WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HBH Limited Partnership v. Richard Whitney
Case No.�D2006-1438
1. The Parties
Complainant is HBH Limited Partnership, of Norcross, Georgia, United�States�of�America, represented by Kilpatrick Stockton, LLP, of United�States�of�America.
Respondent is Richard Whitney, of North Grafton, Massachusetts, United�States�of�America, represented by ESQ Law Firm, of the United�States�of�America.
2. The Domain Name and Registrar
The disputed domain name, , is registered with NameScout�Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on November�9,�2006. On November�14,�2006, the Center transmitted by email to NameScout Corp. a request for registrar verification in connection with the domain name at issue. On November�15,�2006, NameScout transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details for the administrative and technical contacts and confirming the details of the registration agreement. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 November�21,�2006. In accordance with the Rules, paragraph�5(a), the due date for Response was December�11,�2006. The Response was received by the Center on December�12,�2006.1
The Center appointed Debra J. Stanek, Carol Ann Been and David Sorkin as panelists in this matter on March�5,�2007. 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.
Subsequent to the filing of the Complaint, on December�15,�2006, Complainant submitted to the Center, by e-mail, a Request for Permission to File Limited Reply, along with the Reply itself. Complainant’s request stated that exceptional circumstances justified the filing of the reply to respond to “unsupported and material misstatements with regard to the purported evidence [the Respondent] supplied” to the Panel, which could not have been anticipated by Complainant.
In Procedural Order No.�1, dated March�9,�2007, the Panel, pursuant to its discretion under Rules, paragraphs�10 and 12: (1) granted Complainant’s request to the extent that it presented new, pertinent facts that had not arisen, or responded to arguments or rebutted facts that could not have been reasonably anticipated, as of the time that the Complaint was filed and (2) granted Respondent until March�16,�2007 to file a supplemental submission limited to rebutting or responding to new facts or arguments raised in the Reply. In light of the need to consider the Reply and provide time for a possible submission by Respondent, the Panel found that “exceptional circumstances”, within the meaning of Rules, paragraph�15(b), warranted an extension of time until April�2,�2007 for forwarding its decision to the Center.
Respondent filed a supplemental submission on March�16,�2007.
4. Factual Background
Complainant and its predecessors have used the mark HONEY BAKED HAM for over fifty years. Complainant owns a federal trademark registration for the word mark HONEY BAKED HAM for spiral sliced glazed hams, registered in 1986, a federal trademark registration for a HONEY BAKED HAM design mark, as well as other registrations that include the term “honeybaked” and “honeybaked ham” for a variety of goods and services. Complainant has also registered numerous domain names that include the HONEY BAKED HAM mark, including , , and , using the domain names for websites that it uses to sell its products online.
The disputed domain name was registered on March�24,�2002. The web page for the disputed domain name presents sponsored search results related to hams and “honey baked hams” that are apparently provided by a third party.
5. Parties’ Contentions
A. Complainant
Complainant makes the following contentions:
Complainant’s predecessors first used the mark HONEY BAKED HAM for spiral sliced glazed hams in 1949. Since that time, it used the mark extensively and it has achieved a high degree of recognition among consumers. In addition to owning a number of federal registrations for marks including the term “honey baked”, Complainant has registered a large number of domain names that include its marks; those domain names are actively used by Complainant to sell its products.
The disputed domain name is confusingly similar to Complainant’s well-known HONEY BAKED HAM mark. The disputed domain name incorporates the mark in its entirety, merely adding an “s” to make it plural.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent registered the domain name long after Complainant established rights in its marks. Respondent’s knowledge of Complainant’s rights in its marks is evidenced by the fact that Respondent’s website includes links entitled “Honey Baked Ham Company” and “Honey Baked Ham Co.”, which are references to Complainant. Even if that were not the case, Respondent was obliged, under the Policy, paragraph�2, to “determine whether [his] domain name registration infringes or violates someone else’s rights”.
Because Complainant’s marks are so well known, there can be no legitimate use by Respondent.
Complainant has not authorized Respondent to use the domain name and neither it nor its subsidiaries or affiliates are affiliated with Respondent. Complainant asserts, on information and belief, that Respondent is not commonly known by the domain name.
