WIPO Domain Name Decision: D2008-0779

The Complainant is Hero of Lenzburg, Switzerland, represented by Blum Attorneys at Law, Switzerland.

The Respondent is The Heroic Sandwich of Berkeley, California, United States of America, represented by John Berryhill, Ph.d., Esq., United States of America.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2008. On May 19, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On May 19, 2008, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 27, 2008. The Center verified that the Complaint together with the amendment to 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 June 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response June 22, 2008. The Response was filed with the Center on June 20, 2008.

Between May 22, 2008 and June 20, 2008 various communications were made between the parties and the Center concerning procedural matters. In addition, the Respondent included an email to the Complainant attaching an online complaint referral, that the Respondent had made on June 19, 2008, to the US Federal Bureau of Investigations Internet Crime Complaint Center. That referral alleged that the Complainant had victimized the Respondent by seeking to acquire the disputed domain name fraudulently.

On July 3, 2008 the Complainant filed a further submission with the Center, objecting that the Response had exceeded the word limit set out in the Supplemental Rules. This led to some further email exchanges between the parties and the Center. As the Respondent had indicated in those exchanges that it would be prepared to revise its Response in any manner required by the Center, the Center invited the Respondent on July 3, 2008 to submit a revised response that complied with the word limit in the Supplemental Rules. On July 4, 2008, the Respondent submitted its revised Response.

The Center appointed James A. Barker, G. Gervaise Davis III and Michael A.R. Bernasconi as panelists in this matter on July 11, 2008. The Panel finds that it was properly constituted. Each member of 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 following facts do not appear to be contested, and the Panel has treated them as facts for the purpose of this proceeding.

The Complainant provided a substantial amount of evidence concerning its business. In summary, the evidence demonstrates that the Complainant is a large manufacturer of consumer foods, which it markets under the trademark and business name HERO. The Complainant was founded in Switzerland in the late 19^th century. Its mark and trade name were derived from the prefixes of the names of its two original founders. From the 1980s, the Complainant expanded its business into various countries of Europe, North Africa/Middle East, the United States of America, Canada, and South America. The Complainant has a number of affiliate or subsidiary companies, which also use its mark and trade name. The Complainant's business is internationally well-established and recognized, at the very least, in various food markets.

The Complainant also provided a substantial amount of evidence concerning its marks registered in various jurisdictions. Relevantly to the jurisdiction in which the Respondent resides, these include marks registered on the principal register of the United States Patent and Trademark Office, with registration dates of e.g., 1983 and 1988.

The Complainant operates a number of websites in connection with its business including “www.herousa.com”, “www.hero.ch”, “www.hero.es”, and “www.hero.fr”.

The disputed domain name was first created on May 3, 1995 (as indicated by the WhoIs details).

At the date of this decision, the disputed domain name reverted to a “portal” or “landing” website at “hotkeys.com”. That website contained a miscellaneous list of links, including those titled “hero”, “movie downloads”, and “music”.

The Complainant claims that it is obvious that the disputed domain name is identical and confusingly similar to various of its suite of marks, which are well-known world wide.

The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name, because it does not use it to make a bona fide offering of goods or services. Internet users would expect the disputed domain name to lead to a website operated by the Complainant.

The Complainant states that the Respondent has no license or permission from the Complainant, and is not commonly known by the disputed domain name. The Complainant, providing evidence from “web.archive.org”, states that none of the websites historically associated with the disputed domain name have offered goods or services. Instead, the Complainant states that those sites directed users to other sites. (Although the Panel notes that, on the Complainant's own evidence, the Respondent's website e.g., in 2004 contained statements such as “We offer corporate email accounts for $75/month.”) In this circumstance, the Complainant claims that “Panel decisions are legion to the effect that use of a domain name that is either identical or confusingly similar to the Complainant's trademark renders such use illegitimate.”

The Complainant also claims that the disputed domain name was registered and has been used in bad faith. The Complainant argues that, because of their fame, the Respondent cannot have been unaware of its marks when it registered the disputed domain name. The Complainant states that the Respondent registered the disputed domain name for the sole purpose of selling it, either to the Complainant or its competitors. The Respondent recently tried “to extract from the Complainant an unreasonably high amount of money for the assignment and transfer of the domain name in issue.”

