Hoerbiger Holding AG v. Texas International Property Associates
Case No. D2007-0943
1. The Parties
The Complainant is Hoerbiger Holding AG, of Zug, Switzerland, represented by Wenger & Vieli, of Zurich, Switzerland.
The Respondent is Texas International Property Associates represented by Gary Wayne Tucker, both of Dallas, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <horbiger.com> is registered with Compana LLC d/b/a Budgetnames.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2007. On June 29, 2007, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. After several follow up emails, Compana LLC transmitted by email to the Center its verification response on July 16, 2007 confirming that:
(a) it is the registrar for the disputed domain name;
(b) the Respondent is listed as the registrant of the disputed domain name;
(c) the contact details for the administrative, billing, and technical contacts provided in the Complaint are correct;
(d) English is the designated language under the Registration Agreement for the disputed domain name; and
(e) the registration of the disputed domain name is subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy”).
The Center verified that the Complaint satisfied the formal requirements of 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 August 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2007.
The Center received the Respondent’s Response by email on September 13, 2007.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 3, 2007. 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 Background
According to the Complaint, the Complainant conducts business throughout the world in the fields of compression technology, automation technology, drive technology, valves technology and actuator technology. Its subsidiaries have offices in, amongst other places, Houston and Longview in Texas, the United States of America.
Exhibit 6 to the Complaint lists more than 100 subsisting trademark registrations for HOERBIGER around the world. Printouts of two of these, Ireland trademark No. 740260 and United States Trademark No. 2629876, are included in respectively exhibits 7 and 8. These two particular registrations cover a wide goods and services in classes 7, 9, 12, 17, 37 and 42. Ireland trademark No. 740260 claims a Swiss registration, No. 47519 dated October 19, 1999.
The Complainant has a number of registered domain names including <hoerbiger.com>, <hoerbiger.biz>, <hoerbiger.info> and <hoerbiger.net>.
Exhibit 12 to the Complaint contains printouts from the Dallas County Clerk and the Texas Secretary of State which show that Texas International Property Associates is a certified assumed name for Dauben Inc. and a Mr. Joseph Dauben was the incorporator and is the director of Dauben Inc.
The WhoIs records show that the domain name was registered on December 27, 2005.
At the time of preparing this decision, the domain name resolves to a website which is headed:
“Welcome to horbiger.com
For resources and information on Compressor and Automation.”
Down the left hand side of the page are a series of buttons or links such as “Compressor”, “Automation”, “Valve”, “Actuator” … under the heading “Related Searches”.
Clicking on these buttons or links takes the browser to a page showing ‘Sponsored Results’. The results actually displayed appear to be geographically tailored for the particular user. So, for example, when the Panel clicked on the link for Compressor, the Sponsored Results were for:
“Air Compressors
Find Air Compressors Powered By honda. High Standards In Small Tech.
www.honda.com.au
Comp Components & Parts
Great Bargains on Computer Parts. Range of Brands & Wide Choice.
www.tradingpost.com.au
Compressors
Find amazing bargains for Tools and Power Tools. Browse 100’s of Ads.
www.gumtree.com.au
Air Powered Services
Check Out Our Products Online. Delivery For Sales Australia Wide.
www.AirPoweredServices.com.au
Compressors
Shop For Home Tools At Ninemsn Shopping.
shopping.ninemsn.com.au”
The Response states that the links generated under Sponsored Results are provided pursuant to Google’s terms.
5. Discussion and Findings
Under Paragraph 4(a) of the Policy the Complainant has the burden of proof in respect of the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel deals with each of these elements in turn.
A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to it?
The Panel finds that the Complainant has established it owns registered trademarks for HOERBIGER. For present purposes, it is sufficient to mention only the two for which specific details were included in the Complaint, Ireland trademark No. 740260 and United States Trademark No. 2629876, although the Panel notes that the Complainant has provided summary details of more than 100 other registrations around the world.
The disputed domain name differs from the proved, registered trademarks in two respects. It does not include the letter “e” after the “o” and before the “r”. Also, it includes the gTLD “.com”.
