The Complainant is Haddonstone Ltd, East Haddon, Northampton, United Kingdom of Great Britain and Northern Ireland, represented by Simon Scott, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Cast Stone Sales/Paul Casey, Mesquite, Texas, United States
of America.
2. The Domain Name and Registrar
The disputed domain name <hadonstone.com> is registered with Go Daddy
Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2004. On November 5, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On that same date, Go Daddy Software 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 9, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2004.
The Center appointed Christophe Imhoos as the sole
panelist in this matter on December 8, 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 the Rules, paragraph 7. The sole panelist rendered his decision within
the time-limit granted.
4. Factual Background
The Complainant has manufactured and marketed ornamental and architectural cast stone under the HADDONSTONE trademark since 1971.
The Complainant owns:
- the HADDONSTONE trademark in Europe (Registration Number 000393967; Annex 3 the Complaint);
- the HADDONSTONE trademark in the UK (Registration Number 1105306; Annex 4 to the Complaint);
- the HADDONSTONE trademark in the UK (Registration Number 2014014; Annex 5 to the Complaint);
- the HADDONSTONE trademark in the USA (Registration Number 1723091; Annex 6 to the Complaint).
The Complainant also markets the company via the websites “www.haddonstone.com”
and “www.haddonstone.co.uk”. In the USA, the Complainant trades
via a subsidiary HADDONSTONE (USA) LTD which has been using the HADDONSTONE
trademark since 1983.
The Complainant’s <haddonstone.co.uk> domain name was registered
on March 28, 1997, with the <haddonstone.com> domain name following on
April 30, 1997.
The HADDONSTONE US Trade Mark covers International Classes 1, 11, 14, 19, 20,
21 and 34. Prior US Classes 2, 6, 8, 12, 13, 20, 21, 30, 32, 33, 34 and 50.
Products detailed in the US Registration include: lamps, fireplaces, architectural
work, bollards, pedestals, pool enclosures, balustrading, temples, pavilions,
porticos, columns, pilasters, window sills, steps, risers, quoins, niches, moldings,
finials, gate piers, copings, paving stones, tiles, statues, fountains, sculptures,
edging stones, pier caps, parapet screening, masks, jardinieres, troughs, well
heads, obelisks, benches, seats, plaques, tables, bird baths, urns, vases and
smokers stands. All products are of “reconstructed stone” which
is another name for cast stone, reconstituted stone or artificial stone.
5. Parties’ Contentions
A. Complainant
The Complainant’s main arguments are the following.
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The domain name in dispute, as used by the Respondent, is visually and aurally identical, or at least, very similar to the registered trademark HADDONSTONE. It has the same first syllable “hadd” (or visually for the Respondent “had”), the identical middle syllable of “on”, and the same ending syllable, “stone”.
The dominant components are practically identical and comprise the same number of syllables. Conceptually the words are identical or very similar.
(ii) The Respondent has no rights or legitimate interests in respect of the domain name.
The Complainant's trademark originated in 1971, from a combination of the location of the company’s UK Head Office “East HADDON” with the basic generic name for its product “STONE”. Unlike names such as limestone, bathstone, sandstone etc, the trademark is unique to the Complainant’s company. The <hadonstone.com> domain name could not, therefore, have been arrived at either accidentally or in error by the Respondent.
The HADDONSTONE trademark is renowned throughout the world. The Complainant regularly exhibits in countries such as the USA, UK, France, Germany, Japan and the UAE. It also advertise extensively, spending more than GBP 200,000,-- on trade and consumer advertising in the UK and USA during the last financial year. The Complainant has agents and distributors in many countries including: Australia, Belgium, France, Germany, Hong Kong SAR of China, Japan, Republic of Korea, New Zealand, Russia and Taiwan Province of China.
The Respondent does not have, and never has had, any right to act for or on behalf of Haddonstone Ltd or Haddonstone (USA) Ltd.
The Respondent is not commonly known by the <hadonstone.com> domain name. This is just one of many similar sites used by the company.
The Respondent has no legitimate non-commercial or fair use of the <hadonstone.com> domain name. It is used solely for commercial gain, misleadingly to direct customers or to tarnish the HADDONSTONE trademark.