In summary, the Respondent counters that the Complainant has no rights in the common word “hero”, and that its trademark rights relate only to a mark which is stylized.

The Respondent also states that the Respondent was formed in 1995. The Respondent provides declarations of four individuals that were involved in the Respondent's business at that time. The Respondent states that their purpose was to open “The Heroic Sandwich”, one of the first Internet cafes in New York city. The Respondent's original website predates the Internet Archive web crawl by 18 months. The Respondent provides evidence of media articles dating from 1995 which refer to the opening of the Respondent's cafe. The Respondent has also provided paid email services to customers using “@hero.com”. The Respondent attaches declarations from its customers. The Respondent also refers to Nishan Systems, Inc. v Nishan Ltd., WIPO Case No. D2003-0204, for the proposition that the use of a domain name in connection with email services is a legitimate use.

The Respondent explains that, after opening its cafe, the food service became unprofitable and was closed. The Respondent continued using “The Heroic Sandwich” and “Hero Consulting”, and its business then shifted to providing Internet based services such as email.

The Respondent provides a declaration that the Complainant first contacted it in 2002, inquiring about purchasing the disputed domain name, and so has known that the Respondent conducts business as Hero Consulting, and that it uses the “@hero.com” email address.

The Respondent denies having registered and used the disputed domain name in bad faith, for reasons including those set out above. The Respondent points out that the Complainant provides no evidence of its reputation in the United States of America since the registration of the disputed domain name in 1995. It also points out that all approaches regarding sale of the disputed domain name have come from the Complainant. Among other things, the Respondent provides a copy of a letter, dated March 13, 2002, from the Complainant's representative, enquiring about the possible sale of the domain name. The response, by letter dated March 14, 2002, from the Respondent, stated that “at this time, we are not interested in selling it” [the disputed domain name]. That responding letter was on the letterhead of “Hero Consulting”. (The evidence of both the Respondent and the Complainant indicate emails between the parties in which the Respondent uses the “@hero.com” email address.)

The Respondent requests a finding of reverse domain name hijacking against the Complainant.

(i) the disputed 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 disputed domain name; and

Because of the Panel's findings on the second ground below, it is not strictly necessary for it to make a finding on this ground.

However, for completeness, the Panel notes that the Complainant has provided substantial evidence of having long-standing rights in registered marks that incorporate the textual element HERO. The disputed domain name is plainly identical to that element. As such, the Panel finds that the Complainant has established this first ground.

The Respondent argues that the disputed domain name is not identical or confusingly similar, since the Complainant has trademark rights in a stylized mark – rather than the word “hero” per se – and because that word is not exclusively or distinctively associated with the Complainant.

The test of identicality under the Policy is however more narrow. Whether a domain name is identical (or confusingly similar) to a mark is to be judged objectively, against the dominant textual elements of a complainant's mark, rather than graphic or stylized elements. This approach is supported by a series of prior panel decisions. (See e.g., Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031, and cases cited therein. In that case, the panel noted that: “…graphic elements, such as the Sweeps design, not being reproducible in a domain name, need not be considered when assessing identity or confusing similarity.”)

The Respondent cited a number of cases under the Policy to support its case in this respect. In particular, the Respondent refers to Tesla Industries, Inc. v. Stu Grossman d/b/a SG Consulting, NAF Claim No. 547889. While there is clearly room for legitimate differences, the Panel notes that that decision (including the preponderance of the decisions relevantly cited in that one) concerned a comparison between “highly stylized marks” and a domain name. This is not such a case. The Complainant's trademark for HERO is stylized to some extent, but not highly so.

It is also relevant that there is no evidence that the disputed domain name is a generic / dictionary term in many of the non English-speaking jurisdictions in which it was registered, including its original jurisdiction of Switzerland. As evidenced by the Complainant, the mark was originally created by joining the prefixes (“he” and “ro”) of the names of its two founders. Accordingly, in that jurisdiction it appears that the term was originally fanciful or arbitrary. The term has a generic / dictionary meaning in English. But it is possible that Internet users, not familiar with English, would perceive the mark as a fanciful (and therefore distinctive) mark.

Because of the Panel's findings on the bad faith ground below, it is unnecessary for it to make a conclusive finding on this ground. The Panel proceeds to consider it nevertheless, on the basis that it is relevant to the request for a finding of reverse domain name hijacking. In summary, the Panel finds that the Complainant would fail on this ground.

