Homer TLC, Inc. v. Mack Payne
Claim Number: FA1405001558708
Complainant is Homer TLC, Inc. (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA. Respondent is Mack Payne (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hamptonbayreplacementparts.com>, registered with 1&1 Internet AG.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 9, 2014; the National Arbitration Forum received payment on May 9, 2014.
On May 14, 2014, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <hamptonbayreplacementparts.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified Respondent is bound by the 1&1 Internet AG registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hamptonbayreplacementparts.com. Also on May 14, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on June 3, 2014.
Complainant made a timely additional submission on June 9, 2014. Respondent submitted additional material on June 11, 2014, consisting solely of some images and nothing that explained the import of those images. This did not comply with the Panel’s additional submission order and will be disregarded.
On June 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Homer TLC, Inc. is the owner of the distinctive and well-known HAMPTON BAY trademark. Homer TLC, Inc., through its predecessor in interest and licensee (collectively “Complainant” or “Home Depot”), commenced use of the mark HAMPTON BAY (hereinafter the "HAMPTON BAY Mark") in connection with lighting fixtures, ceiling fans, and air conditioners at least as early as 1986. Since that time, Complainant has continually used the HAMPTON BAY Mark in commerce in the United States and abroad.
Through its licensee, Home Depot USA, Inc., the operator of THE HOME DEPOT stores, Complainant has worldwide sales under the HAMPTON BAY Mark in excess of One Billion US Dollars each year. Complainant offers goods under the HAMPTON BAY Mark in each of its over 2100 retail stores in the United States, Canada and Mexico. In 2004, Complainant sold in excess of 38 million fans under the HAMPTON BAY Mark, making this the second largest selling brand of ceiling fans in North America.
Over the years, Complainant has prominently used and promoted the HAMPTON BAY Mark in advertising, sales, and various other ways. Complainant’s sales and advertising expenses under the HAMPTON BAY Mark have been extensive and in the tens of millions of US Dollars each year. As a result, the HAMPTON BAY Mark serves to identify and indicate the source of Complainant’s goods to the consuming public, and to distinguish its goods from those of others. As a result of Complainant’s long usage and promotion of the HAMPTON BAY Mark, it has become well-known to and widely recognized by consumers.
In addition to its common law rights, Complainant owns seven United States federal registrations for trademarks incorporating “HAMPTON BAY” and also owns numerous registrations and pending applications for HAMPTON BAY trademarks worldwide.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
[a.] The hamptonbayreplacementparts.com domain name is identical to the HAMPTON BAY Mark in which Home Depot has trademark rights worldwide.
[i] Home Depot has rights in its trademarks.
The HAMPTON BAY Mark has been used in commerce in connection with, among other things, ceiling fans and lighting fixtures since at least as early as 1986. In addition, Home Depot has registered and uses the domain name hamptonbay.com in connection with the advertising of its goods on the Internet. Home Depot first registered the hamptonbay.com domain name in 1992 and has continuously maintained the registration for hamptonbay.com since that time.
The HAMPTON BAY Mark has become a highly valuable asset of Home Depot, representing substantial goodwill. The value of this asset has been cultivated as a result of Home Depot’s continuous and exclusive use of the mark for many years, and because of Home Depot’s efforts to promote the mark through the expenditure of substantial sums and careful control of the public perception of both the nature and quality of the goods and services provided in connection with the mark.
It is well established under the Policy that Home Depot’s registration of a mark with federal authority establishes a prima facie case of Home Depot’s rights. See, e.g., Delta Corporate Identity, Inc. and Delta Air Lines, Inc. v. dltaairlines.com and deltaaairlines.com c/o Hanna El Hinn, FA548217 (NAF Oct. 12, 2005), citing Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.”), and Innomed Techs., Inc. v. DRP Servs., FA221171 (NAF Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes complainant's rights in the mark”).
[ii] The hamptonbayreplacementparts.com domain name is identical to the HAMPTON BAY Mark.
Home Depot has used its HAMPTON BAY Mark in commerce since at least 1986. As noted above, such long-standing and continuous use gives Home Depot exclusive rights in the HAMPTON BAY Mark. ICANN panels have found that, where, as in this case, a domain name incorporates a distinctive mark in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar. See Lowen Corp. v. Henry Chan, D2004-4030 (WIPO August 5, 2004) (finding that the domain name lowensigns.com is confusingly similar to LOWEN).