The addition of the “.com” gTLD can be disregarded for present purposes. See for example Telstra Corporation Limited v. Ozurls,
WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet Inc.,
WIPO Case No. D2001-0252; Microsoft Corporation v. J. Holiday Co.,
WIPO Case No. D2000-1493.
The Complainant contends that the domain name is phonetically the same as the Complainant’s own name as “oe” is often represented by “ö” which, in turn, is often translated into English simply as “o”. The Complainant also invokes the “typosquatting” line of cases for the proposition that the omission of a single letter is not sufficient to avoid a finding of confusing similarity.
In response, the Respondent contends that the omission of the “e” is highly significant. It points out that if a Google search is conducted for “chevrlet”, the page generated in response asks “Did you mean Chevrolet”; other examples for searches on “Generl Motors” and “Gary Tuker” generate similar outcomes. However, a Google search on “horbiger” does not generate a question “Did you mean Hoerbiger”.
The Respondent also relies on case law for the proposition that, in the Internet context, consumers are aware that there can be very small differences between the domain names of different websites because of the need for language economy. In application of this proposition, the Respondent points out that <broadcommunications.com> was found not to be confusingly similar to the trademark BROADCOM as “Complainant is not entitled to protection for every usage of the word ‘broad’ in combination with other terms”, citing Broadcom Corp v Smoking Domains, FA137037 (NAF February 11, 2003).
The Panel can accept that Internet users will often appreciate the need to type URLs accurately, nonetheless that does not mean that mistakes will be not made. At this stage of the inquiry, however, the question is whether or not the domain name is confusingly similar to the registered trademark HOERBIGER. This is ultimately a matter of impression requiring an assessment of the likelihood that people having an awareness of the trademark, but not necessarily an exact or precise recollection, might mistakenly think the distinctive component of the domain name was the trademark.
Given that “oe” is often pronounced and written as “ö” or “o”, the Panel has little doubt that there is a significant risk of such confusion.
Accordingly, the Panel finds that the domain name is confusingly similar to the trademark rights proved by the Complainant.
B. Rights or Legitimate Interests
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.
Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:
“(i) before any notice to you of the dispute, your 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) 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.”
These are not an exhaustive enumeration of rights or legitimate interests, they are examples only.
It is now very well established that, in view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case. An early example in which this proposition was established is Sony Kabushiki Kaisha v. sony.net,WIPO Case No. D2000-1074.
The Complainant states that it has not authorized the Respondent to use the domain name. The domain name is not derived from the Respondent’s own name or that of either Dauben Inc. or Mr. Dauben.
As noted above, the Respondent quite frankly admits it uses the domain name to generate advertising revenues.
The Respondent says that the links on its site are provided pursuant to Google’s terms and triggered by the search terms entered by computer users. It points out that Panels have accepted that a respondent is not responsible for potentially offending content triggered by Google’s Adsense service and over which the respondent has no control: See e.g., Admiral Insurance Services Limited v. Mr. Adam Dicker,WIPO Case No. D2005-0241. The Respondent expressly denies any intention to target the Complainant.
It contends that “horbiger” is a surname and relies on the line of cases which found that it is perfectly legitimate to use descriptive or generic terms as a commercial domain name and even specifically as search portal:
- Eastbay Corporation v. VerandaGlobal.com, Inc., FA0203000105983 (NAF May 20, 2002) declining to transfer <finalscore.com>;
- Energy Source Inc. v. Your Energy Source, FA96364 (NAF February 19, 2001) <yourenergysource.com>;
- Zero International Holding GmbH v. Beyonet Services,WIPO Case No. D2000-0161 <zero.com> was a common English word which could be registered and used on a first come first-serve basis;
- Churrascaria Porcao v. Prime Products International,WIPO Case No. D2001-0535 <porcao.com> (Portuguese for “pig”);
- GLB Servicos Interativos S.A. v. Ultimate Search Inc.,WIPO Case No. D2002-0189 (<paparazzo.com>, was a generic term and there was no evidence that the respondent knew it was the subject of a pending trademark application in Brazil;
- Miller Brewing Company v. Yunju Hong, FA0309000192732 (NAF December 8, 2003) registration of generic term “High Life” to be used in a search engine portal is a legitimate use and “. . . there is nothing wrong with using the generic phrase to connect these concepts with keywords in order to provide advertisers with targeted customer traffic”.
