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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Old World Industries, Inc. v. Max Davidovich

Case No. D2006-1138

1. The Parties

The Complainant is Old World Industries, Inc., United States of America, represented by Daniel M. Leep, Complainant’s Secretary and General Counsel.

The Respondent is Max Davidovich, Kiev, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <herculinertough.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2006. On September 8, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 11, 2006, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for its 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 September 14, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2006.

The Center appointed Assen Alexiev as the Sole Panelist in this matter on October 26, 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.

In accordance with the Rules, paragraph 11(a), the language of this administrative proceeding is English.

4. Factual Background

Complainant is the owner of the following registered trademarks:

- HERCULINER, registered for the territory of the United States of America, with registration No. 2,615,658, registered on September 15, 2002;

- HERCULINER, registered for the territory of Mexico, with registration No. 857457, registered on October 28, 2004; and

- HERCULINER, registered for the territory of Taiwan, with registration No. 01147456, registered on March 31, 2005.

Complainant is also the owner of the domain name <herculiner.com>.

The Domain Name was registered by Respondent on May 17, 2005.

5. Parties’ Contentions

A. Complainant

1. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

Complainant claims that the Domain Name incorporates the HERCULINER trademark, registered by the Complainant, and uses it in close proximity with the word “tough”, thus making the Domain Name confusing similar to the trademark of the Complainant.

2. Respondent has no rights or legitimate interests in respect of the Domain Name.

Complainant contends that Respondent has no apparent rights or legitimate interests in the Domain Name. Respondent uses the Domain Name only to refer Internet users to pornography, pharmaceutical and gambling sites. There is no evidence that Respondent operates any business or offers any goods or services that use, invoke or are related to the HERCULINER mark or the HERCULINER branded products. There is no evidence that Respondent is or has been commonly known by the Domain Name, or that Respondent is in any other way connected with the Domain Name. The Respondent is not making legitimate non-commercial or a fair use of the Domain Name. Respondent is not connected with the Complainant, it is not a competitor of the Complainant, and Respondent does not offer any automotive-related products at its website.

3. The Domain Name was registered and is being used in bad faith.

Complainant states that its advertising agency originally purchased the Domain Name through Network Solutions. Complainant used the Domain Name in a product promotion from May 2005 to May 2006, as a “micro site” in combination with Complainant’s corporate website at “herculiner.com”. The renewal notice was not received by Complainant’s Legal Department. As a result, the Complainant did not renew or obtain the Domain Name and the Complainant’s right to operate and control the same expired in May 2006.

Complainant further contends that Respondent has no apparent legitimate business or commercial connection to Complainant or its HERCULINER product, and is using the Domain Name to operate a website that contains only links to pornographic, pharmaceutical and gambling websites. Complainant contends that it is apparent that the Respondent is intentionally attempting to exploit the Complainant’s goodwill and reputation, and to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Name. Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022 (“whatever the motivation of Respondent, the diversion of domain names to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”; “it is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping and other pernicious online marketing techniques”) and in Hoffman-LaRoche Inc. v. WhoisGuard, WIPO Case No. D2005-1288, “Whether or not Respondent profits directly from the redirection of the disputed domain name to a commercial website is not determinative. The fact is that someone other than the Complainant is profiting from the use of the disputed domain name - a name that is confusingly similar to Complainant’s mark. Consequently, the for-profit nature of the use of the disputed domain name may be imputed to Respondent”.

Respondent has a history of registering domain names in bad faith. Hartsfield Area Transportation Management Association, Inc. v. Max Davidovich, WIPO Case No. D2006-0743.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, the Complainant must prove each of the following:

(i) That 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) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) That the Respondent has registered and is using the Domain Name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to Respondent, in compliance with Rules, paragraph 2(a), and Respondent was given a fair opportunity to present its case.

By paragraph 5(b)(i) of the Rules, it is expected of Respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…” In the event of a default, under paragraph (14)(b) of the Rules: “…the Panel shall draw such inferences therefrom as it considers appropriate.”

As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.”

As stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

In this administrative proceeding, Respondent’s default entitles the Panel to conclude that Respondent has no arguments or evidence to rebut the assertions of Complainant. The Panel accordingly makes its decision on the basis of the statements and documents submitted by Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

Complainant has provided evidence and has thus established its rights in the trademark HERCULINER, registered in three jurisdictions.