Furthermore, the addition of the common or generic term “replacement parts” to Home Depot’s HAMPTON BAY trademark does not negate the confusing similarity between hamptonbayreplacementparts.com and the HAMPTON BAY Mark under Policy ¶4(1)(i). See Exxon Mobil Corporation v. mga enterprises limited, FA0907001273445 (NAF Aug. 26, 2009) (finding that the addition of the terms “travel” and “club,” which have an obvious relationship to Complainant’s [Exxon’s] business, to Complainant’s mark in the disputed domain name <exxontravelclub.com> create a confusing similarity between the disputed domain name and the registered mark); Homer TLC, Inc. v. Whois Guard, FA619597 (NAF Feb. 14, 2006) (finding that the addition of common words to Complainant’s registered mark did not negate the confusing similarity). Moreover, the addition of a generic top-level domain, such as “.com,” is irrelevant in determining similarity of Respondent’s hamptonbayreplacementparts.com domain to Home Depot’s HAMPTON BAY Mark. See, e.g., Delta Corporate Identity, Inc. and Delta Air Lines, Inc, citing Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[t]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”); See also, Thomas B. Hudson v. Ted Machi & Associates, FA133759 (NAF Jan. 21, 2003).
In this case, the hamptonbayreplacementparts.com domain name is identical to and incorporates in its entirety the HAMPTON BAY Mark. The domain name differs from the HAMPTON BAY Mark only by the addition of the generic term “replacement parts,” and the top-level domain, “.com.” These minor differences are insufficient to distinguish the hamptonbayreplacementparts.com domain name from the HAMPTON BAY Mark.
[b.] Respondent Has No Rights or Legitimate Interests in the Domain Name.
Because Home Depot has made a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests in the Domain Name. See, e.g., Tejon Ranchcorp and Tejon Ranch Co. v. J & L Enterprises, FA524749 (NAF September 20, 2005), citing Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (where complainant has asserted that respondent has no rights or legitimate interests with respect to domain name, respondent must come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent.”), and G.D. Searle v. Martin Mktg., FA118277 (NAF Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent”).
Moreover, Respondent must show it has rights or legitimate interest in respect of the domain name at issue by “concrete evidence.” See Kate Spade, LLC v. Darmstadter Designs, No. D2001-1384 (WIPO Jan. 3, 2002) citing UDRP Policy 4(c). “Concrete evidence” requires more than personal assertions; it requires documents or third party declarations in support of such assertions. Id. A failure to produce such concrete evidence entitles a panel to conclude that the respondent has no such rights or legitimate interest. Id.
From the evidence discussed below, it is clear that Respondent has no rights or legitimate interest in the hamptonbayreplacementparts.com domain name.
[i] Respondent has no relationship with Home Depot.
Respondent has no relationship, affiliation, connection, endorsement or association with Home Depot. Respondent has never requested or received any authorization, permission or license from Home Depot to use the HAMPTON BAY Mark in any way.
[ii] Respondent has never been commonly known by the domain name hamptonbayreplacementparts.com or by the HAMPTON BAY Mark and has never acquired any trademark rights in the same.
There is no evidence in the WHOIS information to suggest that Respondent is known by the hamptonbayreplacementparts.com domain name. Indeed, given Home Depot’s long-time and extensive world-wide rights in the HAMPTON BAY Mark in connection with lighting fixtures, ceiling fans, and air conditioners, Respondent could not have rights in the HAMPTON BAY Mark unless Home Depot granted them. However, that has not occurred.
[iii] Respondent has not used the domain name in good faith and in connection with a bona fide offering of goods or services.
Respondent’s use for commercial gain of a domain name that is identical to the HAMPTON BAY Mark to direct Internet users interested in Home Depot’s goods and services to a purported informational site containing numerous sponsored advertisements is not a legitimate noncommercial or fair use of the domain name. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA96577 (NAF Feb. 27, 2001) (respondent's commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA95407 (NAF Sept. 27, 2000) (“[U]nauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”) Here, the hamptonbayreplacementparts.com domain name directs Internet users to Respondent’s website, which Respondent uses to offer information about HAMPTON BAY lighting fixtures, ceiling fans and other related goods, as well as numerous sponsored advertisements.
