun, Find your honey!”
On March 23, 2005, the Complainant sent a cease-and-desist letter to the Respondent at
the contract address listed in the WhoIS database, and did not receive an answer.
5. Parties’ Contentions
A. Complainant
The disputed domain name is identical and confusingly similar to the
Complainant‟s registered mark THE HUN‟S, THE HUN‟S YELLOW PAGES and
HUN CARD. The Respondent has no rights or legitimate interests in the domain name.
The Respondent is not commonly known or identified by the name Hun, nor is he
affiliated or connected in any way with the Complainant. The Respondent is not
making a legitimate noncommercial or fair use of the domain name. The Respondent is
using the Complainant‟s mark to divert traffic from the Complainant‟s website for
commercial gain. The Respondent has registered the disputed domain name in order to
prevent Complainant from reflecting its mark in the corresponding domain name. The
domain name has been registered and is being used in bad faith. The Respondent has
registered and used the domain name with full knowledge of the rights of the
Complainant in the marks THE HUN‟S, THE HUN‟S YELLOW PAGES and HUN
CARD.
B. Respondent
The Respondent contests all of the Complainant‟s statements. The Respondent
registered the domain name in 1999, prior to the Complainant‟s applications for
registration of the marks, which were filed in 2000 and 2001. The Respondent,
therefore, could not have known of the Complaint‟s marks, because the domain name
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was registered before the Complainant had rights in the mark. Furthermore, the
Complainant and its business are located in the Netherlands while the Respondent is
located in the United States of America, which is another reason why the Respondent
could not be aware of the existence of the Complainant‟s marks. The disputed domain
name incorporates a common (generic) and descriptive word “hun”. The word “hun” is
common abbreviation of the word “honey”, and also the name of a nomadic tribe
(as in “Attila the Hun”). The Complainant‟s mark is THE HUN‟S YELLOW PAGES
and the word “hun” is an abbreviation of the Complainant‟s mark. The Complainant is
not known under the name “hun”. The Respondent is not using the disputed domain
name in bad faith. The Respondent is using the dispute domain name for a legitimate
offering of goods and services, using the motto “Hun – find your honey”.
The disputed domain name has not created consumer confusion.
6. Preliminary Procedural Issues
First, the Response was received one day late. The Panel uses its discretion and
possible delays caused by different time zones to allow the Response into the Record.
Second, the Panel must discuss the procedural issue of Complainant‟s supplemental
filing of June 4, 2005.
There are two issues with respect to this supplemental filing. First, whether and under
what circumstances the Rules permit such a filing and, second, if the Rules do allow the
filing, whether the applicable conditions, if any, are met in this case.
With respect to the first issue, the Rules provide for the submission of a Complaint by
the Complainant (Paragraph 3 of the Rules) and a Response by the Respondent
(Paragraph 5 of the Rules). Paragraph 12 of the Rules provides that “[i]n addition to the
complaint and the response, the Panel may request, in its sole discretion, further
statements or documents from either of the Parties”. The Rules are, therefore, silent
with respect to unsolicited supplemental and additional filing and evidence.
As the panel in Ravissant Limited. v. Vama Inc., Mehul Kotecha, WIPO Case
No. D2003-0747 noted: “no party has the right to insist upon the admissibility of
additional evidence”. Based on the lack of explicit reference to additional unsolicited
filings in the Rules, numerous panels in the past refused to consider supplemental
filings, additional evidence and amendments to the Complaint. See, inter alia,
Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427; The
E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; PepsiCo,
Inc. v. “The Holy See”, WIPO Case No. D2003-0229; Deutsche Post AG v. MailMij
LLC, WIPO Case No. D2003-0128; Kirkbi AG v. Michele Dinoia, WIPO Case
No. D2003-0038; Helsingin yliopiston ylioppilaskunta and HYY Group Ltd. v. Paul
Jones, WIPO Case No. D2002-1164; Classmates Online, Inc. v. John Zuccarini,
individually and dba RaveClub Berlin, WIPO Case No. D2002-0635; Victor Chandler
Limited and International Sports Marketing Limited v. Thierry Leray, WIPO Case
No. D2002-0624; VISIVA S.r.l. v. VISIVA di Rocca Sergio, WIPO Case
No. D2001-1130; AT&T Corp. v. Randy Thompson, WIPO Case No. D2001-0830;
Avanade Inc. v. Robert Tansey, WIPO Case No. D2001-0824; Rolex Watch U.S.A., Inc.
v. Spider Webs, Ltd., WIPO Case No. D2001-0398; Telstra Corporation Limited v.