(iii) The domain name is being used in bad faith.
The related disputed website is illegally passing itself off as being a legitimate Haddonstone site, thereby causing confusion or the likelihood of confusion in the marketplace. As the offending site has links to pornographic, gambling and similar sites, this is particularly damaging to the Complainant’s reputation.
The Respondent’s <hadonstone.com> website is intentionally attempting to attract for commercial gain, Internet users to the Respondent’s website by creating the likelihood of confusion with the Complainant’s “www.haddonstone.com” website amongst others. This confusion is as to the source, sponsorship, affiliation and endorsement of the Respondent’s website or products or services.
As a result, the Complainant requests that <hadonstone.com> be transferred in its favor.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to Paragraph 4(a) of the Policy.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to Paragraph 15(a) of said Rules.
In accordance with Paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has established its rights in the HADDONSTONE trademark with numerous registrations worldwide, including in the USA (see Annexes 3 to 6 to the Complaint).
The Panel finds that the domain name <hadonstone.com> is confusingly
similar to the HADDONSTONE trademark. The very minor difference in the spelling
does not alter this conclusion (see various decisions from Panels that have
found domain names to be identical or at least confusingly similar when based
on “close variant” or “close misspelling” of the mark
in question: AltaVista Company v. Grandtotal Finances Limited et al.,
WIPO Case No. D2000-0848; Yahoo!Inc.
v. Eitan Zviely et al., WIPO Case No.
D2000-0273).
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the domain name in dispute. Those circumstances are described as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or 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 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.
The Respondent, in not responding to the Complaint, has failed to invoke any
of the circumstances, which could demonstrate, pursuant to Paragraph 4(c) of
the Policy, any rights to and/or legitimate interests in the domain name in
dispute. This entitles the Panel to draw any such inferences from such default
as it considers appropriate pursuant to Paragraph 14(b) of the Rules (see e.g.
Talk City, Inc. v. Michael Robertson, WIPO
Case No. D2000-0009 or Isabelle Adjani .v. Second Orbit Communications,
Inc., WIPO Case No. D2000-0867).
As already said, the Complainant has established that the HADDONSTONE trademark has been known throughout the world, especially in the USA, for a significant period of time (see Annexes 3 to 6 to the Complaint).
As underlined in its Complaint and absent evidence to the contrary, the Complainant has not granted any license or otherwise permitted the Respondent to use such a trademark or to apply for any domain name incorporating the said trademark; moreover, the Respondent is not known under the <hadonstone.com> domain name.
Lastly, careful examination of the contents of the “www.hadonstone.com” website shows that the Respondent is making commercial use of the said domain name for commercial gain to misleadingly divert consumers, and/or to tarnish the trademark at issue insofar as such a site also provides links to pornographic, gambling and similar sites (see Annex 7 to the Complaint).
Under these circumstances, the Panel is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern
of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate his good faith in the registration or use of the domain name in issue.
Nevertheless, the Panel still has the responsibility of determining which of
the Complainant’s assertions are established as facts, and whether the
conclusions asserted by the Complainant can be drawn from the established facts
(see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO
Case No. D2000-0944).
The Respondent which, prima facie, does offer for sale the same line of Complainant’s products (see Annex 7 to the Complaint), should have been well aware of the Complainant’s renown and trademark registration, at the time it registered the disputed domain name.
Moreover, the evidence submitted by the Complainant (Annex 7 to the Complaint) shows that the Respondent, by using the domain name <hadonstone.com> and doing business for the same line of products as those of the Complainant, behaves without permission or authorization of the Complainant, creating thereby, without any doubt, a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the related website or of the products on the said website.
The Panel considers therefore such a behavior as clearly being bad faith registration and use of the domain name <hadonstone.com>, within the meaning of Paragraph 4(b)(iv) of the Policy as rightly submitted by the Complainant in its Complaint.
As a result, the Panel shall order the transfer of <hadonstone.com> to
the Complainant.
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 <hadonstone.com> be transferred to the Complainant.
Christophe Imhoos
Sole Panelist
Dated: December 21, 2004
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