When an Internet searcher reaches the hamptonbayreplacementparts.com website and clicks on the links and/or sponsored ads, he or she is connected immediately to the web site of one of Home Depot’s competitors or otherwise directed to third party web sites offering goods and services that directly compete with Home Depot. Respondent’s website also contains links that direct consumers to third party Amazon.com sales listings for Home Depot’s HAMPTON BAY products. Upon information and belief, Respondent receives compensation each time a searcher clicks on one of these links, which constitutes use of the domain for commercial gain. Respondent’s use of the hamptonbayreplacementparts.com domain name is also commercial because the various companies linked to the web site through these directory listings and sponsored ads benefit from subsequent interest and purchases. ICANN panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See Focus Do It All Group v. Athanasios Sermbizis, D2000-0923 (WIPO October 6, 2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial). Respondent’s use cannot be characterized as fair use. See id. (finding that Respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainants until they found that instead they were in a directory which would do the Complainants potential harm”).
Respondent’s use of the domain name is not legitimate because it diverts Home Depot’s customers and potential customers to Respondent’s website and then to the web sites of Home Depot’s competitors. See id. (finding that Respondent’s domain name which linked visitors to a directory of regional competitors was not a legitimate use). See also Homer, TLC Inc. v. Kang, FA573872 (NAF Nov. 22, 2005) (“Respondent’s use of ‘a’ domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering . . . or a legitimate noncommercial or fair use . . . .”). Such use of Home Depot’s trademark is clearly confusing and deceptive to consumers. As such, Respondent’s website at hamptonbayreplacementparts.com is not used or maintained in good faith and in connection with a bona fide offering of goods or services.
[c.] Respondent Registered and Used the Domain Name in Bad Faith.
There are at least two pieces of evidence that show Respondent had knowledge of Home Depot’s trademark rights, yet proceeded to register and use the hamptonbayreplacementparts.com domain name in bad faith: (1) Respondent used Home Depot’s trademark in its domain name and on its website to divert visitors to competitors; and (2) Respondent is deemed to have constructive knowledge of Home Depot’s trademark rights at the time Respondent registered and began using the hamptonbayreplacementparts.com domain name in light of Home Depot’s numerous U.S. and international trademark applications and registrations for the HAMPTON BAY Mark.
Respondent is using the hamptonbayreplacementparts.com domain name, which is identical to the HAMPTON BAY Mark, to direct Internet users to a website with links and sponsored ads that direct visitors to third party websites selling goods and services that directly compete with Home Depot. Such use is concrete evidence of bad faith registration and use. See, e.g., Homer TLC, Inc. v. Unitedeurope Consulting, FA 1110103 (NAF Feb. 8, 2008) (“Respondent’s use of the disputed domain name to advertise links to third-party competitors is evidence of registration and use in bad faith under Policy ¶4(b)(iii)”), and S. Exposure v. S. Exposure, Inc., FA 94864 (NAF July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business). Furthermore, it is clear that Respondent registered the disputed domain name with the HAMPTON BAY Mark in mind in light of the obvious link between Home Depot and the goods and services advertised on Respondent’s website, and given the fact that Respondent’s website directly references Home Depot. See MIVA, Inc. v. WhoIs Privacy Inc., citing Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (because link between complainant’s mark and content advertised on respondent’s website obvious, respondent “must have known about the complainant’s mark when it registered the subject domain name”). As further evidence of Respondent’s knowledge, Respondent links directly to specific third party Amazon.com sales listings for Home Depot’s HAMPTON BAY-branded products.