Each of these decisions is, of course, a decision on its particular facts. One can readily see that there may be many situations where the use of a generic or descriptive term as the domain name associated with a search portal will be a bona fide use. On the other hand, many Panels have recognized that it is not a legitimate or bona fide use to use someone’s trademark to generate advertising revenues through links to the trademark owner’s competitors. See e.g. some of the cases referred to on this question in this Panel’s own decision in Therapro, Inc. v. Whois ProtectionWIPO Case No. D2007-1222.
Here, the Panel has no reason to doubt that the term “horbiger” is a surname. Contrary to the Respondent’s contention, however, it is not being used just for a generic search portal. As noted above, it is being used for a website according to its own banner “For resources and information on Compressor and Automation”.
Further, it may be accepted that the links generated under the headings “Sponsored Results” are generated by Google or someone other than the Respondent. However, it is not correct to claim that the Sponsored Results are only triggered by computer users looking for descriptive and generic terms. The particular terms that trigger the Sponsored Results are already listed on the website at the URL to which the domain name resolves.
Thirdly, the domain name has been registered well after the Complainant has registered its trademarks around the world, and apparently well after the Complainant has actually been operating its business under its trademarks in the United States of America.
The domain name has been avowedly registered by the Respondent to generate advertising revenues. It is apparently a surname. However, it has been associated with a specific range of products: compressors and automation. The Respondent does not suggest that there is any connection between the surname “horbiger” and the particular goods and services available at its website. Why would anyone type in the surname “horbiger” as a domain name in the expectation of being taken to a website about Compressors and Automation?
Those products appear to be related to the surname “horbiger”, if at all, by reason of the Complainant’s use of its trademarks.
In these circumstances, the cases on the use of generic or descriptive terms are distinguishable. Consistently with the cases holding that it is not a legitimate use of a domain name to use it to divert traffic to a trademark owner’s competitors, the Panel finds that the Complainant has sufficiently established for the purposes of this proceeding that the Respondent does not have any rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
The third requirement that the Complainant must demonstrate to succeed is that the disputed domain name has been registered and used in bad faith. In connection with this factor, Paragraph 4(b) of the Policy provides:
“(b) Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in 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 noted, the Respondent frankly admits it registered the domain name for the purpose of generating advertising revenues. It contends that that is a perfectly legitimate activity for a descriptive or generic term.
For the reasons already given, however, that is not an accurate description of the Respondent’s activities. It has registered a domain name which differs from the Complainant’s trademark only by the omission of the letter “e”, in circumstances where the Complainant’s trademark and the Respondent’s domain name could well be confused, and it has done so for use in connection with the very goods and services that the Complainant’s trademark is associated.
These circumstances are more than sufficient to conclude that the Respondent registered and used the domain name in bad faith.
In the circumstances, therefore, it is not necessary to resolve the Respondent’s objections to the Complainant’s characterization of the Respondent as a serial typosquatter. The Panel does note for the record, however, that in one case where the Respondent agreed to transfer the domain name without admissions, the domain name was <fyrselectronics.com>, Fry’s Electronics Inc. v. Texas International Property Associates,WIPO Case No. D2007-0343 and two decisions concerned <associtedbank.com> (Associated Bank Corp. v. Texas International Property Associates,
WIPO Case No. D2007-0334) and <benovolink.com> (The Benevolink Corporationv. Texas International Property Associates,
WIPO Case No. D2007-0404).
6. 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 <horbiger.com> be transferred to the Complainant.
Warwick A. Rothnie Sole Panelist
Dated: October 19, 2007
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