{
    "case_number": "CAC-UDRP-100900",
    "time_of_filling": "2014-12-23 10:19:40",
    "domain_names": [
        "hohmann.com"
    ],
    "case_administrator": "Lada Válková (Case admin)",
    "complainant": [
        "Hohmann Fine Art, Inc."
    ],
    "complainant_representative": "Steve Rinehart",
    "respondent": [
        "Hans Hohmann"
    ],
    "respondent_representative": "BPM legal",
    "factual_background": "About the Complainant\r\n\r\nThe Complainant was founded on April 1, 1976 in Germany by Werner and Ursula Hohmann for vending fine art. Christian Hohmann, the founders’ son, joined the family business in 1993. Mr. Hohmann later assumed residence in California and opened other fine art galleries there, including one in Palm Desert, California. For nearly forty years, the Complainant has shown and sold fine art across Europe and North America. The Complainant maintains websites at <christianhohmann.com> (for US traffic) and <galeriehohmann.de>, which is destined to  German traffic. The Complainant also maintains numerous storefront galleries. Over the years, the Complainant’s clients and influence in the fine art industry have steadily grown. The Complainant has sold tens of millions of dollars worth of fine art across America, Europe and throughout the western world.\r\n\r\nGiven the nature and extent of its sales, advertising as well as client and media recognition, the Complainant maintains that  the name and trademark HOHMANN has become well-known throughout the world and individuals and other entities have come to recognize the Complainant’s mark as the distinctive identifier which it is.\r\n\r\nAbout the Respondent\r\n\r\nThe Respondent is a graduate engineer for electrical engineering and operates his own business in Stuttgart, Germany, since 1991. The Respondent’s family name is Hohmann.  \r\n\r\nThe disputed domain name was offered for sale at www.afternic.com back in 2004.  In October 2004, the Respondent acquired the disputed domain name at sedo.com for the amount of € 2.200,00. The Respondent has provided evidence of the purchase of the disputed domain name in 2004 from Sedo. \r\n\r\nAccording to the Respondent, it took some time to manage the transfer of the disputed domain name from the seller’s registrar in Malaysia to the Respondent’s registrar in Germany. The Respondent maintains that he is using the disputed domain name in connection with his business, mainly for e-mail communication purposes since 2005, and that the  content of the website has not changed throughout the years.\r\n",
    "other_legal_proceedings": "The Panel is not aware of other legal proceedings, which are pending or decided and which relate to the disputed domain name.",
    "no_response_filed": "The Complainant's contentions are the following.\r\n\r\nThe disputed domain name should be transferred to the Complainant because it violates the rights of the Complainant on its HOHMANN US registered trademark and its common law trademark rights, for the following reasons.\r\n\r\nThe disputed domain name is identical to the Complainant's HOHMANN registered and common law trademark. The addition of the generic top-level domain “.com.” is irrelevant for the purpose of assessing similarity under the Policy. \r\n\r\nThe Respondent’s registration of the disputed domain occurred after the Complainant began using its mark in commerce. The Respondent created the disputed domain name on November 21, 2000 and renewed it many times over a period of years, including in 2006, 2007, 2008, 2010, 2011, 2012, 2013 and 2014. During these fourteen years, the Respondent has never made use of the disputed domain name. The disputed domain name only resolves to a generic landing page containing advertisements to competitors of the Complainant unaffiliated with the Complainant. The Respondent derives cost-per-click revenue from the landing page, including some having pornographic advertisements. The websites resolved by the disputed domain name have always been in English.\r\n\r\nGiven the passive use of the disputed domain name, its effective registration date for the purposes of this proceeding is November 21, 2014, which is the last date the disputed domain name was renewed. The Complainant cited a number of case precedents, in WIPO and NAF UDRP proceedings, where the Panelist  held that the renewal date is the effective registration date in cases of long time passive holding of the disputed domain names.