In addition, Respondent is deemed to have constructive knowledge of Home Depot’s rights in the HAMPTON BAY Mark pursuant to multiple federal U.S. trademark registrations for the HAMPTON BAY Mark. “There is a legal presumption of bad faith when [Respondent] reasonably should have been aware of Complainant’s trademarks, actually or constructively.” See Digi Int’l v. DDI Sys., FA124506 (NAF Oct. 24, 2002); see also Thomas B. Hudson v. Ted Machi & Associates, Claim No. FA133759 (NAF Jan., 2003) (“Respondent must be held to be on constructive notice of Complainant’s service mark . . . .”); Assante Holdings, Inc. v. Kevin Baker, Claim No. FA109384 (NAF May 20, 2002) (“Respondent was on notice as to Complainant’s rights in its PERSONAL CFO mark when it registered the disputed domain name because Complainant’s mark is on the Principal Register of the United States Patent and Trademark Office. Registration of the disputed domain name despite this notice is evidence of bad faith registration.”).
Any use by Respondent of the HAMPTON BAY Mark, even as a domain name, is an infringement of Home Depot’s long-held rights under trademark law. As the panelist in C-Line Products, Inc. v. Ralco Consulting c/o Robert Lebeaux pointedly noted, a potential domain name registrant
“would be well-advised to heed the oft-repeated admonition, such as that of Scott W. Pink, in his treatise, The Internet & E-Commerce Legal Handbook (2001), where at page 110, he states: ‘Once you have decided on the TLDs and ccTLDs, you will want to select the second level of the domain, the words that signify your unique address. In doing so, you should first conduct both a domain name search to make sure the particular domain is available as well as a trademark search to make sure your choice of a domain name does not potentially infringe on another person or entity’s trademark rights.” C-Line Products, Inc. v. Ralco Consulting c/o Robert Lebeaux, Claim No. FA187608 (NAF October 20, 2003) (Emphasis supplied).
Respondent knew of Home Depot’s rights in the HAMPTON BAY Mark. Respondent’s registration and infringing use of the hamptonbayreplacementparts.com domain name, despite having such knowledge, indicates bad faith.
B. Respondent
This Response specifically responds to the statements and allegations contained in the Complaint and includes any and all bases for the Respondent to retain registration and use of the disputed domain name. Rule 5(b)(i).
[a.] The domain name is similar to the trademark in which the Complainant has rights. It is used for the purpose of promoting products for the benefit of the Complainant at no cost to the Complainant.
[b] The Respondent is making a legitimate 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.
[c.] The Respondent registered the domain on September 30, 2012 for the purpose of creating a website that would laud and promote the products of the Complainant. The Complainant has not demonstrated that the website has caused any loss of business or goodwill since the registration date. The Respondent can show how the website has benefited the Complainant with additional sales of its products at no expense to the Complainant.
The Respondent has not and will not tarnish or cause any harm to the Complainant’s trademark or reputation but rather positive promotion.
The website created with the domain name in question is a tremendous advertisement for Home Depot and its ceiling fan products and should be allowed to continue.
C. Additional Submissions
Complainant made the following additional submission on June 9, 2014:
INTRODUCTION
On June 3, 2014, Respondent filed a conclusory Response to the Complaint. Respondent asserts that transfer should be denied because his use of the <hamptonbayreplacementparts.com> in some way benefits Complainant. Respondent provides no evidence to support this, and even if he had, it would not negate the fact that Respondent is using the domain name, as well as many other domain names incorporating third party marks, to misdirect consumers and make money through display of sponsored advertisements.
ARGUMENTS
Respondent Concedes that Complainant’s Mark and the Domain Name are Similar
In the Response, Respondent states that the subject “domain name is similar to the trademark in which the Complainant has rights.” (Response at ¶3[a].) Respondent’s admission to the similarity between Complainant’s HAMPTON BAY Mark and to his knowledge of the connection between Complainant and the HAMPTON BAY mark wholly satisfies the first element of the test under Policy ¶4(a)(i).
