Hess Natur-Textilien GmbH v. Texas International Property Associates - NA NA
Case No. D2008-1051
1. The Parties
The Complainant is Hess Natur-Textilien GmbH, Butzbach, Germany, represented by Rauschhofer Rechtsanwälte, Germany.
The Respondent is Texas International Property Associates, - NA NA, Texas, United States of America, represented by Gary Wayne Tucker.
2. The Domain Name and Registrar
The disputed domain name <hessnatur.com> is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2008. On July 11, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On July 21, 2008, Compana LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2008. The Response was filed with the Center on August 11, 2008.
The Center appointed Lone Prehn as the sole panelist in this matter on August 19, 2008. 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
The Complainant in this administrative proceeding is the German mass-market mail-order company Hess Natur-Textilien GmbH, a corporation organized under the laws of Germany (form of organization until 21/11/2005: Hess Natur-Textilien GmbH & Co. KG), having its principal place of business in Butzbach, Germany. Founded more than 30 years ago by European environmentalist Heinz Hess in Germany, the Complainant designs and offers organic and natural clothing for women, infants and toddlers throughout Europe. The Complainant is incorporated in the Arcandor Group (Arcandor AG, Germany, resp. business division mail-order, named “Primondo”), formerly known as KarstadtQuelle Group. The Arcandor Group has bundled its mail-order business under the name “Primondo”. Primondo is the most varied multi-channel provider in Germany. Primondo GmbH is owned completely by Arcandor AG. The Complainant currently operates online-stores in Germany (“www.hessnatur.de”), Austria (“www.hessnatur.at”), Switzerland (“www.hessnatur.ch”) and has corresponding subsidiaries on site. The Complainant i.a. owns and operates the website “www.hess-natur.com” since 1997.
The Complainant is proprietor of numerous registered trademarks throughout the world that contain the word order “hess natur” and/or “hessnatur” or where the word order “hess natur” is the dominant feature, including:
Classes: IC 018. US 001 002 003 022 041; IC 024. US 042 050; IC 025. US 022 039; IC 026. US 037 039 040 042 050; IC 035. US 100 101 102; IC 041. US 100 101 107
Priority Date: 11.01.2006
Filing Date: 11.07.2007
US-Trademark “HESS NATURE”
Classes: IC 018. US 001 002 003 022 041; IC 024. US 042 050; IC 025. US 022 039; IC 026. US 037 039 040 042 050; IC 035. US 100 101 102; IC 041. US 100 101 107
Priority Date: 11.07.2006
Filing Date: 11.01.2007
The domain name <hessnatur.com> was registered on March 30, 2005. The domain name is active and resolves to a website showing a portal page with various links.
5. Parties' Contentions
A. Complainant
Complainant alleges that the domain name at issue is confusingly similar to Complainant's trademark HESS NATUR.
Further, the Respondent has not been authorized in any way to use Complainant's mark and Respondent has no rights or legitimate interests in respect of the domain name at issue. The Respondent is using the domain name as a parking site to generate pay-per-click revenue, and the user is confused as to the sponsorship of the site. Further, the Respondent registered and is using the domain name at issue in bad faith, and several adverse UDRP decisions have been issued against Respondent. Finally, the Complainant alleges that Respondent uses the site to link directly to competitors of Complainant, and that Respondent had to have knowledge of Complainant's mark.
B. Respondent
Respondent alleges that Complainant never contacted Respondent prior to instituting this action and had it done so, it could have saved itself the filing fee as well as the cost of the preparation of the Complaint. Furthermore, the Respondent declares his willingness to agree to the relief requested by the Complainant, but does not admit to the three elements of 4(a) of the policy.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) that Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
Preliminary Comment
Given that Respondent filed no substantive Response and put forward instead an offer to transfer the Domain Name, the Panel is required to first decide whether to consider the merits and if so to assess the evidence and submissions filed by the parties alone. In the absence of any dispute as to the accuracy and correctness of that information, the Panel must decide this proceeding largely on the basis of Complainant's undisputed representations and draw such inferences as it considers appropriate.
Offer to Transfer
Respondent's Response suggests that Respondent has no interest in the Domain Name and it has consented to its immediate transfer.
The Panel may find that in a circumstance such as this, where Respondent has unequivocally consented to the transfer of the disputed domain name, it should forego the traditional UDRP analysis and order the immediate transfer of the domain name. See Boehringer Ingelheim International GmbH v. Modern Limited – Cayman Web Development, NAF Case No. 133625 (transferring the domain name registration where the respondent stipulated to the transfer).
The Panel may alternately find that the efficacy of such consent notwithstanding, there may nevertheless be circumstances in which it is appropriate to proceed to and record its consideration of the case on its merits under the three elements. (See e.g. Sassybax, L.L.C. v. Texas International Property Associates,
WIPO Case No. D2007-1190 and also Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211, which the Panel discusses further below.)
