The Complainant is HID Global Corporation of Austin, Texas, United States of America (US), represented by Cohausz & Florack, Germany.
The Respondent is ICS Inc of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland; Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America.
The disputed domain name <hidgobal. com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2015. On January 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 8, 2015, the Registrar transmitted by email to the Center its verification response stating:
(a) it is the Registrar for the disputed domain name;
(b) as the disputed domain name is registered with a domain name privacy service, registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint;
(c) the disputed domain name was registered on January 27, 2013;
(d) the language of the Registration Agreement is English;
(e) the disputed domain name is registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
As the Registrar’s verification response disclosed registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint, the Center sent an email communication to the Complainant on January 9, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 12, 2015.
The Center verified that the Complaint together with the amended 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 proceeding commenced on January 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2015.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 12, 2015. 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 Complainant is a wholly owned subsidiary of Assa Abloy, a Swedish supplier and manufacturer of locks and door opening solutions. The Complainant’s particular business is the provision of equipment and software for access control devices and systems involving the use of radio frequency identification devices (RFID) and near field communications (NFC) devices.
The Complainant, or its parent Assa Abloy, is the owner of numerous registered trademarks used by the Complainant including:
- US Trademark No. 3,522,616 for HID GLOBAL, registered on October 21, 2008 in respect of a range of goods and components in International Class 9 related to RFID systems, keypad, barcode and biometric technologies and software relating thereto;
- US Trademark No. 2,249,625 for HID, registered on June 1, 1999, in respect of a range of RFID devices in International Class 9;
- Community Trademark No. 011270527 for HID, registered on May 3, 2013, in respect of a wide range of goods and services in International Classes 9, 16, 35, 37, 38, 41 and 42;
- International Registration No. 1200311 for HID, registered on July 19, 2013 in respect of a wide range of goods and services in International Classes 9, 16, 35, 37, 38, 41 and 42.
The Complaint also includes details of two further US applications which have been published for opposition. Annex 4 to the Complaint lists a number of other countries in which the Complainant, or Assa Abloy, has registered either HID or HID GLOBAL as a trademark. It is not possible to tell from the details provided, however, the registration dates, although many are listed as registered rather than as pending, or the goods or services which have been specified.
According to the Registrar, the disputed domain name was created on January 27, 2013. It has expired during the pendency of this proceeding. The Registrar has confirmed, however, that it is being held in accordance with paragraph 3.7.5.7 of ICANN’s Expired Domain Deletion Policy pending the outcome of this proceeding.
The disputed domain name resolves to a website which appears to be a pay-per-click landing page. Apart from the header, “hidgobal.com” and a banner “DOMAIN SALE CLICK HERE TO BUY NOW!” it contains numerous “related links”. Numerous of these links are, or appear to be, to HID products. Others, however, are not. For example, there are “related links” to Honeywell Security, Wiegand Reader, Alarms Systems, Swipe Card Security and so on. Clicking on these links takes one to a page of “sponsored links”. At least some of these “sponosored links” appear to be advertisements relating to HID products. Others are not. For example, clicking on the related link Swipe Card Security takes one to a page on which the first “sponsored link” is “Swipe Cards” then a URL and the text “Low Cost HID, Motoraola, Indala, clamshell, ISO Print, Fob ….”
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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
(iii) the disputed domain name has been registered and is being used in bad faith.
No response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven that it, or its parent, owns at least the individual trademarks identified in section 4. above for HID and HID GLOBAL. In the case of the trademarks owned by Assa Abloy, the Complainant states that it holds from its parent the exclusive right to use those trademarks. In view of the parent/subsidiary relationship and the grant of exclusive rights from Assa Abloy to the Complainant, the Panel will proceed on the basis that the Complainant does have the exclusive rights in the trademarks as it claims. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.8.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Apart from the “.com” extension (which may be disregarded as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252), the disputed domain name differs from the Complainant’s trademarks for HID GLOBAL by the omission of the letter “l” and the space between the two verbal components. These are obvious misspellings, sometimes described as typosquatting. The Complainant’s trademark, albeit misspelled, still remains the dominant or principal component of the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the Complainant’s HID GLOBAL trademarks. See paragraph 1.10 of the WIPO Overview 2.0.
As “gobal” is an obvious misspelling of “global” and “global” is a purely descriptive term, the Panel also finds that the disputed domain name is confusingly similar to the Complainant’s HID trademarks. See paragraph 1.9 of the WIPO Overview 2.0.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview 2.0.
The Complainant states that the Respondent is not a retailer of its products. Nor has the Complainant authorised the Respondent to use the disputed domain name and the Respondent is not affiliated with the Complainant in any way.
The disputed domain name is plainly not derived from the Respondent’s name.
As noted above, the disputed domain name resolves to a website at which the disputed domain name is offered for sale. The website itself features pay-per-click advertisements to a range of businesses and products some of which appear to be related to the Complainant or its products, but a significant proportion of which are not and many, if not most, of those which are not appear to be products competing with the Complainant’s products. Accordingly, the Respondent is not really in a position to claim that the disputed domain name is being used in connection with a good faith offering of goods or services. While a three letter acronym such as “hid” may not be distinctive in many contexts, in the present case it is neither descriptive nor derived from the Respondent’s own name and, apart from its use by the Complainant to denote products sourced from it, the term is not directly descriptive or otherwise an apt usage for the types of goods or services in question.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
The use made by the Respondent of the disputed domain name as described above indicates that the Respondent is using the disputed domain name in bad faith. While some of the links appear to be to the Complainant’s genuine products, a significant proportion – certainly not a trifling number – are not. The Panel infers therefore that the disputed domain name is being used to take advantage of its significance as the Complainant’s trademark.
It seems very unlikely that the Respondent registered a domain name containing “gobal”, the deliberate misspelling of “global”, by accident. Accordingly, the Panel infers that the Respondent was well aware of the Complainant’s trademarks when it registered the disputed domain name. The use made of the disputed domain name since registration, consisting of links to webpages offering the Complainant’s products and products apparently competitive with those products for sale, reinforces that conclusion.
Accordingly, in the absence of any justification supplied by the Respondent, the Panel finds that the disputed domain name was both registered and is being used in bad faith under the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <hidgobal.com> be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: February 24, 2015