Respondent’s Use of the Domain Name Does Not Establish Rights or Legitimate Interests
Respondent asserts that his use of the <hamptonbayreplacementparts.com> domain name is non-commercial because it is “used for the purpose of promoting products for the benefit of the Complainant” and “creating a website that would laud and promote the products of the Complainant.” (Response at ¶[3].) In doing so, Respondent concedes that he is not known as “Hampton Bay” or “Hampton Bay Replacement Parts.” Instead, he is using the <hamptonbayreplacementparts.com> domain name specifically to reference Complainant’s HAMPTON BAY products and attract Complainant’s consumers to his website. Complainant reiterates that Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Respondent’s use of the hamptonbayreplacementparts.com domain name is not a noncommercial or fair use of the domain name. Despite his assertions that he is using the <hamptonbayreplacementparts.com> domain name “without intent for commercial gain,” the website displayed at the domain name contains sponsored click-through advertisements directing Internet users to third party websites, including the websites of Home Depot’s competitors. The websites linked from Respondent’s advertisements sell lighting products directly in competition with Complainant and Complainant’s HAMPTON BAY products. Upon information and belief, Respondent receives compensation each time a user clicks one of these sponsored links. As discussed in the Complaint, such use cannot be considered a noncommercial or fair use. See Focus Do It All Group v. Athanasios Sermbizis, D2000-0923 (WIPO October 6, 2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial). Thus, Respondent has no rights or legitimate interests in the domain name.
Respondent’s Other Domain Name Registrations Further Evidence Bad Faith
In addition to the evidence submitted by Complainant in the Complaint, Respondent’s bad faith is demonstrated by his pattern of registering multiple domain names incorporating distinctive marks. See Policy ¶4(b)(ii). In this case, Respondent or an affiliated individual has registered nearly 400 domain names, many of which contain registered and/or well-known third-party trademarks, including without limitation, <costcobooks.com>, <hunterfanreplacementparts.com>, <nokia6350.com>, <honeywelldvr.com>, and <bissellcoupon.com>. This pattern of registering domain names incorporating well-known third party trademarks further establishes Complainant’s bad faith. See Countrywide Financial Corporation v. Texas International Property Associates, FA1075750 (NAF Nov. 2, 2007) (finding respondent’s pattern of registering domains incorporating well-known third party marks to be evidence of bad faith under the Policy); TV Globo Ltda. V. Green Card Transportes e Eventos Ltda., D200-0351 (WIPO July 17, 2000) (“The existence of a long list of domain names registered in the name of [Respondent]…who is listed as the contact person for domain names…is evidence that registration has been effected in bad faith.”).
Respondent Cannot Negate His Bad Faith by Contending that Complainant Has Somehow Benefited
In the Response, Respondent states that he “can show how the website has benefited the Complainant with additional sales of its products at no expense to the Complainant.” (Response at ¶3[c].) Even assuming that some Internet users visiting Respondent’s website are somehow directed to Complainant’s own stores or websites, or are nonetheless purchasing Complainant’s products (which Complainant does not concede), this does not negate Respondent’s bad faith in registering and using the <hamptonbayreplacementparts.com> domain name to display a website containing sponsored advertisements and click-through links that divert visitors to Complainant’s competitors. See Accor v. Learn Earn Online, D2009-1770 (WIPO March 6, 2010) (Respondent’s use of domain to operate website directing to websites of Complainant’s competitors and Complainant’s own website was evidence that Respondent had knowledge of Complainant’s trademark rights and was deliberately trading off of the goodwill associated with Complainant’s mark for commercial gain, constituting bad faith); see Constant Contact, Inc. v. 經常接觸 / Domain Hostmaster, Customer ID: 92313729813256/ Whois Privacy Services Pty Ltd, D2013-2252 (bad faith found where Respondent's website promoted Complainant's products, in addition to the products of Complainant's competitors).
Respondent’s actions clearly indicate that he had actual knowledge of Complainant’s marks, and registered the domain name with Complainant’s mark in mind and the intent to benefit from the goodwill of the marks. This further establishes bad faith under the Policy. See Yahoo! Inc. v. Butler, FA 744444 (NAF Aug. 17, 2006) (finding bad faith where the respondent was “well-aware of the complainant’s YAHOO! mark at the time of registration”); Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios, FA 1031703 (NAF Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Thus, Complainant respectfully requests that the Panel award transfer of the <hamptonbayreplacementparts.com> domain name to Complainant.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires Complainant must prove the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant uses the HAMPTON BAY mark in connection with lighting fixtures, ceiling fans, and air conditioners through its licensee Home Depot USA, Inc. Complainant owns registrations for the HAMPTON BAY mark with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 2,309,163 registered Jan. 18, 2000). This is satisfactory proof Complainant has rights in the HAMPTON BAY mark within the meaning of Policy ¶4(a)(i) because Complainant holds a valid registration for the mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶4(a)(i)).