Respondent is not using the mark in connection with a bona fide offering of goods or services because the Respondent’s website displays a number of “cost per click” links, from which Complainant asserts, on information and belief, Respondent generates revenue. For the same reasons, Respondent’s use cannot be said to be a legitimate noncommercial or fair use.
The Respondent registered and is using the disputed domain name in bad faith because:
(a) Respondent’s domain name incorporates Complainant’s distinctive mark in its entirety.
(b) Respondent is using the domain name for a site that acts as a portal for other sites for profit.
(c) In response to Complainant’s letters objecting to Respondent’s use of the domain name, Respondent claimed to be unaware of Complainant’s trademark, asserted that the term “honey baked hams” was descriptive, and stated that third party websites provide recipes for “honey baked hams”. Complainant asserts that this response was contrived because: (1) Respondent’s website featured links entitled “Honey Baked Ham Company” putting Respondent on notice of Complainant’s trademark rights, (2) Complainant’s mark is incontestable under U.S. federal trademark law and cannot be attacked on the grounds that it is descriptive, and (3) Respondent cannot rely on the wrongdoing of others to justify its own wrongful conduct.
B. Respondent
Respondent makes the following contentions:
Because Complainant does not own a registration for a mark that uses the term “honey baked hams”, in the plural form, the disputed domain name is not identical to any of Complainant’s marks. Because Complainant’s mark is descriptive, it is relatively weak as a trademark and entitled to only a very narrow scope of protection. Thus, the addition of the letter “s” is sufficient to distinguish the disputed domain name from Complainant’s mark.
Respondent has rights or legitimate interests in the domain name. The domain name uses the common term “honey baked ham”, which refers to a common method of preparing ham. In support, Respondent relies on the results of a Google search, intended to exclude references to Complainant that resulted in over 180,000 third party websites containing the term. Respondent registered the domain name because it was a common term when he was unaware of Complainant’s mark. Therefore, his registration establishes a legitimate interest in the domain name.
Further, Respondent uses the domain name for bona fide advertising services, posting advertising links to honey baked hams. The fact that some links are links to Complainant is a result of the actions of the third party that places search results on the page and ought not to render Respondent’s conduct illegitimate.
Complainant has not demonstrated that the domain name was registered and is being used in bad faith. To demonstrate bad faith, Complainant is required to provide “direct proof” that Respondent intended to profit from Complainant’s mark.
Because Respondent was unaware of Complainant, its marks, website, or business when he registered the domain name, he could not have registered the domain name in bad faith.
6. Discussion and Findings
A. Procedural Matters
It is worth noting that neither the Rules nor the Supplementary Rules provide for the filing of submissions other than a complaint and response.
Although litigants and parties in arbitrations may have a right of reply under the rules of other forums, ICANN chose a different procedure for these proceedings that calls for only a Complaint and a Response. Among other things, this more truncated procedure allows for more rapid and cost effective resolution of domain name challenges. [citation omitted].
See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No.�D2000-0270. The Rules do permit the Panel to request further documents and statements. See Rules, paragraph�12. Such requests always involve balancing the provisions of paragraph�10 of the Rules, which require the Panel to ensure both that “each Party is given a fair opportunity to present its case” and that the proceeding takes place with “due expedition”.
The Panel is of the view that supplementary submissions are appropriate only in exceptional cases, for example, the existence of new, pertinent facts that did not arise until after the party’s submission or the need to bring new, relevant authority to the Panel’s attention. To seek or accept supplemental submissions under other circumstances undercuts the streamlined procedure established by the Policy.
The Panel has reviewed the supplemental submissions of both Parties. The Panel considered only those few new facts and arguments presented that had not previously arisen and responses to arguments or rebuttal that could not have been reasonably anticipated, specifically:
(a) Complainant’s Reply
(1) In reply to the results of the excerpts of Respondent’s Google search, intended to exclude references to Complainant and show common use of the term “honey baked ham” by third parties, Complainant replies that the 25 results (of 40 shown) are references to Complainant’s brand name, franchises and stores, or products and services. Nine other results are for recipes, which may be recipes intended to replicate Complainant’s products.
(2) In reply to Respondent’s contention that he has a legitimate interest in the disputed domain name because he uses it to offer sponsored search results relating to “honey baked hams”, Complainant replies that most of the sponsored results link to competitors of Complainant, none of which sell “honey baked ham” or use the term “honey baked”.
