The Complainant is Hamilton Beach Brands, Inc. of Glen Allen, Virginia, United States of America, represented by Threshold Counsel, PC, United States of America.
The Respondent is Metcalfe Catering Equipment Ltd. of Gwynedd, United Kingdom of Great Britain and Northern Ireland ("UK"), internally-represented. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Melbourne IT Ltd (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 20, 2014. On November 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 24, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 proceeding commenced on November 28, 2014. The Respondent requested and was granted an extension of time to file its Response in this matter. The extended due date for Response was December 22, 2014. The Response was filed with the Center on December 22, 2014.
The Center appointed Nicholas Smith as the sole panelist in this matter on January 6, 2015. 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.
On January 12, 2015, the Complainant sought to file an unsolicited Amendment to the Complaint. The Amendment was in the nature of a supplemental filing of additional evidence going to bad faith. As the Supplemental Filing, concerned matters that had occurred prior to the filing of the Complaint and there were no exceptional circumstances that justified the admission of the Supplemental Filing, the Supplemental Filing was not accepted by the Panel. 4. Factual Background
The Complainant is a manufacturer and distributor of appliances in the United States of America and internationally. It includes a division named Hamilton Beach Commercial that provides appliances to hospitality industries and well as commercial food services equipment.
The Complainant is the owner of a number of trade marks consisting of HAMILTON BEACH (the "HAMILTON BEACH Mark"), for various electrical apparatus, first registered in the United States in 1949.
The Domain Name was registered on September 19, 2000. The Domain Name resolves to a website at "" (the "Respondent's Website"), which promotes the Respondent's business, a manufacturer and supplier of commercial food preparation equipment in the UK. The Respondent's Website promotes the Respondent and offers for sale a variety of commercial food preparation equipment including equipment manufactured by the Complainant and equipment manufactured by companies unrelated to the Complainant. There is no clear disclaimer that the Respondent's Website was not associated with the Complainant however on a page accessible through links it is stated that the Respondent distributes the Complainant's products. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's HAMILTON BEACH Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the HAMILTON BEACH Mark. It owns trade mark registrations for the HAMILTON BEACH Mark in the United States and the European Community.
The Domain Name consists of the HAMILTON BEACH Mark and the word "commercial". The Domain Name is confusingly similar to the HAMILTON BEACH Mark as the HAMILTON BEACH Mark is incorporated in its entirety in the Domain Name.
The Respondent has no rights or legitimate interests in the Domain Name. The Complainant has not authorized the Respondent to use and register any domain name incorporating the HAMILTON BEACH Mark. While the Respondent's Website does promote the Complainant's products, it does not use the site to sell only the Complainant's products, it does not accurately disclose the Respondent's relationship with the mark owner and the Respondent is using the HAMILTON BEACH Mark to drive traffic to its website. Such use does not grant rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Domain Name was registered despite the Respondent being aware of the Complainant and having no prior rights in the HAMILTON BEACH Mark. This is sufficient to establish bad faith registration and use. B. Respondent
The Respondent has distributed the Complainant's products in the United Kingdom for over 22 years. The Domain Name was registered in 2000 by the Respondent for the purposes of building the Hamilton Beach brand in the United Kingdom. The Respondent has never, until now, received any communication from the Complainant asking it to cease the use of the Domain Name.
The Respondent has rights and legitimate interests in the Domain Name because, from the Respondent's Website, it does sell the Complainant's products, and represents the Complainant on the Respondent's Website in good faith. The Respondent clearly states that it is a distributor of Hamilton Beach products and has not cornered the market in domain names relating to the HAMILTON BEACH Mark. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element, the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the HAMILTON BEACH Mark, having registrations for the HAMILTON BEACH Mark in the United States and the European Union.
The Domain Name consists of the HAMILTON BEACH Mark and the word "commercial". The addition of a generic noun to a domain name that otherwise incorporates a mark in its entirety typically does not prevent a finding of confusing similarity. Furthermore the addition of "commercial", which describes a division of the Complainant, may have the effect of increasing the confusion, as a person viewing the Domain Name may be confused into thinking the Domain Name referred to a site run by that division of the Complainant.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant's HAMILTON BEACH Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 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." (Policy, paragraph 4(c))
In this case, the Respondent has not been authorized by the Complainant to register the Domain Name.