Heaydon Enterprises, WIPO Case No. D2000-1672; Goldline International, Inc. v.
Gold Line, WIPO Case No. D2000-1151; Parfums Christian Dior S.A. v. Jadore,
WIPO Case No. D2000-0938; Viz Communications, Inc. v. Redsun dba
www.animerica.com and David Penava, WIPO Case No. D2000-0905; Wal-Mart
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Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662; AT&T
Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Universal City Studios,
Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416; Plaza Operating Partners,
Ltd.; Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270; Easyjet Airline Company Ltd v. Andrew Steggles, WIPO
Case No. D2000-0024.)
Several panels in the past accepted supplemental filings, but only as an exception based
on the particular circumstances of the case, as well as the quality and importance of the
supplemental filings and evidence. (See e.g., Wollongong City Council v. Viva La
Gong, WIPO Case No. D2003-0113; SES Astra S.A. v. Design Technology Ltd.
(t/a Transcom ISP), WIPO Case No. D2002-1078; Nabor B.V. Stanhome S.P.A., v.
Organization Francisco Vicente, WIPO Case No. D2000-0757; HER MAJESTY THE
QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens,
Organizations and State of New Zealand, acting by and through the Honourable Jim
Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc,
WIPO Case No. D2002-0754).
In this Panel‟s view, the circumstances of the current case do not reach the required
level, because the Respondent had an opportunity to address the Complainant‟s
allegations in its Response and because there were no additional facts or a change of
factual situation that rendered such supplemental filing necessary. The Complainant
did not justify its supplemental filing; it was simply sent to the Center. As a rule, such
filings may be relevant when the party submitting the filing can show that it is
responding to facts it could not have been reasonably expected to address in its initial
filing. In addition, as is discussed briefly below, admitting that filing in this case would
not have changed the result.
Another relevant matter is whether the doctrine of laches might apply. The
Complainant waited several years before taking action. The doctrine was described as
follows by Sam Ricketson in a 2003 panel decision (Iogen Corporation v. IOGEN,
WIPO Case No. D2003-0544):
1. Some unjustified delay on the part of a person in taking a particular step, e.g. in
issuing proceedings or prosecuting a complaint. In some instances, delay alone
may be sufficient, e.g. in the seeking of interlocutory injunctive relief or in a
defendant seeking security for costs in the running of an action. The most
extreme case here is some limitation period that applies to cut off a particular
proceeding once the time limit in question has passed. In this regard, […] the
Policy and Rules do not provide for any specified limitations period for the
bringing of a complaint.
2 Other cases, the effect of the delay must be such that it would be unjustifiable for
the party now to take the step in question, because the other party has taken some
action in reliance upon what appears to have been the acquiescence of the first
party in that action.
3. Circumstances other than delay from which it can be inferred that the
complainant has consented to or acquiesced in conduct of another person that
would otherwise be an infringement of the rights of the complainant. In general,
this will require that the other party has relied upon the conduct of the first party
and has acted to his or her detriment on the basis of that reliance, e.g. through
investing in a particular business or taking steps to pursue a particular course of
action.
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As Mr. Ricketson also noted in that case, it is unclear whether such an equitable claim
(as it is understood in common law jurisdictions) can be made here given that the
jurisdiction stems from contractual arrangements. In addition, the Complainant is not
based in a common law jurisdiction. For those reasons, the Panel does not make a
finding that the complaint is barred under said doctrine.
7. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding
and obtain the transfer of the domain name, the Complainant must prove that each of
the three following elements is satisfied:
1. The domain name is identical or confusingly similar to a trademark or service
mark in which the Complainant has rights (see below, section 7.1);
2. The Respondent has no rights or legitimate interests in respect of the domain
name (see below, section 7.2); and
3. The domain name has been registered and is being used in bad faith (see below,
section 7.3).
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these
elements are present lies with the Complainant.
Pursuant to 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. Moreover, in
accordance with Paragraph 14(b) of the Rules, 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 therefrom, as it
considers appropriate.
A. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark or
service mark; and (2) is the domain name identical or confusingly similar to such
trademark or service mark.