(3) In reply to Respondent’s contention that Complainant’s mark is descriptive, Complainant clarifies that its products are cured, then smoked, not baked or baked in honey.
(b) Respondent’s Supplemental Response
(1) Respondent did not intend to mischaracterize the results of the Google search. Assuming Complainant’s characterization is correct, that means that 37% of the results – or 67,0000 – are to third party uses of “honey baked ham”. Because Complainant bears the burden of proof, the Panel should not make any assumptions about the websites that include recipes for “honey baked ham”.
(2) Respondent submits that advertisements for any type of ham are sufficiently related to a domain name incorporating the word “ham”.
B. Burden of Proof
In order to prevail, Complainant must prove:
(i) The domain name is identical or confusingly similar to Complainant’s HONEY BAKED HAM mark; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Policy, paragraph�4(a). The Policy sets out examples of circumstances that may evidence a Respondent’s rights or legitimate interests in a domain name, see Policy, paragraph�4(c), as well as circumstances that may evidence a Respondent’s bad faith registration and use, see Policy, paragraph�4(b).
C. Identical or Confusingly Similar
Complainant must establish that the disputed domain name is either identical or confusingly similar to its mark. Complainant’s federal trademark registration establishes its trademark rights in the mark HONEY BAKED HAM.
Respondent argues that the Panel should consider the strength of Complainant’s mark in evaluating this element. Neither the Policy nor the Rules expressly articulate a test for determining “confusing similarity”.
The Panel concludes that the degree of resemblance between the Complainant’s mark and the disputed domain name determines confusing similarity, more than a consideration of the status of the mark. Even if that were not the case, however, the fact of Complainant’s incontestable federal trademark registration for the mark HONEY BAKED HAM would weigh heavily in favor of Complainant.
Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark. It includes the mark in its entirety, adding only the letter “s” at the end to make it plural. In considering identity or confusing similarity, the “.com” top-level domain, the lack of any spaces between the terms “honey”, “baked”, and “ham” are not relevant, and the addition of the letter “s” is insignificant.
Accordingly, the Panel finds that Respondent’s domain name is confusingly similar to a mark in which Complainant has rights.
D. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the domain name by making a prima facie showing that respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph�4(c) of the Policy sets out the following examples:
(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.
Respondent does not argue that he is commonly known by the domain name or that he is making a noncommercial or fair use of the domain name. Instead, he argues that his lack of knowledge of Complainant, its business, and its marks (supported by his affidavit) establish that he is using the domain name in connection with a bona fide offering of goods or services.
As noted above, the disputed domain name is confusingly similar to Complainant’s mark. Visitors to the site are presented with what appear to be links related to Complainant as well as to its competitors. Given Complainant’s long-time and extensive use of the HONEY BAKED HAM mark and the domain name, it is difficult to conceive of circumstances in which Respondent might make a bona fide offering, particularly of similar goods or services. Instead, the Panel concludes that the facts presented, and the inferences drawn from those facts, provide sufficient support of Complainant’s contention that Respondent registered and was using the disputed domain name to divert those seeking the Complainant’s site, in a manner that cannot be said to be bona fide.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
E. Registered and Used in Bad Faith
As noted above, the disputed domain name is confusingly similar to the HONEY BAKED HAM mark. It is therefore reasonable to conclude that Respondent’s site would attract visitors who are actually seeking Complainant’s site. Respondent had constructive notice of Complainant’s marks by virtue of its trademark registrations. Further, the Panel does not find credible Respondent’s claim that he was unaware of Complainant’s mark at the time he registered the domain name. Even if Respondent believed that the term “honey baked ham” was descriptive, such a belief was not reasonable under the circumstances. The Panel concludes that the domain name was registered and is being used to “intentionally attempt to attract, for commercial gain, Internet users . . . , 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 or service on [Respondent’s] website or location”. See Policy, paragraph�4 (b).
Under these circumstances, the Panel finds that Respondent has registered and used the disputed domain name in bad faith.
7. 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 name, be transferred to the Complainant. Debra J. Stanek
Presiding Panelist Carol Anne Been
Panelist David E. Sorkin
Panelist
Dated: April�2,�2007
1 The Response was timely submitted because it was submitted on December 11, 2006 from the United�States of America.
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