1st May 2007
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HSM Argentina S.A. v. Vertical Axis, Inc
Case No. D2007-0017
1. The Parties
The Complainant is HSM Argentina S.A., Ciudad de Buenos Aires, Argentina, represented by Perez Alati, Grondona, Benites, Arntsen & Martinez de Hoz, Argentina.
The Respondent is Vertical Axis, Inc, Gyeonggi-do, Republic of Korea, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <hsm.com> is registered with Nameview, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2007. On January 8, 2007, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On January 18, 2007, Nameview Inc. 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 January 22, 2007. The Center then 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 January 30, 2007. In response to a request from the Respondent, the Center extended to due date for the Response, in accordance with paragraph 5(d) of the Rules, to February 23, 2007. The Response was filed with the Center on February 22, 2007.
The Center appointed James A. Barker, Christopher K. Larus and David E. Sorkin as panelists in this matter on April 17, 2007. 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.
4. Factual Background
The following facts, drawn from the Complainant and the Response, are not contested.
The Complainant was established in 1997. It provides services in the field of executive education, including the organization of conferences and the development of multimedia. The Complainant organizes events across the Americas and Europe. The Complainant also publishes a business and management magazine called “Gestión & HSM Management” and has developed “www.intermanagers.com”, an online portal for executives that offers an array of products and services for continuous learning and community building.
The Complainant has a number of registered trademarks including HSM, HSMonline, HSMeducation, and HSM ManagemenTV. Those marks are variously registered in a number of countries, including Argentina, Brazil, Chile, Mexico, Venezuela, Colombia, the United States of America, and the European Union. The applications for most of those marks were first filed in the year 2000.
The Respondent has used the disputed domain name in connection with a pay-per-click search engine. On April 29, 2007, the disputed domain name reverted to such a website. The website states prominently at the top of its homepage “Welcome to hsm.com”, and provides a list of links categorized as e.g. “Cheap Flights”, “Dating”, “Music Downloads” and “Shopping”.
The Respondent first registered the disputed domain name on January 24, 2001 (indicated in the Whois record as the date of the domain name’s creation).
5. Parties’ Contentions
The following is summarized from the Complaint.
The Complainant claims that it is clear that the domain name is identical to the trademarks, trade names and service mark in which the Complainant has rights.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states, in effect, that there is no evidence of circumstances that would demonstrated such an interest, as set out in paragraph 4(c)(i), (ii) and (iii) of the Policy. Having made that claim, the Complainant states that the burden is on the Respondent to demonstrate rights or legitimate interests in the disputed domain name. The Complainant appears to make the case that the Respondent has demonstrated bad faith, under paragraph 4(a)(i) of the Policy, for essentially the same reasons.
The following is summarized from the Response.
The Respondent does not contest the Complainant’s rights in its trademarks, and takes no position as to whether the disputed domain name is identical or confusingly similar to those marks.
The Respondent claims that it has rights or legitimate interests in the disputed domain name. It claims that “hsm” is simply a 3-letter combination that is an abbreviation for numerous things and is subject to substantial third party use, of which it provides some evidence. It says that this establishes its legitimate interest in the disputed domain name, citing Energy Source Inc. v. Your Energy Source, NAF Case No. 96364.
For similar reasons, the Respondent claims that there is no evidence that it registered and has used the disputed domain name bad faith. The Respondent states that there is no evidence that it registered the disputed domain with the Complainant in mind, and that it has never used the disputed domain name in a way that demonstrates an intent to profit from the Complainant’s trademarks. The extensive third party use of “hsm” is overwhelming evidence that the Complainant does not enjoy exclusive use of the three-letter combination “hsm”. The Complainant also claims that the delay between its registration of the disputed domain name and the filing of the Complaint, demonstrates that the Complainant did not believe that its claims were truly warranted.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(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 was registered and is being used in bad faith.
The Complainant must prove each of these three elements, which are discussed in turn as follows.
A. Identical or Confusingly Similar
There is no dispute that the Complainant has registered rights in its trademarks, including the trademark HSM in a number of jurisdictions. The Complainant provided evidence of its registered rights.
Excluding the “.com” extension which is not relevant, the Panel finds that the disputed domain name is identical to the Complainant’s registered HSM mark.
The Panel therefore finds that the Respondent has established that the disputed domain name is identical to a trademark in which it has rights, for the purpose of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
For the reasons set out below, it is unnecessary for the Panel to make a finding as to whether the Respondent has a right or legitimate interest in the disputed domain name.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, are 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 to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent registered the disputed domain name 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; or
(iii) the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online 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 the Respondent’s website or other location.