Having said this, the Panel is faced with Complainant's assertion that the alleged “consent to transfer” was never offered by Respondent and that Respondent was never willing to transfer the Domain Name, until now and the request that it looks at the wider merits of the situation. For the reasons set out more fully below, principally under the “Bad Faith” ground, the Panel is of the view that the wider merits do need to be considered in this particular case.
The elements of Paragraph 4(a) of the Policy are now considered:
A. Identical or Confusingly Similar
The Panel has no difficulties in establishing that the disputed domain name <hessnatur.com> is quasi-identical and certainly confusingly similar to Complainant's trademark HESS NATUR.
The Panel further believes (as discussed further below under Paragraph 6.C) that Respondent has intentionally used the Complainant's trademark in order to attract the flow of Internet users enabling Respondent accordingly to increase the traffic to its website <www.hessnatur.com> and derive revenue as a result – a practice known as “typosquatting” which has been clearly condemned in various panelists' decisions.
B. Rights or Legitimate Interests
Complainant contends that the Domain Name resolves to a website that provides various links, including links to “hess natur” and on-line shopping for clothing. Use of the search service results in the display of various “sponsored links” to third party websites.
The Panel concludes that the Domain Name is being used as a means of diverting Internet customers with an interest in the Complainant and its business. In those circumstances it is difficult to see how Respondent's conduct could be characterized as legitimate. The business model of registering trade marks as domain names and deriving revenue from “click through” business is well-known and needs no elaboration. This seems to be what Respondent is doing and in the absence of any explanation or denial it is found that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
As noted above, it is submitted that the Respondent's conduct should be interpreted as an intention to keep diverted customers on its website, pretending, in bad faith, to be Complainant's website.
Complainant contends that Respondent has previously been the subject of or otherwise was involved in adverse decisions for the transfer of disputed domain names. Likewise, it appears that a pattern of involvement in registering trade marks as domain names exists. It is well established that both conduct leading to a likelihood of consumers being misled and a pattern of dubious domain name registrations may be indicative of bad faith.
More specifically, Complainant alleges that Respondent is a known cyber-squatter and that UDRP decisions involving the Respondent have specifically discussed Respondent's bad faith registration of domain names. Reliance is placed on the decision in United Consumers Club, Inc. v Texas International Property Associates,
WIPO Case No. D2007-0987, where the Panel lists dozens of cases in which the Respondent has been ordered to transfer its registrations.
This raises a material issue. By consenting to a transfer of the Domain Name, as it now has, Respondent might be able to avoid possible adverse findings and comments.
In Brownells, Inc. v. Texas International Property Associates,
WIPO Case No. D2007-1211, the Panelist, in dealing with the same respondent, stated:
“Finally, Respondent's actions during the pendency of this case further indicate bad faith. On September 20, 2007, Respondent filed a Response stating that it was willing to transfer the Domain Name. The WIPO proceedings were then suspended so that the parties could pursue settlement. However, for reasons that are not clear from the record, a settlement was not reached. Thus, Respondent's alleged offer to transfer the Domain Name resulted in a delay in the proceedings, during which time Respondent's website continued to be active and hence to generate revenues for the Respondent”.
The factual situation in the Brownells case has a familiar ring to it. In Brownells the Panelist then went on to note that:
“If Respondent had sincerely wished to transfer the Domain Name, it would have been a simple matter for it to do so. Respondent's failure to follow through on its offer to transfer suggests that Respondent is attempting to delay the inevitable transfer of its Domain Name so as to generate another month or two of revenues. This conduct is inconsistent with the Policy and is resulting in a waste of resources of the Center and of multiple Complainants”.
The Panel agrees with these comments and observes that in cases of this type it would be contrary to the spirit and intent of the Policy for a party to use the expedient of offering to transfer the disputed domain name at the last minute, in order to avoid a decision on the merits and thereby minimize the risk of adverse findings/comments. That is, particularly where that party appears to have done the same previously and where the purpose of the step appears to be to circumvent the Policy. In the instant case the Respondent (after submitting its Response) appears to have rejected an offer from the Complainant to suspend the proceedings in order to effect a transfer of the disputed Domain Name to the Complainant (as offered). Such rejection is, to say the least inexplicable, and does little to bolster the Panel's perception of the Respondents motives as genuine. In the instant case the Panel infers that the purpose of this strategy is not only to delay the inevitable (as found in Brownells) but also effectively to thwart the Policy (where patterns of questionable conduct have always been relevant) and that this is an abuse of process and a further indication of bad faith conduct.
In any event, the Panel has no difficulty in concluding from the present record that the third element of the Policy has been met by 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, <hessnatur.com> be transferred to the Complainant.
Lone Prehn Sole Panelist
Date: September 3, 2008
Stay updated! Get new cases and decisions by daily email.
