WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hines Interests Limited Partnership v. Christian Zeller/N/A
Case No. D2004-0259
1. The Parties
The Complainant is Hines Interests Limited Partnership, ("Hines") of Houston, Texas, United States of America and is represented by Baker Botts L.L.P., also of Houston, Texas, United States of America.
The Respondent is Christian Zeller/N/A, ("Zeller") of Bayreuth, Germany.
2. The Domain Name and Registrar
The disputed domain name is registered with Direct Information Pvt Ltd, dba D.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 6, 2004. On April 7, 2004, the Center transmitted by email to Direct Information Pvt Ltd. dba D., a request for registrar verification in connection with the domain name at issue. On the same date, the said Registrar transmitted by email its verification response confirming that the Respondent was 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 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 April 13, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2004. The Respondent did not submit any response. Accordingly, the Center notified the parties
The Center appointed James G. Fogo as the sole panelist in this matter on May 11, 2004. The Panel finds that the procedure was properly constituted. The Panel has submitted an executed Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The language of the proceeding was English.
4. Factual Background
Through its attorneys, the Complainant asserts the following facts, which have not been disputed by the Respondent.
The Complainant was founded in 1957 in the United States of America and has grown since its inception to establish operations in more than ninety cities on four continents. It has provided services in the real estate industry including management, development, commercial building, construction and supervision, renovation and repair, leasing and brokerage.
While initially carrying on business under its full name, Hines Interests Limited Partnership, over time the marketplace came to recognize and use the abbreviation "Hines" in association with the Complainant's operations. In 1995 Hines officially shortened its mark to "HINES" acting to reflect the name that the marketplace already associated with the partnership.
The Complainant secured registration of the "HINES" word mark in Germany on October 26, 1996. Certificates of registration protecting the trademark "Hines" in the European Union were granted on March 25, 2002.
Hines has registered rights in the mark "Hines" or "HINES" in Argentine, Brazil, Canada, Chile, China, the Czech Republic, France, Mexico, Poland, Russia, Spain, Thailand, the United Kingdom and the United States. The trademark registrations generally extend to real estate and construction related services.
By reason of its extensive use of its marks in many jurisdictions, Hines possesses common law rights to the marks "HINES" in capital letters and "Hines" in a distinctive type and are well known in many countries.
In May of 1996, the Complainant adopted and registered the domain name . This step was taken because the name of choice, , had been registered by another party. The Complainant included the letters "ww" which were intended to suggest a worldwide scope of service. Subsequently, the Complainant was able to acquire the rights to the domain name . However because of the public's familiarity with the domain name , the Complainant maintained the earlier site until it lapsed in 2003. A few months later, on November 21, 2003, the Respondent registered the disputed domain name which was identical to the Complainant's interim domain name. The Respondent did not seek from the Complainant any permission or licence to adopt this domain name now in issue.
In the absence of any submissions by the Respondent, the Panel accepts the evidence set out above as to the Complainant's trademark rights and the Complainant's allegations that the Hines trademarks have become well known in association with its services in many countries of the world.
5. Parties' Contentions
A. Complainant
The Complaint is made on the basis that:
(a) the disputed domain name is nearly identical and confusingly similar to the Complainant's trademark. The Respondent's domain name incorporates the Complainant's trademark previously registered and widely used by the Complainant prior to the registration of the domain name in dispute. The domain name differs only in the addition of a hyphen and two letters "-ww". Neither addition is sufficient to distinguish the domain name from the trademark. Given the fact that at an earlier date the Complainant had previously registered and used the identical domain name to that now in dispute, the potential for confusion would likely be significantly increased.
The Complainant states that it has rights in the trademark "HINES" from at least as early as 1995 and its registered trademark is well known in many countries including Germany.
(b) the Complainant asserts that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not been authorized by the Complainant to register or use the domain name, nor is the Complainant any way related to, associated with or carrying on a business with the Respondent. For a short time, the Respondent operated a commercial pornographic website at the domain name but more recently the website changed to link to third party pornographic websites.
(c) the disputed domain name has been registered and used in by the Respondent in bad faith. The Respondent registered the domain name for the purpose of attracting and diverting consumers for commercial gain in direct contravention of paragraph 4(b)(iv) of the Rules.
