The Complainant is Hajoca Corporation, United States of America, represented by Sisun Law, United States of America.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Diane Holland, Jasper Jim Enterprises, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2021. On December 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 13, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant did not file any amendment to the Complaint.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 20, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2022.
The Center appointed Evan D. Brown as the sole panelist in this matter on February 22, 2022. 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 BackgroundThe Complainant is in the business of providing goods and services relating to plumbing, heating, and industrial supplies. It owns the trademark HAJOCA, which has been in use since at least as early as 1911, and is registered in a number of forms in the United States of America. The word mark HAJOCA is the subject of Registration No. 5,133,927, registered on January 31, 2017. The mark HAJOCA WATERWORKS WATER, SANITARY, STORM SEWER SUPPLIES SINCE 1858 (and Design) is the subject of Registration No. 3,710,210, registered on November 10, 2009.
According to the WhoIs records, the disputed domain name was registered on March 6, 2013. The Respondent used a privacy service to obscure its identity. The Respondent has not used the disputed domain name in connection with an active site, but only in connection with a template placeholder page.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsTo succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name, and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel finds that all three of these elements have been met in this case.
A. Identical or Confusingly SimilarThis element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and, second, whether the disputed domain name is identical or confusingly similar to that mark. This element under the Policy functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the HAJOCA mark by providing evidence of its trademark registrations. The disputed domain name incorporates the HAJOCA mark in its entirety. This is sufficient for showing confusing similarity under the Policy.
The Complainant has succeeded under this first element.
B. Rights or Legitimate InterestsThe Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondent (with the burden of proof always remaining with the Complainant).
On this point, the Complainant asserts, among other things, that (1) the Respondent received no authorization from the Complainant to use or register the HAJOCA mark, or any colorable imitation thereof, including as part of the disputed domain name, (2) given the coined, distinctive nature of the HAJOA mark, there is no plausible reason for the Respondent to register the disputed domain name, other than to exploit the Complainant’s trademark rights, (3) the Respondent is not commonly known by the disputed domain name, (4) the Respondent cannot establish use of the disputed domain name in connection with a bona fide offering of goods or services, and (5) the Respondent has not, and has never been, commonly known by the disputed domain name.
The Panel finds that the Complainant has made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing and nothing in the record otherwise tilts the balance in the Respondent’s favor.
Furthermore, the nature of the disputed domain name, incorporating the Complainant’s widely known trademark and a dictionary word “store”, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
Accordingly, the Panel finds that the Complainant has established this second element under the Policy.
C. Registered and Used in Bad FaithThe Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [the respondent’s] website or location”.
Because the Complainant’s HAJOCA mark is well-known, having been in use for over a century before the registration of the disputed domain name, and has been registered in some form with the United States Patent and Trademark Office since before registration of the disputed domain name, the Panel finds it likely that the Respondent was aware of the HAJOCA mark when it registered the disputed domain name. In the circumstances of this case, without the benefit of any explanation whatsoever from the Respondent as to a possible good faith use of the disputed domain name, such a showing is sufficient to establish bad faith registration of the disputed domain name.
The circumstances also demonstrate bad faith use of the disputed domain name in terms of the Policy. Where a disputed domain name is “so obviously connected with such a well-known name and products, its very use by someone with no connection with the products suggests opportunistic bad faith.” See Parfums Christian Dior v. Javier Garcia Quintas,WIPO Case No. D2000-0226.
Furthermore, from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank page) would not prevent a finding of bad faith under the doctrine of passive holding (see section 3.3 of the WIPO Overview 3.0. The Respondent’s bad faith is also evidenced by its use of a privacy service to obscure its identity. Pet Plan Ltd v. Mohammed Nahhas,WIPO Case No. D2021-1964.
The Complainant has succeeded under this third Policy element.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name
Evan D. Brown
Sole Panelist
Date: March 8, 2022