The Complainant is J.M. Huber Corporation, Edison, New Jersey, United States of America, represented by Sughrue Mion, PLLC, United States of America.
The Respondent is jmhuber, Grand Cayman, United Kingdom of Great Britain and
Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <jmhuber.com> is registered with DSTR Acquisition
IV, LLC DBA Address Creation.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2006. On February 7, 2006, the Center transmitted by email to Address Creation a request for registrar verification in connection with the domain name at issue. On February 7, 2006, Address Creation 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 February 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2006. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on March 7, 2006.
The Center appointed Erica Aoki as the Sole Panelist in this matter on March 16, 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.
The Panel has received no further submission from either party since its appointment.
The Panel is requested to issue a decision on March 30, 2006,
in the English language and is unaware of any other proceedings which may have
been undertaken by the parties or others in the present matter.
4. Factual Background
Complainant J.M. Huber Corporation founded in 1833, is a corporation organized and existing under the laws of the State of New Jersey and is a conglomerate of companies which offers many goods and services including in the fields of pigments, wood, specialty chemicals, and oil and gas.
Complainant has used its company name J.M. Huber for more than a hundred and twenty years as its corporate name. Complainant’s rights to the trademark HUBER in connection with its goods and services date back to as early as 1936, when it filed for registration of the HUBER trademark with the United States Patent and Trademark Office to identify its goods and services.
Complainant’s long and extensive use of the J.M. Huber name and HUBER mark has become well-known.
Complainant also has an Internet presence, through its registered domain name <huber.com>. Complainant has used this domain name to identify a website since at least June 2001.
Respondent registered the disputed domain name <jmhuber.com>
on May 2, 2004.
5. Parties’ Contentions
A. Complainant
Complainant is one of the largest family-owned companies in America.
Complainant’s rights in the J.M. Huber trade name and HUBER trademark predate Respondent’s registration date, and Complainant has both prior and exclusive rights in the J.M. Huber company name and HUBER mark.
The HUBER mark is a distinctive identifier of the source of Complainant’s goods and services.
Respondent does not have any rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
In order to succeed in the proceeding, Complainant must prove each of the following requirements specified under paragraph 4(a) of the Policy:
(i) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in respect of which 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.
These three elements are considered hereinafter.
Also, under paragraph 15(a) of the Rules, this Panel must “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
A. Identical or Confusingly Similar
The disputed domain name is derived from a common family name and in fact, by searching the Internet, it is possible to find that there are many other domain names composed of the name Huber.
However, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade name developed over many years through extensive use. The disputed domain name includes the prefix JM before the family name Huber exactly in the same way as the name of the Complainant’s founder, which has been used by Complainant as its corporate name for years.
Further, the Complainant has established its rights in the trademark HUBER. As the domain name incorporates this mark, along with the letters JM, the Panel finds that the domain name is confusingly similar to the trademark in which the Complainant has rights under paragraph 4(a)(i) of the Policy.
It is necessary to clarify however that not all domain names composed of a family name and similar to a previous registered trademark or trade name, are to be considered as infringing. It is necessary to evaluate the Respondent’s rights or its legitimate interest in such name and finally whether the registration was made in bad faith or not.
Only the complete analysis of all the factors will make it possible to determine whether a domain name composed of a family name is infringing or not on the right of previously registered trademark or trade name holder.
B. Rights or Legitimate Interests
Respondent is in default and thus has made no affirmative attempt to show legitimate rights and interests in the disputed domain name.
The Policy indicates that a registrant may have a legitimate interest in a domain name if it was making use of the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. Given the use of the domain name (discussed bellow), the Panel is not convinced that the Respondent is making any bona fide offering of goods or services.
There is no evidence that Respondent is or was commonly known by the disputed domain name as an individual, business or other organization.
The Panel, therefore, finds that Respondent has no rights or legitimate interests in the disputed domain name, under Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Complainant has alleged, and Respondent has not rebutted, that Respondent was aware of Complainant’s rights to the J.M. Huber trade name and the HUBER trademark when it registered the disputed domain name and that the intention was to prevent Complainant from owning and using the domain name.
Respondent’s use of the disputed domain name is to direct users to a site where Respondent receives compensation for click through. Respondent’s obvious intention to draw Internet traffic through the disputed domain name, attracting Internet users to a website for commercial gain, and the lack of Respondent’s reply in these proceedings, are facts which demonstrate that the disputed domain name was registered and is being used in bad faith.
In addition, Respondent has been involved in other URPD domain name proceedings.
The Panel therefore finds that the domain name has been registered and used
in bad faith.
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 <jmhuber.com> be transferred to the Complainant.
Erica Aoki
Sole Panelist
Dated: March 30, 2006
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