As to the first question, the record confirms that the Complainant has an interest in the
marks THE HUN‟S YELLOW PAGES and THE HUN‟S, because the Complainant is
the exclusive licensee of those marks. The Complainant need not be the owner of the
mark to show the rights in the mark. See inter alia DigiPoll Ltd. v. Raj Kuma, WIPO
Case No. D2004-0939, American Civil Liberties Union of New Mexico v. Vilma
Morales/e:bOOm, S.A., WIPO Case No. D2004-0473, Grupo Televisa, S.A., Televisa,
S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc.,
a/k/a Peter Carrington, WIPO Case No. D2003-0796, and Miele, Inc. v. Absolute Air
Cleaners and Purifiers, WIPO Case No. D2000-0756, The marks THE HUN‟S
YELLOW PAGES and “THE HUN‟S” were registered in the United States of America
since 2003 and 2004 respectively. According to the record the Complainant used the
marks since 1995. Registration of a common law mark after the registration of the
domain name is akin to a confirmation of title. The Complainant has rights in the mark,
even though it was registered after the acquisition of the domain name by the
Respondent. At common law, the trademark owner‟s rights stem from use, which,
according to the Record, started in 1995 or 1996, i.e., prior to registration of the domain
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name. Absence of registration is relevant, however, when considering the
Respondent‟s bad faith.
The Panel finds that the Complainant has rights in the mark THE HUN‟S YELLOW
PAGES and THE HUN‟S.
The Respondent‟s objection to the mark – that it is a generic word – is relevant.
According to the Oxford Dictionary, “hun” is defined as follows:
Hun
1. One of an Asiatic race of warlike nomads, who invaded Europe c A.D. 375, and
in the middle of the 5th c., under their famous king Attila (styled Flagellum Dei,
the scourge of God), overran and ravaged a great part of this continent.
2. poet. (and in U.S. vulgarly) A Hungarian.
3. transf. A reckless or wilful destroyer of the beauties of nature or art: an
uncultured devastator: cf. „Goth‟, „Vandal‟.
4. a. gen. A person of brutal conduct or character; esp. during and since the war of
1914-18 applied, often without animus, to the Germans (or their allies); a
German. Also attrib. b. A flying cadet: see quots. Air Force slang (in the war of
1914-18).
5. Comb., as Hun-folk, -hater, -land, -talk; Hun-eating, -hunting, -pinching.
Hence (esp. in sense 4) Hundom, the state of being a „Hun‟; Hunless a., lacking
Germans, Hun-like a., like a Hun, impiously destructive; Hunnian, Hunnic, Hunnican,
Hunnish adjs., of, pertaining to, or like the Huns; Hunnish a., whence Hunnishness.
hun
colloquial abbreviation of HONEY. (emphasis added)
hun
variation of HOON n.
Yet, the presence of a common word does not defeat a finding of confusing similarity.
What matters is the impression of an average Internet user. The similarity between the
type of goods or services and the marketing method(s) used are other relevant factors.
The previous administrative decisions cited by they Respondent involve the
combination of a famous mark (PEPSI, PORSCHE, etc) and a generic word, or a
combination of two generic words indicative of the Complainant‟s services.
Given the high degree of similarity between the services offered, the Panel finds that
the domain name is confusingly similar to the Complainant‟s mark. The
disputed domain name consists of the word “hun” which is the abbreviation of the
Complainant‟s marks THE HUN‟S YELLOW PAGES and THE HUN‟S and is
therefore confusingly similar to the Complainant‟s mark. See Banque Saudi Fransi v.
ABCIB, WIPO Case No. D2003-0656. This is further heightened by the fact that the
Complainant itself uses the abbreviation “ the hun”, instead of the possessive form of
the word “the hun‟s” in its domain names and .
The Panel finds for the Complainant on this first part of the test.
B. Rights or Legitimate Interests
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The Complainant submits that the Respondent has no rights or legitimate interests in
the domain name based on Complainant‟s right in the marks THE HUN‟S
YELLOW PAGES and THE HUN‟S. The Respondent contends that he has right and
legitimate interests to use of the disputed domain name because the word
“hun” is a generic word and a common abbreviation for the word “honey”, and because
he is using the domain name as bona fide offering of goods or services.
According to Paragraph 4(c) of the Policy, a respondent may establish its rights or
legitimate interests in the domain name, among other circumstances, by showing any of
the following elements:
“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.”
There are no elements showing that the Respondent is or was commonly known by the
domain name. The Respondent is not making a legitimate non commercial use of the
domain name. To the contrary, the domain name is being used for commercial
purposes to generate income for the Respondent. The only option available to the
Respondent is thus subparagraph (i) above.
It has been established by numerous panels in the past that providing links to
pornographic websites, at least without any additional fact to support a finding of
legitimate interest, does not constitute a bona fide offering of goods or services.