At a minimum, it is well established that the burden on the Complainant under this element is to establish a prima facie case against the Respondent. (See item 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions.) A prima facie case is one that is credible in the absence of evidence to the contrary.

Even without the Response, the Complainant's case is fatally weak. The Complainant's case essentially comprises of evidence of its own reputation and business, and then a series of claims against the Respondent which are simply not supported, and in many cases directly contradicted by, the evidence which the Complainant provides.

Paragraph 4(c) of the Policy relevantly provides that the following circumstances may demonstrate a Respondents rights or legitimate interests in a disputed domain name:

(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.”

The evidence in this case, including the evidence provided by (or that which should have been available to) the Complainant, strongly indicates that both these circumstances are present. This evidence more credibly supports the nature of the Respondent's business as explained by the Respondent. This includes evidence that the Respondent first registered the disputed domain name in connection with an Internet cafe called “The Heroic Sandwich”, and subsequently used the disputed domain name in connection with email services under the business name “Hero Consulting”.

Even if the Complainant had been entirely unaware of the circumstances in (4)(c)(i) and (ii) of the Policy, the basic fact of the Respondent residing in a jurisdiction in which “hero” is a common English word, should have at least suggested the possibility of the Respondent having a legitimate interest in the disputed domain name based on its generic / dictionary meaning.

The Panel finds that the Complainant has also failed to establish its case under this element of the Policy.

Fundamentally, bad faith could be found if the Respondent knew or, in appropriate cases, ought to have known of the Complainant. (See, for example, Moari Television Service v. Damien Sampat, WIPO Case No. D2005-0524 in which the then panel stated that a finding of bad faith can be made when the respondent “knew or should have known of the registration and use of the trademark prior to registering the domain”, and cited decisions to similar effect.)

In this case there is no evidence, nor any reasonable inference, which could establish that the Respondent knew of the Complainant or intended to exploit the Complainant's mark. The Complainant makes a number of arguments in this respect, but the Panel finds them all unpersuasive.

Firstly, the Complainant argues that it has a substantial international reputation, and provides evidence of its business in various jurisdictions. The implication is that the Respondent must or should have been aware of the Complainant when it registered the mark. However, while the Complainant provided a substantial amount of evidence of the reputation of its mark in various jurisdictions, it did not provide such evidence in relation to the United States of America, where the Respondent resides, let alone evidence of its reputation at the time the disputed domain name was registered.

Secondly, and following from the above, the Complainant claims that it is “inconceivable” that the Respondent was not aware of its mark when it registered the disputed domain name. However, the disputed domain name has an obviously generic / dictionary meaning in English. This fact alone means that it is, to the contrary of the Complainant's argument, easily conceivable that the Respondent was not aware of its alternative association with the Complainant's mark. The term “hero” is not distinctively associated with the Complainant. Apart from its generic / dictionary meaning, the Respondent provides evidence of substantial third party use of that term in marks pending or registered in the United States of America alone. As such, there would need to be clear evidence that the Respondent had registered the disputed domain name to profit intentionally from the goodwill in the Complainant's mark. There is no such evidence at all in this case.

Even if the Respondent had taken some active steps to conduct a trademark or other search, it is not clear that this would have uncovered the Complainant's trademark. The Respondent is resident in the United States of America, while the Complainant is a Swiss company. When the disputed domain name was registered (1995), the Complainant did not appear to have a strong business presence in the United States of America. At the time the disputed domain name was registered, few trademark offices of the world provided the public with online access to its trademark registry, and search engines were not as developed as they are today.

The nature of the Respondent's original business purpose, combined with the generic / dictionary nature of the domain name, also suggest that the Respondent would have had no real reason to investigate whether others had trademark rights relating specifically to the term “hero”. The fact of others having such rights was, in any case, no barrier to the Respondent also using a generic / dictionary term in connection with a legitimate business.

Thirdly, the Complainant states that Internet users would expect that the website at the disputed domain name would be associated with the Complainant. For the reasons set out above, this argument is unpersuasive. The Complainant provides no relevant evidence to support it. The term “hero” is subject to substantial third party use and has a generic / dictionary meaning which could be employed with a wide variety of conceivable associations.