\r\n\r\nThe Respondent has no rights or legitimate interest in the disputed domain name. The Respondent’s registration of the disputed domain name occurred after the Complainant began using its mark in commerce. \r\n\r\nOnce a complainant establishes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests. The Complainant has never authorized, licensed, or otherwise permitted the Respondent to use its mark. The Respondent’s unauthorized and unapproved mis-direction of consumers searching for the HOHMANN mark damages the Complainant. As such, the Respondent’s registration and use of the disputed domain name is not legitimate. Therefore, the Respondent  use of the disputed domain name to intentionally divert Internet users seeking the Complainant’s products and services to a direct competitor for its own commercial gain does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the domain name pursuant to the Policy.\r\n\r\nThe Respondent’s registration and use of the disputed domain name is in bad faith, and illegitimate. The Respondent had knowledge when it registered the disputed domain name that the Complainant had rights in the disputed domain name.\r\nUse of the disputed domain name to only resolve to a generic landing page containing advertisements to competitors of the Complainant unaffiliated to the Complainant interferes with the Complainant’s business affairs, creates initial interest confusion, and otherwise harms the Complainant by using the Complainant’s mark to generate traffic and search engine rankings, as well as to deprive the Complainant of a gTLD in which to reflect its mark. The Respondent is therefore intentionally attempting to divert Internet users to its website via the disputed domain name and is therefore not making legitimate noncommercial, or fair use of the disputed domain name pursuant to Policy.\r\n\r\nThe Respondent’s bad faith registration and use of the disputed domain name has, will, and continues to damage the Complainant through the loss of customers, profits, business, lower search engine rankings, and goodwill, as well as by damage to the Complainant’s reputation and marks.\r\n\r\n\r\nThe Respondent's contentions are the following:\r\n\r\nFrom a procedural point of view, the Respondent points out that the correct language of the proceeding is German, as the language of the registration agreement is German. The Complainant requested to change the language of the proceeding based on screenshots from the website available at the disputed domain name at a time, where the Respondent was not the registered owner of the disputed domain name. The screenshot as of February 5, 2005  simply states that the website cannot be crawled by the Wayback Machine in English, which is the language of the Wayback Machine. Therefore, there is no evidence whatsoever which would justify a language other than the language of the registration agreement.\r\n\r\nHowever, as the Respondent is able to understand English, the Respondent accepts English to be the language of the proceeding, provided that he is not obliged to translate the German annexes to the Response into English.\r\n\r\nThe Respondent affirms that the Complaint has abused these proceedings. There can be no doubt that the Complainant has absolutely no right to the disputed domain name. The Respondent registered the disputed domain name in good faith solely because it corresponds to his family name. \r\n\r\nThe Respondent acquired the disputed domain name in 2004 because it corresponds to his family name. The disputed domain name was offered for sale at www.afternic.com back in 2004.  In October 2004, the Respondent acquired the disputed domain name at sedo.com for the amount of € 2.200,00.  It took some time to manage the transfer of the disputed domain name from the seller’s registrar in Malaysia to the Respondent’s registrar in Germany. Since 2005, the Respondent uses the disputed domain name in connection with his business, mainly for email communication purposes. The content of the website remained unchanged throughout all the years. The Respondent made available screenshots of his website at the disputed domain name of February 2, 2015, December 17, 2014, May 17, 2014, December 31, 2013, June 11, 2013, February 7, 2011, September 23, 2009 and October 14, 2005. The Respondent has not provided any kind of adult or infringing content at any time. The printouts attached to the Complaint refer to the domain name <hohman.com> and not to the disputed domain name <hohmann.com>.