The Complainant does not provide evidence of any of these circumstances, nor any other circumstances which might demonstrate the bad faith registration and use of the disputed domain name.
The Respondent claims that there is no evidence of bad faith, because the letters “hsm” are subject to substantial third party use, and there is no evidence that the Respondent was aware of the Complainant or its trademarks when the disputed domain name was registered. The Respondent argues that, absent proof that a “common term domain name” was registered or acquired solely for the purpose of profiting from the Complainant’s trademark rights, there can be no finding of bad faith registration or use. In this connection, the Respondent notes that “HSM is incorporated in 9 third-party U.S. trademark registrations. An advanced Google search for HSM yielded 1.9 million third-party results.”
A finding of bad faith registration and use requires evidence that the Respondent knew of the Complainant or its mark. The Panel finds that there is not sufficient evidence for such a finding in this case, for all the following reasons.
Firstly, the evidence of third party use of the letters “hsm” mitigates against a finding that the Respondent knew specifically of the Complainant or its mark when the disputed domain name was registered. This evidence suggests that the combination of the letters “hsm” may have a number of potential associations, unconnected with the Complainant.
Secondly, although it is argued by the Complainant, the Panel stops short of finding that the Complainant or its marks are famous. The Complainant appears to be well-known in its field. But that field (‘executive education’) appears specific and defined. The Panel does not make the finding that the Complainant was, when the disputed domain name was registered, so generally well-known that the Respondent must have been aware of it.
Thirdly, the Respondent is resident in the Republic of Korea, while the Complainant is based in Argentina and its marks are registered principally in the Americas and the EU. The Complainant did not provide evidence of operating or having registered marks in the Republic of Korea. In other similar cases, panels have declined to find bad faith, in part where a complainant owns marks in one country but the respondent operates in another. (See for example, Vernons Pools Limited v. Vertical Axis, Inc, WIPO Case No. D2003-0041, which appeared to involve the same Respondent as in this case, although then based in Hong Kong. Similarly, see Jet Marques v. Vertical Axis, Inc, WIPO Case No. D2006-0250, again involving the same Respondent.) This fact goes against an inference that the Respondent knew of the Complainant or its marks in this case.
Fourthly, it is apparent, from the Respondent’s statements and its involvement in a number of prior cases under the Policy, that its business consists of speculatively registering terms as domain names to attract Internet traffic and generate revenue from ‘click through’ advertising. The Respondent provides a declaration from its manager, to the effect that the Respondent registered the disputed domain name because “it was an available 3-letter combination to which it knew no individual or entity could have exclusive rights”. How the Respondent chooses which such domains to register, or whether it randomly registers any it can get its hands on, was not disclosed by the Respondent in these proceedings. The Respondent does not provide any explanation for why it chose particularly the letters “hsm” in connection with its website. And the genuineness of the Respondent’s assertions might be seen to have less impact, since they appear to be largely ‘cut and pastes’ from other parties statements in other proceedings. (For example, the quote from the Respondent’s declaration above, is word-for-word the same as that made by a different Respondent, although with the same legal representative, in Builder’s Best, Inc. v. Yoshiki Okada, WIPO Case No. D2004-0748). Despite this, the Panel accepts in this case plausible that the Respondent simply registered the disputed domain name because it was available at the time.
Fifthly, and related to the points above, the Respondent has credibly denied that it had any knowledge of the Complainant or its marks when it registered the disputed domain name. There is no further evidence of bad faith in this case, either from the content of the website itself, or any other evidence provided by the parties.
Sixthly, the burden is ultimately on the Complainant to make its case under this, and other elements of the Policy. The Complainant’s argument is not strong, particularly in relation to the bad faith. The Complaint makes virtually no statements against the Respondent in relation to this element of the Policy. As such, the Complainant’s case on bad faith is largely one which the Panel has inferred from its arguments in relation to the separate ground under paragraph 4(a)(ii) of the Policy.
Finally, although the Respondent has been involved both successfully and unsuccessfully in prior proceedings under the Policy, this case appears to be more similar to others in which panels have made findings for the Respondent on the bad faith element. (See e.g. Jet Marques v. Vertical Axis, Inc, WIPO Case No. D2006-0250 cited above, Shoulderdoc Limited v. Vertical Axis, Inc, WIPO Case No. D2006-0625 and, although to a lesser extent, Aquascape Designs, Inc. v. Vertical Axis, Inc c/o Domain Adminstrator, NAF Case No. 629222.)
The Complainant has not, therefore, established its case under this element of the Policy.
For all the foregoing reasons, the Complaint is denied.
James A. Barker
Christopher K. Larus
David E. Sorkin
Dated: May 1, 2007