It is an established practice to disregard the gTLD “.com” for the purposes of the comparison under Policy, paragraph 4(a)(i).

The Domain Name contains the word “herculiner” and the English word “tough”. The word “tough” in the Domain Name is descriptive in its character and the Complainant has claimed its use in relation to the products offered by it. The addition of this word to the word “herculiner”, which is identical to the Complainant’s trademark of the Complainant, makes a combination that clearly refers to the products offered by the Complainant. The combination of the two words in the Domain Name makes it confusingly similar to the trademark. Minnesota Mining and Manufacturing Co. v. Mark Overbey, WIPO Case No. D2001-0727.

Therefore, the Panel finds that Complainant has established the first element of the test, required under paragraph (4)(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant has contended that Respondent has no rights or legitimate interests in the Domain Name, claiming that Respondent’s conduct does not meet any of the criteria set in Policy, paragraph 4(c).

The Panel is satisfied that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.

Once Complainant makes out a prima facie case under paragraph 4(a)(ii) of the Policy, the burden shifts to Respondent to rebut the showing by providing evidence that it has rights to or legitimate interests in the Domain Name.

Respondent, by its default, has chosen not to present to the Panel any allegations or documents in its defense despite its burden under paragraph 5(b)(i) and 5(b)(ix) of the Rules, or the consequences that the Panel may extract from the fact of a default (paragraph 14 of the Rules). If Respondent had any legitimate reason for the registration or use of the disputed Domain Name, it could have brought it to the attention of the Panel. In particular, Respondent has failed to contend that any of the circumstances described in Policy, paragraph 4(c) - or any other circumstance not anticipated in the Policy - are present in its favor.

In fact, the only information available to the Panel about Respondent is the Whois information, provided by the Registrar, and the content of the website, associated to the Domain Name.

The Whois information contains no evidence of rights or legitimate interests of Respondent in the Domain Name, apart from its rights as registrant of the latter. As evidenced from the communication records contained in the case file, Respondent’s mailing address provided to the Registrar, is wrong or incomplete. If Respondent had a legitimate reason to hide his identity or whereabouts, he could have brought it to the attention of the Panel. As this was not done, the Panel is prepared to accept that Respondent’s failure to provide correct contact information is evidence of its lack of rights and legitimate interests in the Domain Name.

Further, the Panel notes that the Domain Name contains no original content of its own that may be regarded as showing any active business of the Respondent. The website at the Domain Name contains only links to apparently pornographic, gambling or pharmaceutical websites. Therefore, it is likely that the only purpose of the website is to attract Internet users by deception. The Panel finds no reasons to regard the use of a Domain Name confusingly similar to Complainant’s trademark for the above purposes as bona fide use that can establish rights or legitimate interests in the Domain Name.

Therefore, as the evidence supports the contentions of the Complainant, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name, and that Complainant has established the second element of the test, required under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Domain Name is confusingly similar to the trademark of the Complainant, as it reproduces this trademark with the added word “tough”, thus referring to the products offered by Complainant. It is notable in this regard that Complainant has itself used the same Domain Name for a period of one year to promote its products, and the Respondent registered the Domain Name soon after its previous registration expired.

These facts support a finding that Respondent had knowledge of Complainant, of its trademark, and of the word combination “herculinertough” at the time of registration of the Domain Name.

Moreover, Respondent has used the Domain Name for a website containing only links to pornography, gambling and pharmaceuticals, and as discussed above, such use does not establish rights or legitimate interests of Respondent in the Domain Name.

Therefore, the Panel is of the opinion that Respondent registered and used a Domain Name confusingly similar to Complainant’s trademark for an activity that cannot be regarded as bona fide use of the Domain Name. Respondent’s primary purpose in registering and using the Domain Name was in all likelihood to attract, for commercial gain, Internet users to this website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website and the services offered on this website. This constitutes bad-faith registration and use of the disputed Domain Name under paragraph 4(b)(iv) of the Policy. The Panel also finds the failure of Respondent to provide correct contact information as a further indication of bad faith. Women in Military Service for America Memorial Foundation, Inc. v. Russian Web Marketing, WIPO Case No. D2001-0610.

Therefore, the Panel concludes that Complainant has established the third element of the test under paragraph 4(a)(iii) of the Policy.

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 <herculinertough.com> be transferred to the Complainant.

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Assen Alexiev
Sole Panelist

Dated: November 17, 2006