Complainant claims and Respondent admits its <hamptonbayreplacementparts.com> domain name is confusingly similar to Complainant’s HAMPTON BAY mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the generic term “replacement parts” and the gTLD “.com.” The disputed domain name also removes the space between the words “HAMPTON” and “BAY” in Complainant’s mark. The addition of generic terms to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). The removal of a space and the addition of a gTLD are both irrelevant for the purpose of a confusing similarity analysis because spaces are prohibited characters in domain names and gTLDs are required. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)). To rule otherwsie would eviscerate the UDRP. Therefore, Respondent’s <hamptonbayreplacementparts.com> domain name is confusingly similar to Complainant’s HAMPTON BAY mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The first issue is whether or not Respondent is commonly known by the domain name, (even if Respondent has acquired no trademark or service mark rights), Policy ¶4(c)(ii). This is clearly not the case if the WHOIS information for the disputed domain name is examined. The WHOIS record for the disputed domain name lists “Mack Payne” as the domain name registrant. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Based upon this record, the Panel finds Respondent is not commonly known by the <hamptonbayreplacementparts.com> domain name under Policy ¶4(c)(ii).
Complainant claims Respondent uses the <hamptonbayreplacementparts.com> domain name to direct Internet users to a website offering information about Complainant’s products and also containing numerous sponsored advertisements. Some of the links on the resolving website direct Internet users to apparently unrelated web sites. Other links resolve to Amazon listings for Complainant’s products. In both cases Respondent appears to collect a commission for each click. This is generally acceptable when Respondent is exclusively promoting Complainant’s genuine goods. After all, Complainant does not control its genuine trademarked goods once they are released into the stream of commerce. The problem is Respondent is advertising third party goods, not just Complainant’s goods.
The standards are well laid out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. All of the following must be satisfied:
- Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (WIPO Jan. 24, 2001) (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering). This prong is satisfied in this case, even though the goods are being sold by third parties through Amazon Associates.
- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (WIPO Feb. 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate). This prong is not satisfied in this case because Respondent is selling other goods through Respondent’s Google advertisements on the disputed domain (such as air conditioner repairs and domain names through GoDaddy.com).
- The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (WIPO April 25, 2001) (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton, WIPO Case No. D2000-1201 (WIPO Nov. 14, 2000) (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods., WIPO Case No. D2001-0344 (WIPO June 14, 2001) (no bona fide use when respondent suggested that it was the manufacturer of complainant's products). This prong was met in this case. The web site clearly shows Respondent is not connected with the Hampton Bay Company under the “about us” tab. Respondent clearly indicates the products are sold at Home Depot (as well as other places Respondent links to).
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 (WIPO Jan. 29, 2001) (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”). This prong was met in this case.
Therefore, this Panel finds Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) because the <hamptonbayreplacementparts.com> domain name displays links that resolve to third party websites.
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent has registered nearly 400 domain names, many of which contain well-known third-party trademarks. Complainant claims this demonstrates a pattern of bad faith under Policy ¶4(b)(ii). This Panel will not accept such an argument. Complainant does not claim Respondent has prevented Complainant from reflecting its mark in a domain name. Complainant has the <HamptonBay.com> web site, which forwards to Complainant’s licensee. Therefore, this case does not fall under Policy ¶4(b)(ii).
Complainant claims Respondent registered and is using the <hamptonbayreplacementparts.com> domain name in bad faith. Respondent is using the disputed domain name to direct Internet users to a website containing unrelated links and sponsored advertisements. This suggests Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site (commonly called initial interest confusion) under Policy ¶4(b)(iv). Based upon the facts of this case, the Panel does not find this claim to be adequately proven.
Complainant claims Respondent had knowledge of Complainant’s HAMPTON BAY mark prior to registering the <hamptonbayreplacementparts.com> domain name. This is clearly true from the contents of the resolving web site. The enumerated examples under Policy ¶4(b) are not exhaustive. They are merely illustrative. Given the facts of this case, this Panel finds the total circumstances justify a finding of bad faith registration and use under Policy ¶4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <hamptonbayreplacementparts.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, June 12, 2014
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