The evidence is unclear as to the extent of the relationship between the Respondent and the Complainant, with no formal agreement provided either with the Complaint or the Response. However, accepting the Respondent's evidence at its highest, the Respondent entered into a distribution agreement with the Complainant in 1993 for it to distribute Hamilton Beach products and has done so for 22 years. In any event, there is no evidence of any agreement with the Complainant, either written or otherwise, that authorized the Respondent to register the Domain Name or any domain names that were similar to the HAMILTON BEACH Mark. In the absence of such evidence, which one would expect to be in the possession of the Respondent, the Panel finds that the Respondent was not authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the HAMILTON BEACH Mark or a mark similar to the HAMILTON BEACH Mark. There is also no evidence that the Respondent is commonly known by the Domain Name or any similar name. Nor is the Respondent making a noncommercial use of the Domain Name.
The question that needs to be decided is whether the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services.
This Panel finds that the Respondent's present use of the Domain Name, to redirect Internet users to the Respondent's Website, does not amount to a bona fide offering of goods and services. The Respondent's Website is a website that promotes the Respondent and offers a variety of products, including goods by the Complainant. It is not disputed that these goods are genuine. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") summarizes the consensus views of UDRP Panels in response to the question about whether a reseller/distributor of trade marked goods or services has rights or legitimate interests in a domain name which contains such a trade mark in the following manner:
"Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to 'corner the market' in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark."
The Respondent does not maintain a website at "www.". Rather the Domain Name redirects to the Respondent's Website which promotes the Respondent generally and the various products that it sells. In this case, the Respondent's Website is not used to only sell the Complainant's products. Rather it is used to sell products manufactured by the Respondent and other products that the Respondent distributes that may compete with the Complainant. The sale of the Complainant's products only takes place on a small part of the Respondent's Website. The Respondent's Website also promotes the Respondent's services and repairs. This type of use does not grant the Respondent rights or legitimate interests in the Domain Name.
While the Respondent has suggested that it has rights by reason of its use of the Respondent's Website to sell, among other things, the Complainant's products, the issue with the Respondent's conduct, identified in many previous UDRP cases, is that members of the public who are interested in Hamilton Beach products may have visited or could visit the Respondent's Website with the intention of purchasing the Complainant's products on the assumption that the Respondent is the Complainant itself or offers only the Complainant's products. This is not the case. There is no disclaimer on the Respondent's Website disclosing the Respondent's relationship with the Complainant. The visitor to the site may then decide to purchase products that are not those of the Complainant and the Complainant suffers as a result.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name' registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent's website or location or of a product or service on the Respondent's website or location. (Policy, paragraph 4(b))
The Panel finds that the Respondent was aware of the Complainant and its reputation in the HAMILTON BEACH Mark at the time the Domain Name was registered. The Respondent was at the time a distributor of the Complainant's products. However, it appears as indicated above that the Complainant has not authorized the Respondent to register the Domain Name.
The Panel finds that the Respondent has registered and used the Domain Name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's Website. The Panel reaches this conclusion for the following reasons:
The Respondent registered the Domain Name when it was aware of the Complainant's rights in the HAMILTON BEACH mark and lacked rights and legitimate interests of its own, having not apparently received any permission from the Complainant to register a Domain Name that contained the HAMILTON BEACH Mark. The Respondent's conduct in registering the Domain Name when it was aware of the Complainant's rights and lacked rights and legitimate interests of its own amounts to registration in bad faith.
The Respondent then used the Domain Name to redirect Internet users to its own website, which offers a variety of goods and services, including the products of the Complainant and other products that compete with the Complainant's products. In essence, presently, and potentially for a considerable period of time before the present, Internet users who type in the Domain Name, hoping to reach a site authorized by the Complainant are redirected to a website associated with the Respondent, which sells other products, including products that compete directly with those of the Complainant. The Respondent can be presumed to gain a benefit out of re-directing consumers who visit the Domain Name to the Respondent's Website. This amounts to use in bad faith.
The Panel notes that the Respondent has registered the Domain Name for close to 14 years and, taking the Respondent's evidence at its highest, the Complainant has not objected to its registration and use until now. While a small number of panels have also begun to acknowledge the possible applicability, in appropriate and limited circumstances, of a defense of laches under the Policy where the facts so warrant, the present case is not a case where the facts so warrant. There is no evidence that the Complainant was aware of the registration of the Domain Name in 2000 nor that it had ever given its permission, on an express or implied basis, for the registration and use of the Domain Name. Finally there is no evidence that the Respondent has detrimentally relied on any statement or action of the Complainant; the Respondent has not created an operating website at the Domain Name, rather the Domain Name simply redirects to the Respondent's Website.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. 7. Decision
For 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.
Nicholas Smith
Sole Panelist
Date: January 13, 2015
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