Hankison International v. Hankinsoninternational.com

[Indexed as: Hankison International v. Hankinsoninternational.com]
[Indexed as: hankisoninternational.com]

National Arbitration Forum

Forum File No. FA0004000094393
Commenced: 11 April 2000
Judgment: 3 May 2000

Presiding Arbitrator:  Judge Irving H. Perluss [Retired]

Domain name - Domain name dispute resolution policy - US Unregistered Trademark - Common law protection Fictitious name registration - Identical - Confusingly similar - Bad faith registration - Bad faith use.

Complainant's trademark, Hankison International, was not registered.  Registrant registered the domain name, "HANKISONINTERNATIONAL.COM".  Complainant alleged that its trademark was identical and that Respondent registered the domain name at issue in bad faith. 

Held, Name Transferred to Complainant

Unregistered marks are protected under common law principles.  Thus, complainant's name has common law protection extending back at least to 1991. Respondent's fictitious name registration creates only a rebuttable presumption of an exclusive right to use by the registrant.  Complainant has overcome the presumption by virtue of its common law protection. Complainant was successful in proving each of the three elements found in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy. 

It is clear that the domain name at issue is nearly identical to Complainant's name and long-used unregistered mark. Respondent has no rights or legitimate interest in respect to the domain name.  Respondent will create confusion by using the domain name. Lang Luo, the registrant of the domain name in issue, has demonstrated bad faith by seeking to capitalize on the goodwill created by his former employer. Respondent is seeking commercial gain by misleadingly diverting users to its own web site and is not making a legitimate noncommerical or fair use of the domain name. 

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Registration Agreements referred to

Network Solutions Domain Name Registration Agreement, effective January 3, 2000

Statutes referred to

California Business and Professions Code ss14411

Langham Act, ss43(a) [15 U.S.C. ss1125(a)]

Cases referred to

Accuride Intern. Inc. v. Accuride Corp. (C.A.9, 1989), 871 F.2d 1531, 10 U.S.P.Q. 2d 1589

Panel Decision referred to
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Perluss, Panelist : - 

The above-entitled matter came on regularly for an administrative hearing on May 3, 2000, before the undersigned, on the Complaint of Hankison International, hereinafter "Complainant," against Hankisoninternational.com, LLC, hereinafter "Respondent."

Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Name: Hankisoninternational.com

Domain Name Registrar: Network Solutions

Domain Name Registrant: Hankisoninternational.com

Date of Domain Name Registration: January 3, 2000

Date Complaint Filed: April 3, 2000

Date of Commencement of

Administrative Proceedings in

Accordance with Rule 2(a) and

Rule 4(c): April 11, 2000

Due Date for a Response: May 2, 2000

After reviewing the Complaint for administrative compliance, The National Arbitration Forum, hereinafter "The Forum," transferred the Complaint to the Respondent in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified the above Registrar, ICANN and the Complainant that the administrative proceeding had commenced.

Respondent had registered the domain name in issue with Network Solutions, the entity that is the Registrar of the domain name. By registering its domain name with Network Solutions, Respondent agreed to resolve any dispute regarding its domain name through ICANN's Uniform Domain Name Dispute Resolution Policy.

Respondent submitted a timely Response to The Forum pursuant to Rule 5(a). 

FINDINGS OF FACT 

1. Since 1948, Hankison has been a name well known in the compressed air treatment products business. Complainant's name was changed to Hankison International in 1991. There, however, has been no trademark registration.

2. Lang Luo, the registrant of the domain name herein involved, was an employee of 
Complainant until October 1999, when he left his employment to work for a competitor.

3. Lang Luo registered the domain name here in issue on January 3, 2000. He asserts that Respondent will engage in the business of teaching aerosol science technology and contamination to people from industry and government.

4. Respondent has filed a fictitious name registration in Lee County, Florida, for the fictitious name "Hankison International Company."

5. Complainant's prayer for relief seeks that the domain name be transferred from Respondent to Complainant.

CONCLUSIONS

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned has concluded based on the law, the rules and the findings of fact above set forth, as follows:

1. A cause of action based on an unregistered mark may exist for unfair competition under the provisions of the Langham Act, §43(a) [15 U.S.C. §1125(a)].

2. Because trademark rights are acquired and maintained by actual use of the mark in commerce, unregistered marks also are protected under common law principles. Complainant's name, accordingly, has common law protection extending back at least to 1991.

3. Respondent has not cited or directed the Arbitrator to Florida law relating to fictitious name registration. However, generally such registration is confined to the county of registration and creates only a rebuttable presumption of an exclusive right to use by the registrant. [See, for example, California Business and Professions Code §14411; Accuride Intern. Inc. v. Accuride Corp. (C.A.9, 1989) 871 F.2d 1531, 10 U.S.P.Q. 2d 1589.] Complainant has overcome the presumption here by virtue of its common law protection.

4. The domain name in issue is nearly identical to Complainant's name [and long-used unregistered mark].

5. Respondent has no rights or legitimate interests in respect to the domain name, but, to the contrary, Respondent will create confusion by using the domain name.

6. Lang Luo, the registrant of the domain name in issue, has demonstrated bad faith by clearly seeking to capitalize on the goodwill created by his former employer.

7. Respondent is not making a legitimate noncommercial or fair use of the domain name, for it will seek commercial gain by misleadingly diverting users to its own web site.

DECISION

Based on the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

IT IS DIRECTED THAT THE DOMAIN NAME "Hankisoninternational.com" REGISTERED BY RESPONDENT, BE TRANSFERRED TO COMPLAINANT Hankison International.

Dated: May 3, 2000, by Judge Irving H. Perluss [Retired], Arbitrator.
IRVING H. PERLUSS