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Hama GmbH & Co. KG v. Tsuji, Masataka
Case No. D2004-0938
1. The Parties
The Complainant is Hama GmbH & Co. KG, Monheim, Germany, represented by von Haller Law Firm, Denmark.
The Respondent is Tsuji, Masataka, Tokyo, Japan.
2. The Domain Name and Registrar
The disputed domain name <hama.com> is registered with Network Solutions,
3. Procedural History
The WIPO Arbitration and Mediation Center (the “Center”) received the Complaint on November 10, 2004, (electronic version) and on November 11, 2004, (hard copy). On November 10, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On November 12, 2004, Network Solutions, 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”). The Complainant made the required payment to the Center.
In accordance with Paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 15, 2004. In accordance with Paragraph 5(a) of the Rules, the due date for Response was December 5, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2004.
The Center appointed Markus S. Bonair as the Sole Panelist in this matter on December 15, 2004. 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 Paragraph 7 of the Rules.
The language of the proceeding is English.
4. Factual Background
The Complainant was founded in 1923. The Complainant has used the name and mark HAMA since its foundation. The Complainant is a worldwide corporation with 1,150 employees at the headquarters in Monheim, 2,000 employees worldwide and a variety of a total of 16,000 products. The Complainant produces, markets and sells electronic hardware products for computers, PDA’s, notebooks, data communication, hifi equipment for automobiles, headphones, home cinemas, accessories for a wide range of products sold under other brands etc.
The Complainant has subsidiaries and trade partners all over the world, including in almost every country in Europe, Hong Kong, SAR of China, the Republic of Korea, Japan, Taiwan Province of China, Thailand, Australia, Middle East, Africa and North and South America.
The Complainant owns, inter alia, the following trademark registrations;
Australian Trademark Registration No. 733510 HAMA in Class 9, registration date December 18, 1998.
Community Trademark Registration No. 1766682 HAMA in Classes 1, 6, 8, 9, 11, 15, 16, 18, 20, 21, 38 and 42, registration date January 28, 2003.
The domain name at issue was registered on February 26, 1999.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant contends that besides the extension “.com”, the domain name at issue is identical to the Complainant’s registered trademark HAMA. Further, the mark HAMA has been used as a trademark since 1949. The Complainant has 19 national and international trademark registrations containing the mark HAMA. The trademark HAMA was first registered in 1968, and has been renewed ever since.
The Complainant has registered several domain names containing the mark HAMA, including: <hama.de>, <hama.at>, <hama.fr>, <hama.pl>, <hama.us>, <hama.gr>, <hama.be>, <hama.es> and <hama.hk>.
Rights or Legitimate Interests
The Complainant contends that HAMA is a well known trademark throughout Europe and Germany in particular. The mark HAMA has a very distinctive character. The word HAMA does not have any meaning.
The domain name at issue has not been used actively since the Respondent’s registration in 1999. Nor is it in use by the time of the filing of this Complaint.
The Complainant has never had any commercial relations with the Respondent.
Registered and Used in Bad Faith
The Complainant contends that the Respondent registered the domain name at issue for the purpose of selling the domain name for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name registration to the Complainant.
The Complainant learned about the Respondent’s registration of <hama.com> in 2000. The Complainant then contacted the Respondent and expressed interest in acquiring the domain name.
This led to a long series of e-mails and a meeting between the Complainant and the Respondent from which the following can be extracted:
The Respondent owns several domain name registrations for the purpose of selling.
June 2002: The Complainant offered the Respondent 2,500 United States dollars for the domain name, but the Respondent requested “big money”.
October and November 2002: The Complainant then offered first 5,000 United States dollars then 10,000 United States dollars. Both offers were refused by the Respondent who threatened to sell <hama.com> to unnamed third parties and stated that he already had another customer in Japan who was willing to pay 10,000 United States dollars. The Respondent then said that he “will decide immediately if Hama [the Complainant] pays 20,000 United States dollars”.
November 2002: The parties then agreed to transfer the domain name <hama.com> to the Complainant for a price of 15,000 United States dollars.
January to July 2003: The parties could not agree to the terms of the transfer or the terms of payment. The Respondent would not agree to sign a contract, which the Complainant forwarded to the Respondent, and the Respondent demanded payment in advance.
The Complainant refers to copies of e-mail correspondence between the Complainant and the Respondent as evidence.
The Respondent has not yet made any use of the domain name <hama.com>.
The sole use of the domain name has been to offer the domain name to the Complainant for an extremely high price which by far exceeds the Respondent’s fee for registering the domain name.
The Respondent has threatened to sell the domain name registration to unnamed third parties in order to induce the Complainant to increase the offer.
The Respondent has no legitimate interest in the domain name <hama.com> which in itself, and since “HAMA” has no meaning and possesses distinctive character, indicates that the domain name at issue was registered for the purpose of selling.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
The Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and commencement of this administrative proceeding, and that the Respondent’s failure to submit a Response is not due to any omission by the Center.
In view of the Respondent’s failure to submit a Response, the Panel shall decide the dispute based upon the Complaint according to Paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate according to Paragraph 14(b) of the Rules.
According to Paragraph 4(a) of the Policy, the Complainant must assert and prove each of the following:
(i) that Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has shown that it owns trademark registrations for the mark HAMA. The domain name at issue consists of the mark HAMA and the gTLD “.com”. The gTLD “.com” is of no significance when determining whether or not a domain name is identical or confusingly similar to a trademark or service mark. Accordingly, the Panel finds that the domain name at issue is identical to the Complainant’s registered trademark and service mark.
B. Rights or Legitimate Interests
According to Paragraph 4(c) of the Policy, a Respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
There is no evidence before the Panel that any of the situations in Paragraph 4(c) of the Policy apply in the case of the Respondent.
The Complainant contends that the Respondent has no rights or legitimate interests in the domain name at issue. Further, the Complainant contends that it has no commercial relation with the Respondent and that the Respondent has not used the domain name at issue since it was registered in 1999.
In this case, the Respondent has failed to file a response and to rebut the Complainant’s contentions.
Accordingly, the Panel finds that the Respondent has no rights to or legitimate interests in the domain name at issue.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four nonexclusive criterions for Complainant to show bad faith registration and use of a domain name:
(i) circumstances indicating that the respondent has registered or the respondent 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 owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s 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 trademark 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.
The Complainant contends that the domain name at issue has been registered and is being used in bad faith. In this respect, the Complainant has filed several copies of e-mail correspondence between the Respondent and the Complainant’s associate, in which the Respondent, inter alia, offers to sell the domain name at issue to the Complainant for 20,000 United States dollars. The Complainant contends that the Respondent registered the domain name at issue for the purpose of selling the domain name for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name registration to the Complainant.
The Respondent has not submitted a response to deny the contentions of the Complainant or to explain his action. Accordingly, the Panel is entitled to draw inferences from this lack of response, such as it is likely that the Respondent has registered the domain name at issue primarily for the purpose of selling the domain name <hama.com> to the Complainant, who is the owner of the trademark and service mark HAMA, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name at issue. The Panel, therefore, finds that bad faith has been demonstrated under Paragraph 4(b)(i) of the Policy.
Further, the Panel deems that the Respondent had knowledge about the Complainant’s widely known trademark and service mark HAMA when registering the domain name at issue. It is not likely that the Respondent unintentionally selected to register the trademark and service mark HAMA, with which he had no previous connection and in respect of which he had no rights or legitimate interest, as a domain name.
In light of the above, the Panel finds that the domain name <hama.com>
was registered and is being used in bad faith.
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 <hama.com> be transferred to the Complainant.
Markus S. Bonair
Dated: December 29, 2004