\r\n\r\nWith respect to the \"identity or confusing similarity\" requirement under paragraph 4(a)(i) of the Policy, the Respondent accepts that the disputed domain name is not only identical to his own family name but also to the family name of the Complainant’s owner and the trademark “Hohmann”. However, the Complainant cannot rely on rights on the name “Hohmann” in this proceeding. \r\n\r\nWith regard to the trademark for “Hohmann” registered with the USPTO, the Complainant has failed to provide evidence that it is the rightful owner of such trademark. The trademark is registered in the name of a certain Hohmann Fine Art, PO Box 3407, 92261 Palm Desert CA, US, while the Complaint is filed in the name of Hohmann Fine Art, Inc., 73-660 El Paseo, 92260 Palm Desert, CA, US. Therefore, the Complainant does not correspond to the trademark owner and the Complainant has not provided any evidence that it can rely on the rights in the registered Hohmann mark. Moreover, the Respondent acquired the disputed domain name 10 years before the trademark “Hohmann” was registered with the USPTO.\r\n\r\nWith regard to the unregistered rights in “Hohmann”, the Complainant has not provided sufficient evidence to establish such rights. It is well-established that common law trademark rights may be sufficient for the purposes of establishing rights under paragraph 4(a)(i) of the Policy. However, it is noteworthy that the requirements to establish common law trademark rights under the UDRP may differ from those necessary under national law. To establish common law trademark rights under the Policy, a complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. A conclusive allegation of common law or unregistered rights (even if undisputed) would not normally suffice. In fact, specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. The Complainant has not provided sufficient evidence in this regard, neither with regard to the date of the Respondent’s acquisition of the disputed domain name in 2004 nor with regard to any later point of time:\r\n\r\n- The screenshots of the Complainant's website postdate the Respondent’s domain name acquisition by years.\r\n- The Complainant’s Articles of Incorporation for its Palm Desert location postdate the Respondent’s domain name acquisition by years.\r\n- The photograph of the grand opening of Complainant’s gallery in Palm Desert in 2009 to the Complaint postdate the Respondent’s domain name acquisition by years.\r\n- The Photographs of the Complainant’s catalog in German and the print ads, allegedly run by the Complainant to the Complaint are undated.\r\n\r\nAs the Complainant has not provided any evidence with regard to the length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys or media recognition, the Complainant failed to establish unregistered trademark rights under the Policy, at least with regard to the time of the acquisition of the disputed domain name in 2004. Furthermore, the Respondent denies that the Complainant is “well-known and favorably known throughout the world”. \r\nFinally, according to the Respondent, it is noteworthy that, according to the printout of the trademark register provided by the Complainant, the trademark “Hohmann” was first used in commerce on January 1, 2013, which clearly contradicts the Complainant’s assertions with regard to its use of the Hohmann mark.\r\n\r\nWith respect to the \"rights or legitimate interests\" requirement under paragraphs 4(a)(ii) and 4(c) of the Policy, the Respondent has rights or legitimate interests in the disputed domain name based on his family name and the fact, that the Respondent is using the disputed domain name in connection with his business ever since the acquisition of the disputed domain name in 2004.\r\n\r\nThe disputed domain name corresponds to the Respondent’s family name, which gives the Respondent a right in the disputed domain name. Even if the Respondent was aware of the Complainant’s mark when he registered the disputed domain name, the record does not support a conclusion that the Respondent registered the domain name with the intent of appropriating the Complainant’s mark for his own use. According to the website available at www.deunamen.com, the name “Hohmann” is one of the 400 most common family names in Germany and therefore does not have a highly distinctive character. As the Complainant observes, the Respondent clearly has the right to use his own name. Without proof that the Respondent registered the disputed domain name in order to capitalize on the Complainant’s goodwill in its mark, the Complainant cannot successfully invoke the Policy’s narrow exception to the primary “first come, first served” rule in relation to domain name registrations. \r\n\r\nThe Respondent has at no time used the disputed domain name in connection with services in competition to the Complainant. In fact, the Respondent is using the disputed domain name in connection with its legitimate German business ever since its acquisition. Therefore, the Respondent can rely on rights or legitimate interests in the disputed domain name under paragraph 4(c)(i) of the Policy as well, in that the Respondent used the disputed domain name