WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HBH, Limited Partnership. v. Marketing Total S.A.
Case No. D2006-1452
1. The Parties
The Complainant is HBH, Limited Partnership, Cincinnati, Ohio, United States of America, represented by Kilpatrick Stockton LLP, United States of America.
The Respondent is Marketing Total S.A., Charlestown, West Indies, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name is registered with DomainDoorman, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November�13,�2006. On November�15,�2006, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On November�15,�2006, DomainDoorman, LLC 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 on November�22,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December�12,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December�14,�2006.
The Center appointed Adam Samuel as the sole panelist in this matter on December�22,�2006. 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
The Complainant owns two trademarks registered in the United States of America for the name HONEYBAKED. It also has numerous registered trademarks beginning with the names “honey” and “baked”, a number of which begin “HONEYBAKED. It also owns a registered trademark in HONEY BAKED HAM and others which contain the expression HONEY BAKED HAM in various forms. It and its licensees use these marks to sell about USD 200 million worth of honey-baked ham and other related products. They have sold their products over the Internet since 1995. On December�9,�2003, the Complainant registered the domain name which is the domain name in issue with the insertion of the word “ham” between “baked” and “store”.
5. Parties’ Contentions
A. Complainant
The Complainant has trademark rights through registration and extensive use to the name HONEYBAKED. The domain name in issue is confusingly similar to this because it involves only the addition of the generic word “store” to the trademark. In addition, because the Complainant owns and uses the domain name to sell its products, the domain name in issue is confusingly similar to the Complainant’s trademark rights in HONEY BAKED HAM.
The Respondent has no right or legitimate interest in the names HONEY BAKED HAM or “honey baked store”. The Complainant has no connection with the Respondent and has not authorized the Respondent to use its trademarks in any way.
The Respondent registered its domain name long after the Complainant’s HONEYBAKED trademark became famous. The Respondent is using the Domain Name to divert traffic to a linking portal for profit.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it 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 Complainant has trademark rights under the law of the United States of America in the name HONEYBAKED. The disputed domain name involves the addition to this name of the generic word “store” to a registered trademark. In Lilly ICOS LLC v. Mama Mia WIPO Case No. D2006-0385, the panelist said:
“The generic term “store” and the gTLD “.com” have no trademark significance and, thus, their addition to the domain name does not avoid a finding of confusing similarity between CIALIS and . See Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750 (addition of words “drug,” “online,” “buying,” and “guide” to CIALIS mark did not eliminate confusing similarity between CIALIS and domain name); Lilly ICOS LLC v. Dylan Dupre, WIPO Case No. D2006-0331 (domain name ordered transferred); Lilly ICOS LLC v. Ronald Bode, WIPO Case No. D2006-0366 (domain name ordered transferred).
The Panel further concludes that, as a result of its registration and use of the CIALIS mark, Complainant clearly has rights in such mark.”
For the same reasons, the Panel concludes here that the addition of the generic word “store” to a trademark name HONEYBAKED does not prevent the domain name from being confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent does not have “honey baked” in its name. It does not produce “honey baked” goods. It does not appear to trade under that name. There is no evidence that the Complainant has authorized it to use the mark. The Respondent has never asserted any rights or legitimate interests in the name. For these reasons, on the basis of the case file, and in view of the absence of a Response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
The domain name in issue resolves to a web page advertising and providing click-through links to a number of other sites mainly focusing on HONEY BAKED HAM products, some of which compete with the Complainants’ products. The site also contains a link to the Complainant’s products with a registered trademark moniker against the name HONEYBAKED HAM. This all shows that the Respondent was aware of the Complainant’s business and at least one of its registered trademarks when setting up the website. The Respondent is clearly aware of the Complainant’s trademark rights. Yet, it has chosen to use one of its trademark names HONEYBAKED to promote products that compete with the Complainant.
The fact that the Respondent is using the domain name in issue to divert customers to competitors of the Complainant is further evidence of bad faith.
The Panel in Banca di Roma S.p.A. v. Unasi Inc. a/k/a Domaincar, WIPO Case No.�D2006-0068, agreed that this type of behaviour constituted bad faith. It said:
“The Respondent is linking the disputed domain name to a portal site offering sponsored links. There, Internet users have access to a variety of goods and services, among them websites of the Complainant’s competitors. As described by the panelist in Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No.�D2003-0584, such websites offer a revenue program which pays domain name owners (in the particular case) “50% of all revenues generated from searches, popunders, popups, and exit popups” in respect of users directed to its website through the participants domain name.
This leads the Panel to the conclusion that the Respondent registered the domain name at issue to divert Internet users seeking information about the Complainant’s products to a portal site offering sponsored links and to share in revenues obtained from the diverted traffic. Even if Internet users would realize that the Respondent’s website is not connected with the trademark owner, the Respondent is liable to profit from their initial confusion, since they may still be tempted to click on sponsored links. In many previous UDRP decisions, in some of them the Respondent was involved as a respondent party as well, such exploitation of trademarks to obtain click-through commissions from the diversion of Internet users was held of use in bad faith … In the absence of any reply of the Respondent, the Panel can make a reasonable inference that the Respondent’s website generates revenue for the Respondent in that manner.”
The Respondent appears to know about the Complainant’s trademark rights. It is using one of the names to which the Complainant has rights to promote competitors’ products. It presumably does this in order to earn or seek revenue from “click-throughs” from its site to those it advertises.
For all these reasons, the Panel concludes that the Respondent has both registered and used the domain name in issue 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.
Adam Samuel
Sole Panelist
Dated: January 5, 2007
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