WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hill & Knowlton, Inc. v. Dexter Smith
Case No. D2007-1478
1. The Parties
The Complainant is Hill & Knowlton, Inc., New York, New York, United States of America, represented by Davis & Gilbert LLP, United States of America.
The Respondent is Dexter Smith, St. Louis, Missouri, United States of America; and New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <hillknowlton.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2007. On October 11, 2007, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. On October 11, 2007, CSL Computer Service Langenbach GmbH dba Joker.com 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 October 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 1, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2007.
The Center appointed William R. Towns as the sole panelist in this matter on November 19, 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
The Complainant is a public relations and lobbying firm established in 1927 and headquartered in New York City. The Complainant has offices in 40 countries, and owns multiple trademark registrations for HILL & KNOWLTON in the United States and elsewhere. McDonald’s, Motorola and Procter & Gamble are some of the Complainant’s better known clients.
The Respondent registered the disputed domain name but has made no use of the domain name with an active website. However, various organizations were contacted by two individuals using “hillknowlton.com” email addresses and misrepresenting themselves as employees of the Complainant for purposes of soliciting on-camera interviews with these organizations under false pretenses. It further appears that at least one of these organizations was an existing client of the Complainant.
The Respondent previously registered a domain name confusingly similar to another public relations firm and was found to have acted in bad faith under the Policy. See Burson-Marsteller, LLC v. Dexter Smith, WIPO Case No. D2002-1012.
5. Parties’ Contentions
A. Complainant
The Complainant describes itself as a leading global public and relations communications company providing public relations and lobbying services to local and multinational clients. According to the Complainant, in addition to obtaining multiple trademark registrations for HILL & KNOWLTON, the Complainant has used the mark worldwide for eighty years, and the mark enjoys considerable fame, goodwill and a valuable reputation.
According to the Complainant, the Respondent is a known cybersquatter who wrongfully registered the name of another public relations company affiliated with the Complainant to deceive actual and potential clients of that public relations firm. In this case, the Complainant alleges that the Respondent has aided or abetted two or more individuals to deceive clients of the Complainant who were also notable politically-conservative organization.
According to the Complainant, persons using the names Ned Blades and Larry Hamburg and the email addresses nblades@hillknowlton.com and lhamburg@hillknowlton.com misrepresented themselves as Hill & Knowlton employees and set up on-camera interviews with the Competitive Enterprise Institute, Hudson Institute, and American Enterprise Institute for a purported documentary film allegedly in line with these organizations’ pro-business interests. In the course of so doing, the Complainant asserts that these individuals fraudulently represented themselves to be employed by the Complainant.
The Complainant contends that these individuals could have acquired and used the “hillknowlton.com” email addresses only with the Respondent’s cooperation. The Complainant further maintains on information and belief that Blades and Hamburg are pseudonyms for Jacques Servin (a/k/a Andy Bichlbaum) and Igor Vamos (a/k/a Mike Bonanno), known collectively as The Yes Men, two cultural pranksters famous for impersonating corporate officials and slyly mocking them to advance an anti-corporate agenda.
The Complainant maintains that Bichlbaum and Bonanno are co-founders of RTMark, an organization based in the United States of America that has for years sponsored The Yes Men’s various anti-corporate hijinks. The Complainant alleges that the Respondent is affiliated with RTMark and The Yes Men, as evidenced by the dexter@rtmark.com email address provided in connection with the registration of the disputed domain name. Since, according to the Complainant, the Yes Men have already demonstrated an affinity for impersonating Hill & Knowlton officials, it is likely that they are closely involved in the Respondent’s registration of the disputed domain name and its use by Blades and Hamburg.