in connection with a bona fide offering of services before any notice of the dispute. \r\n\r\nThe fact that the Complainant waited about 10 years before complaining about the Respondent’s activities, which are not similar to the Complainant’s services and which was continuously conducted under the disputed domain name, adds successive years of legitimacy to the use the Respondent was making of the disputed domain name and legitimacy acquiesced in by Complainant. Despite having the opportunity to do so, the Complainant has offered no explanation for the 10-year delay in bringing this Complaint. Furthermore, given that the Complainant has not complained about the Respondent’s business for over 10 years, it appears that any business disruption or confusion suffered by the Complainant as a result of the Respondent's domain name registration was either non-existent or de minimis, else the Complainant would have taken action in a more timely fashion.\r\n\r\nWith respect to the \"bad faith registration and use requirement\" under  paragraphs 4(a)(ii) and 4(c) of the Policy, the Respondent has not registered and used the disputed domain name in bad faith for the following reasons. \r\n\r\nAlthough a trademark can form a basis for a UDRP action under the first element irrespective of its date, when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right. In the present case, the Complainant had no registered trademark rights and has not provided sufficient evidence with regard to unregistered trademark rights in “Hohmann” at the time of the acquisition of the disputed domain name by the Respondent. In addition, the Respondent affirms that he had no knowledge of the Complainant or its German store or its trademark before receiving the Complaint in the present UDRP proceeding.\r\n\r\nTherefore, the Complainant has failed to prove that the disputed domain name was registered in bad faith.\r\n\r\nThe Respondent has used the disputed domain name in connection with his bona fide business as an engineer in Germany ever since the acquisition. The Respondent has not tried to sell the disputed domain name to the Complainant at any time and has not acquired the disputed domain name primarily for the purpose of selling it to the Complainant. The Respondent has also not engaged in a pattern of registering third parties’ trademarks as domain names.\r\n\r\nGiven that the Respondent is not a competitor of the Complainant and that the Respondent has at no time provided any kind of links to the Complainant’s competitors and any other kind of advertising at the website available of the disputed domain name, the requirements of paragraphs 4(b)(iii) and 4(b)(iv) of the Policy are not existent as well.\r\n\r\nFinally, the Respondent has invested a significant amount of money in the disputed domain name. Such circumstances are evidence that the acquisition and subsequent use of the disputed domain name was not in bad faith, as cyber-squatters generally do not invest such amount of money in a domain name registration.\r\n\r\nTherefore, the Respondent has not used the disputed domain name in bad faith. \r\n\r\nLastly, the Respondent requests the Administrative Panel appointed in this administrative proceeding to issue a decision that the Complainant and its attorney engaged in Reverse Domain Name Hijacking in that it used the Policy in bad faith to attempt to deprive the Respondent of the disputed domain name.\r\n\r\nReverse domain name hijacking 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.”. Moreover, paragraph 15(e) of the Rules provides as follows: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”. 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”.\r\n\r\nThe Respondent’s registration of the disputed domain name predates the Complainant’s claim of rights in the term “Hohmann” by far, and the Complainant knew this because it produced the WhoIs record for the disputed domain name as evidence attached to its Complaint. Thus, the Complainant, represented by an IP attorney, should have known that it was unable to prove that the Respondent registered the disputed domain name in bad faith. This suffices to establish Reverse Domain Name Hijacking.