Fourthly, the Complainant claims that the Respondent registered the disputed domain name primarily to sell it to the Complainant. Relevantly, paragraph 4(b)(i) provides that there is evidence of bad faith where there are circumstances indicating that a respondent registered a domain name primarily for the purpose of selling it to the complainant who is the owner of a trademark, for valuable consideration in excess of the respondent's out-of-pocket costs directly related to the domain name.

This argument however is controverted by the evidence. As noted above, there is no evidence that the Respondent had the Complainant in mind when it registered the disputed domain name – let alone that the Complainant was the “primary” focus of the registration. All the evidence relating to the sale of the disputed domain name is of approaches made by the Complainant to the Respondent. This includes correspondence as far back as 2002, provided as evidence in the Response. In that correspondence, a representative of the Complainant wrote to the Respondent (addressed to a representative of “the Heroic Sandwich”) stating, among other things that:

“Currently Hero [the Complainant] is reviewing its domain names. With a view to its investor relations, Hero would appreciate to have the domain name ‘hero.com' in its portfolio. I am therefore entrusted to contact you with respect to an eventual purchase of the domain by Hero…”.

The Respondent's response was that “Unfortunately, at this time, we are not interested in selling it.” This suggests, contrary to what is argued in the Complainant, that the Respondent had no intention to sell the disputed domain name.

The Complainant refers to, but provides no evidence of, correspondence in which the Respondent indicated that it would be willing to sell the disputed domain name for USD 250,000. The Complainant states that this is “an unreasonably high amount of money”. Whether it is or not, the Complainant's reference to this correspondence is irrelevant. There is simply no evidence that the Respondent registered the disputed domain name to sell it. The Respondent's consistent rejections of the Complainant's offers rather suggest that the Respondent had no such intention.

Consistent with this, there is no evidence at all that the Respondent registered the disputed domain name with the Complainant in mind. The Respondent has evidently put the disputed domain name to a variety of uses over the substantial period of time since it was registered in 1995. None of those uses appear to have had any relationship with the Complainant or its business.

Even if the Complainant had offered to sell the disputed domain name to the Complainant, this by itself would not be evidence of bad faith. As relevantly noted by the Panel in Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304, “where a respondent has registered a domain name consisting of a dictionary term because the respondent has a good faith belief that the domain name's value derives from its generic qualities, that may constitute a legitimate interest and the offer to sell such a domain name is not necessarily a sign of bad faith.”

Finally, the Complainant claims that the Respondent does not conduct any legitimate activity using the disputed domain name. Again, the evidence does not support this contention. This claim appears to be based on the fact that the disputed domain name currently reverts to a “portal” website. But, even if this was the only use the Respondent had ever made of the disputed domain name (which it is not), this is not itself evidence of bad faith. The Respondent has clearly made other uses of the disputed domain name, including in connection with its original business intention, and with the provision of email services.

For all these reasons, the Panel finds that the Complainant has failed to make its case under this element of the Policy.

The Respondent requests a finding of reverse domain name hijacking against the Complainant. This is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”

“Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent's use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy.” Rohl, LLC v. ROHL SA, WIPO Case No. D2006-0645.

The facts of this case suggest that it should have been apparent to the Complainant, on the basis of its own investigations, that it could not reasonably succeed in bringing a complaint under the Policy.

The disputed domain name is a dictionary term which is also potentially generic in English. Added to this, not only were its arguments not supported by relevant evidence in relation to the second and third grounds of the Policy, various evidence provided by the Complainant itself undermines its case. For example, the Complainant provided evidence that the Respondent communicated with it using the “[name]@hero.com” address. The Complainant also provides various evidence of the Respondent's websites over the years, including websites clearly identifying the Respondent's business name as “Hero Consulting”, and offering “@hero.com” email accounts. This evidence would suggest that the Respondent had a legitimate business interest in the disputed domain name. The Complainant has been less than frank in not addressing these possibilities, if even to put its own case in relation to them.

For these reasons the majority of the Panel finds that the Complainant has engaged in reverse domain name hijacking. One Panel member would, however, find that the issue of reverse domain name hijacking is more finely balanced on the facts of this case and that it is questionable whether the Complainant instituted the proceeding in bad faith, without having any real prospect of success.

James A. Barker
Presiding Panelist

G. Gervaise Davis III
Panelist

Michael A.R. Bernasconi
Panelist

Date: August 13, 2008