The Complainant argues that the disputed domain name is functionally identical and confusingly similar to the Complainant’s HILL & KNOWLTON mark. The Complainant maintains that is has not authorized or consented to the Respondent’s use of the HILL & KNOWLTON mark, that the Respondent must have known of the Complainant’s rights in the mark when he registered the disputed domain name, and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent’s intentional and unauthorized registration of a domain name incorporating the Complainant’s well known mark is in and of itself evidence of bad faith. The Complainant contends that the Respondent registered the disputed domain name for commercial gain, and likely was paid by RTMark/The Yes Men for doing so. Further, the Complainant argues that bad faith can be inferred from other circumstances, including (1) the Respondent’s prior bad faith registration and use of a domain name adopting the mark of another public relations firm; (2) the Respondent’s failure to respond to a cease and desist letter; and (3) the Respondent’s provision of false contact information to the domain name Registrar (telephone numbers).
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See, eg., Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer is the sole remedy provided to a complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <hillknowlton.com> is confusingly similar to the Complainant’s HILL & KNOWLTON mark, in which the Complainant unquestionably has established rights through registration and use. At a minimum, the Complainant’s mark is entitled to a presumption of validity by virtue of its registration with the United States Patent and Trademark Office. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.
Under paragraph 4(a)(i) of the Policy the question of identity or confusing similarity is evaluated based on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, WIPO Case No. D2000-1525. The disputed domain name differs from the Complainant’s mark only by the absence of the “&” sign. The omission of this sign does not dispel the confusing similarity with the Complainant’s mark. See Hunton & Williams v. Am. Distrib. Sys., Inc., WIPO Case No. D2000-0501 (<huntonwilliams.com> functional equivalent of Hunter & Williams).
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain. It is uncontroverted that the Complainant has not licensed or otherwise authorized the Respondent to use the Complainant’s HILL & KNOWLTON mark, nor has it authorized the Respondent to register a domain name corresponding to that mark. There is no indication that the Respondent has been commonly known by the disputed domain name, and no evidence of the Respondent’s use of the domain name with an active website, or of any demonstrable preparations by the Respondent to do so.
The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The circumstances as set forth and documented in the Complaint and its Annexes are sufficiently evocative of cybersquatting to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to him of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Respondent has not submitted a formal response to the Complaint, and in the absence of any such submission this Panel may accept reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.1 In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the safe harbors of paragraph 4(c) of the Policy. Nothing in the record indicates that the Respondent has been commonly known by the disputed domain name. The Respondent makes no use of the disputed domain name with an active website. As noted above, there is evidence that the Respondent has used or permitted others with whom the Respondent may well be affiliated2 to use a “hillknowlton.com” email addresses to contact clients or prospective clients of the Complainant under apparently false pretenses. Such questionable use of the disputed domain name does not of itself demonstrate rights or legitimate interests in the domain name under the Policy.
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names by a registrant seeking to exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
The Panel finds on balance that the Respondent registered and is using the disputed domain in bad faith. A strong inference can be drawn from the circumstances of this case, supported by the Respondent’s prior bad faith registration of a domain name confusingly similar to the mark of another public relations firm, that the Respondent was well aware of the Complainant’s HILL & KNOWLTON mark. The evidence is uncontroverted that the Respondent used or permitted individuals with whom the he appears to be affiliated to use email addresses associated with the disputed domain under apparently false pretenses. There is no indication of the Respondent’s use or any demonstrable preparations to use the disputed domain name for any legitimate purpose, and the Respondent has not contested the Complainant’s allegations or elected to provide any explanation in the instant proceedings. In view of the foregoing, the Panel finds that bad faith registration and use has on balance been established. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a Complainant and its products or services, its use by a registrant with no connection to the Complainant suggests “opportunistic bad faith”. See also Paula Ka v. Paula Korenek, WIPO Case No. D2003-0453.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <hillknowlton.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: December 4, 2007
1 Some panels have held that a respondent’s lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See, e.g., Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent’s failure to reply. See, e.g., Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
2 The Respondent’s contact information as provided to the domain name registrar includes the email address “dexter@rtmark.com”. The Complainant has provided persuasive evidence that the individuals using the “hillknowlton.com” email addresses are co-founders of the company RT Mark.