See Microsoft Corporation v. Phayze Inc., WIPO Case No. D2003-0750; Microsoft
Corporation v. Party Night, Inc. d/b/a Peter Carrington, WIPO Case No. D2003-0501;
Ferrero S.p.A. v. Alexander Albert W. Gore, WIPO Case No. D2003-0513; Goodrich
Corporation v. bfg-fus.com, WIPO Case No. D2003-0477; Dell Computer Corporation
v. Clinical Evaluations, WIPO Case No. D2002-0423; Club Monaco Corporation v.
Charles Gindi, WIPO Case No. D2000-0936. Here, however, “adult” services are
offered by both parties and it would seem illogical to hold it against the Respondent
that he is offering services similar to those offered by the Complainant. The question,
therefore, boils down to whether the use of the domain name was bona fide, which is
related, indirectly at least, to the discussion on bad faith below. The Panel does not
need to make a finding on legitimate interest at this stage.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall
be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or 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 the Respondent's documented out-of-pocket costs directly related to
the domain name; or
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(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for
commercial gain, Internet users to Respondent‟s 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 Respondent‟s website or
location or of a product.
There is no evidence to support a claim under subparagraphs (ii) or (iii). As to (i), there
is evidence that the domain name may have been or will be offered for sale (the transfer
to DomainGrabber), but no evidence to suggest it was registered for that purpose.
The Panel must then proceed under subparagraph (iv) and any other material factor.
The Respondent contends that he registered the domain name in good faith, in 1999,
which is 4 (or 5) years prior to the Complainant‟s (Mr. Ter Wee‟s) registration of the
marks. The record indicates that the Complainant (Mr. Ter Wee) filed for the
registration in 2000 and 2001 respectively, and that the marks were registered
in 2003 and 2004.
It is difficult to prove bad faith registration in this case because the mark was registered
after the domain name. See Swissvoice ag v. Chan chin sung, WIPO Case
No. D2004-0672, Nãofumomais, Clínica de Homeopatia Antitabágica, Lda. v.
Re-Surgir - Consultores em Desenvolvimento Individual e Organizacional, Lda., WIPO
Case No. D2004-0399, John Ode dba ODE and ODE - Optimum Digital Enterprises v.
Intership Limited, WIPO Case No. D2001-0074; Digital Vision, Ltd. v. Advanced
Chemill Systems WIPO Case No. D2001-0827; PrintForBusiness B.V v. LBS
Horticulture, WIPO Case No. D2001-1182.
The fact that the Complainant had not registered its mark or even applied for
registration at the time of registration of the domain name bars any finding of
constructive knowledge. Did the Respondent otherwise have actual knowledge of the
Complainant‟s mark? The Complainant‟s applications mentioned that the marks have
been in use since 1995, and their domain names (, and )
were registered in 1996, which is prior to the registration of the disputed domain name
in 1999.
The Panel must thus only weigh the possibility that the Respondent knew of the
Complainant‟s mark and registered the domain name to intentionally attempt
“to attract, for commercial gain, Internet users to the Respondent‟s 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 Respondent‟s website or
location or of a product”, against the possibility that he registered a short form of the
common word “honey” in relation with an adult website (the Panel does not give much
credence to the Respondent‟s claim that “Hun” was used to refer to Attila‟s nomadic
tribe).
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In its supplemental filing, which the Panel does not consider as forming part of the
record for the reasons already mentioned, the Complainant asserts that the
Respondent‟s bad faith is “blatant” and “obvious” and notes that the Panel would come
to this conclusion if it had access to previous versions of the Respondent‟s website.
The Panel does not. In court proceedings, with access to discovery and depositions, the
conclusions reached as to the alleged bad faith of the Respondent may indeed favor the
Complainant. However, in the supplemental filing the Complainant does not indicate
that it could provide this information to the Panel and instead challenges the
Respondent to do so, which points to the need for provide evidence in a judicial
proceeding rather than in an administrative proceeding under the Policy.
In sum, in the absence of any sufficient evidence filed by either party on this point, the
Panel has no clear basis to favor either party on the third part of the test. Because the
Complainant has the burden of proof, the Panel must thus find for the Respondent. The
Panel notes, however, that because a likelihood of confusion seems to exist, the
Complainant may have additional rights and remedies under national trademark law if
it can provide actual evidence of the assertions made in its Complaint and the
supplemental statement.
8. Decision
For all the foregoing reasons, the Complaint is denied.
Daniel J. Gervais
Presiding Panelist
_____________________________ _____________________________
David, W. Quinto Nelson A. Diaz
Panelist Panelist
Dated: July 14, 2005
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