\r\n\r\nThe finding for Reverse Domain Name Hijacking is supported by the fact that the Complainant made false assertions with regard to the Respondent’s use of the disputed domain name and provided screenshots from an unrelated domain name to the Panel in bad faith in order to get a decision in its favor. \r\n\r\nThe Complainant's attorney, in accordance with the Rules, paragraph 3(b)(xiv), wrote in the Complaint at paragraph 21 that “[t]he Complainant certifies that the information contained in this Complaint is to the best of the Complainant's knowledge complete and accurate […] and that the assertions in this Complaint are warranted under the Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”. It is irreproducible how that certification properly could have been made. Before filing this proceeding, there was apparently no attempt to confirm whether the Respondent possessed a legitimate interest in using his given name. Nonetheless, the Policy is clear that being commonly known by the disputed domain name is a clear ground establishing a respondent's right or legitimate interest. Complainant has therefore disregarded the mandatory rules governing this dispute, in particular, paragraphs 4(c)(i) and 4(c)(ii) of the Policy.\r\n",
    "rights": "The Complainant has, to the satisfaction of the Panel, shown the Domain Name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy).\r\n\r\n",
    "no_rights_or_legitimate_interests": "The Complainant has failed to prove that the Respondent lacks rights or legitimate interests in respect of the Domain Name (within the meaning of paragraph 4(a)(ii)of the Policy).",
    "bad_faith": "In view of the fact that the Respondent failed to prove that the Respondent lacks rights or legitimate interests in respect of the Domain Name, and that in order to succeed in a UDRP proceeding, all requirements under the Policy must be met, the Panel did not examine whether the Respondent registered and used the Domain Name in bad faith\r\n",
    "procedural_factors": "The ADR Center issued a Notification of Deficiencies in Complaint  pointing out that:\r\n\r\n1) the Complaint lacked sufficient identification of the Respondent, since the Respondent's fax was missing; and\r\n\r\n2) the Complaint was not filed in the language of the registration Agreement, which is German.\r\n\r\nTherefore, the ADR Center invited the Complainant to submit an amended Complaint within five days of the date of the notification of deficiency.\r\n\r\nWithin the given term the Complainant submitted an amended Complaint indicating the Respondent's fax number. The Complainant requested to change the language of the proceedings to English because the disputed domain name was used in English. To support this claim, the Complainant filed evidence that, according to him, showed use of the disputed domain name in English, in particular screenshots of the Respondent's website.\r\n\r\nIn its Response, the Respondent points out that the Complainant requested to change the language of the proceeding based on screenshots from the website available at the disputed domain name at a time, where the Respondent was not the registered owner of the disputed domain name. With respect to the other screenshots, the Respondent underlines that that dated February 5, 2005 simply states that the website cannot be crawled by the Wayback Machine in English, which is the language of the Wayback Machine. Therefore, there is no evidence whatsoever which would justify a language other than the language of the registration agreement.\r\n\r\nHowever, the Respondent affirms that he is able to understand English and therefore the Respondent accepts English to be the language of the proceeding, provided that he is not obliged to translate the German Annexes to the Response into English.\r\n\r\nPursuant to Paragraph 11(a) of the Rules, \"[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding\".\r\n\r\nThe Panel shares the Respondent's view that the evidence submitted by the Complainant to support the request of change of language of the proceeding is inappropriate, since most of the screenshots refer to a time where the Respondent was not the owner of the disputed domain name, and the remaining evidence does not refer to the Respondent's website contents but to the the Wayback Machine website.\r\n\r\nHowever, since the Respondent accepted the change of the language of these proceedings provided he was not compelled to translate the Attachments to the Response in English, the Panel agrees with the change of the language of the proceedings from German to English . \r\n\r\n The Panel therefore determines, under paragraph 11(a) of the Rules, that English shall be the language of the proceedings.\r\n",
    "decision": "Rejected",
    "panelists": [
        "Angelica Lodigiani"
    ],
    "date_of_panel_decision": "2015-03-04 00:00:00",
    "informal_english_translation": "The Complainant bases its Complaint  on US registration No. 4582082 for the trademark HOHMANN claiming protection for \"art gallery services\" in class 35 and on common law rights over the trademark for HOHMANN.  \r\n\r\n",
    "decision_domains": {
        "HOHMANN.COM": "REJECTED"
    },
    "panelist": null,
    "panellists_text": null
}