The disputed domain name should be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with Policy, these rules and any rules and principles of law that it deems applicable".
In view of the Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the representations pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the Respondent 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.
A. Identical or Confusingly Similar
The domain name is .
HINES in block capitals and in stylized lettering are registered trademarks of the Complainant. The trademark has been registered in a number of jurisdictions including North and South America, Europe, Russia, the Far East. It was registered in 1996 in Germany, where the Respondent resides. Further, the Complainant possesses common law rights, created by reason of its well known use of the marks in many countries.
The disputed domain name consists of the trademark of the Complainant to which a hyphen and the letters "ww" have been added. These additional elements do not influence the consideration of identity or similarity. The hyphen in a domain name has been held not to avoid essential identity with a complainant's mark. The letters "www", have often been held to have little or no distinctiveness when sought to distinguish a domain name from another party possessing a well known trademark. The variance "ww" would likely be in no better position.
It has been well established by UDRP panel decisions that a domain name incorporating a distinctive trademark in its entirety creates sufficient similarity between the trademark and the domain name as to render the latter confusingly similar.
Because of the visual similarity and the Respondent's adoption of an identical mark previously maintained by the Complainant, the Panel finds that the domain name is confusingly similar to the trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for a domain name which incorporated any elements of the Complainant's trademark.
The Respondent has not disclosed any registration of the trademark acquired by the Respondent in Germany or elsewhere.
There is no evidence that the Respondent was commonly known by the domain name.
There is no suggestion that the Respondent is a non commercial or fair use of the mark.
Initially, the Respondent operated for a short time an active and commercial pornographic website, which, in a printout, highlighted the participation by teens in porno photos and movies. However, within four to five months of obtaining the domain name, the Respondent had changed his use of the domain name to redirect users to third party pornographic websites. Teen aged subject matter continued to be referred to in the listings of available pornographic material offered by the third parties.
In the absence of evidence from the Respondent, it seems reasonable that one can fairly assume that the purpose of the Respondent in registering the domain name was to attract an existing audience of favourable reputation, built up over time by the Complainant, and to divert that audience to various pornographic websites.
The Respondent was not making legitimate non-commercial or fair use of the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has made no attempt to counter the allegations of the Complainant.
The Panel finds that the Respondent does not have any rights or legitimate interests in the domain name .
C. Registered and Used in Bad Faith
The Policy set out in paragraph 4(b) of the Rules indicates that in certain circumstances may, in particular but without limitation, be evidence of bad faith.
The Complainant alleges that the Respondent registered and used the domain name in bad faith in at least paragraph 4(a)(iv).
Evidence obtained by the Complainant of samples of the Respondent's documentation, disclosed invitations to have free access to visit numerous pornographic sites, obviously to attract customers. There is also evidence of three day trial sites, requiring the payment of money by credit card or check. There is no reason to believe that money was not involved in transactions of the Respondent's direct or indirect use of the disputed domain name.
A number of cases have held that the redirection to pornographic sites from a domain name incorporating the trademark of another company is, per se, evidence of bad faith.
Further, it has been held that the acquisition and use of a lapsed domain name to divert traffic to a pornographic website raises an overwhelming presumption that the registration and use of the domain name is to trade upon the confusion with the Complainant's trademark and the residual reputation of the Complainant's original website. The Board of Regents of the University of Nebraska v. Karolek, WIPO Case No. D2003-0307.
The subject matter displayed on the Respondent's website either directly or via third party connections is likely to tarnish or detract from the Complainant's reputation and disrupt its business.
The Respondent failed to submit any evidence to prove that he had used the disputed domain name in good faith, although he had ample opportunity to make representations.
The Panel finds that the domain name was registered and has been used by the Respondent in bad faith.
7. Decision
The Panel concludes that:
(a) the domain name is confusingly similar to the Complainant's trademark(s);
(b) the Respondent has no rights or legitimate interest in the domain name in dispute;
(c) the domain name in dispute has been registered and is being used in bad faith.
Therefore, for all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
James G. Fogo
Sole Panelist
Dated: May 24, 2004
Full & Egal Universal Law Academy