Homer TLC, Inc. v. JOHN MCDONALD
Claim Number: FA1405001558712
Complainant is Homer TLC, Inc. (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA. Respondent is JOHN MCDONALD (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hamptonbay-ceiling-fans.com>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., 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 12, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <hamptonbay-ceiling-fans.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 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@hamptonbay-ceiling-fans.com. Also on May 12, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 5, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hamptonbay-ceiling-fans.com> domain name, the domain name at issue, is confusingly similar to Complainant’s HAMPTON BAY mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Homer TLC, Inc., is the owner of the HAMPTON BAY mark, which it uses in connection with lighting fixtures, ceiling fans, and air conditioners.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HAMPTON BAY mark (e.g., Reg. No. 2,309,163, registered January 18, 2000). Respondent’s <hamptonbay-ceiling-fans.com> domain name is confusingly similar to Complainant’s HAMPTON BAY mark.
Respondent has never been commonly known by the <hamptonbay-ceiling-fans.com> domain name and has no relationship with Complainant. Respondent uses the disputed domain name to direct Internet users interested in Complainant’s goods and services to a purported informational site containing numerous sponsored advertisements and to divert visitors to competitors of Complainant. Respondent’s use of the <hamptonbay-ceiling-fans.com> domain name has created actual confusion amongst Internet users. Respondent had at least constructive knowledge of Complainant’s trademark rights at the time Respondent registered the disputed domain name on August 21, 2012.
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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant is the owner of the HAMPTON BAY mark, which it uses in connection with lighting fixtures, ceiling fans, and air conditioners. Complainant owns trademark registrations for the HAMPTON BAY mark, which it has registered with the USPTO (e.g., Reg. No. 2,309,163, registered January 18, 2000). Respondent appears to reside within the United States. Accordingly, Complainant’s registration of the HAMPTON BAY mark with the USPTO demonstrates that it has rights in the mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s <hamptonbay-ceiling-fans.com> domain name is confusingly similar to Complainant’s HAMPTON BAY mark. Respondent adds the generic terms “ceiling” and “fans” to the HAMPTON BAY mark, as well as two hyphens. The inclusion of generic or descriptive terms and hyphens is irrelevant to a Policy ¶ 4(a)(i) analysis. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Additionally, Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s HAMPTON BAY mark in the disputed domain name, and Respondent eliminates the space in Complainant’s HAMPTON BAY mark for the disputed domain name. Respondent’s removal of spaces and addition of a gTLD does not preclude a panel from finding confusing similarity under Policy ¶ 4(a)(i). 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)). Accordingly, the Panel concludes that Respondent’s <hamptonbay-ceiling-fans.com> domain name is confusingly similar to Complainant’s HAMPTON BAY mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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.”).
Respondent has no relationship, affiliation, connection, endorsement, or association with Complainant, and Respondent has never requested or received any authorization, permission, or license from Complainant to use the HAMPTON BAY mark in any way. There is no evidence in the WHOIS information to show that Respondent is known by the disputed domain name. The WHOIS information instead shows that “JOHN MCDONALD” is the registrant of the disputed domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that 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 respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. Therefore, the Panel finds that Respondent is not commonly known under the <hamptonbay-ceiling-fans.com> domain name pursuant to Policy ¶ 4(c)(ii).
Respondent uses the <hamptonbay-ceiling-fans.com> domain name to direct Internet users interested in Complainant’s goods and services to a purported informational site containing numerous sponsored advertisements, including competing advertisements along the side of the website, such as “Hampton Bay Ceiling Fans,” “Hampton Bay Ceiling Fan Warranty,” “Hampton Bay Ceiling Fan Accessories,” and more. When an Internet user clicks on the linked websites, he or she is diverted to a competitor of Complainant. Prior UDRP panels have determined that a respondent’s use of a domain name to redirect Internet users to competing websites through click-through advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)). Thus, the Panel finds that Respondent is not using the <hamptonbay-ceiling-fans.com> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent uses Complainant’s mark in its <hamptonbay-ceiling-fans.com> domain name and on its website to divert visitors to competitors. For example, the disputed domain name leads Internet users to a website entitled “Hampton Bay Ceiling Fans,” which also features competing hyperlinks called “Hampton Bay Ceiling Fan Replacement Parts,” “Ceiling Fan Installation,” “Hampton Bay Ceiling Fan Repair,” and others. When a consumer clicks on a link provided on the disputed domain name, he or she is diverted to a website of Complainant’s competitors or a third-party website providing goods and services competitive with Complainant. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel concluded that “The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).” Because Respondent’s use of the <hamptonbay-ceiling-fans.com> domain name diverts potential consumers to competing hyperlinks or advertisements, the Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s business, showing bad faith under Policy ¶ 4(b)(iii).
Further, Respondent’s use of the <hamptonbay-ceiling-fans.com> domain name has created actual confusion amongst Internet users, as shown by a comment posted on Respondent’s website by a consumer regarding one of Complainant’s HAMPTON BAY products. The comment left on Respondent’s disputed domain name demonstrates actual confusion caused by the <hamptonbay-ceiling-fans.com> domain name, showing bad faith under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
Respondent had at least constructive knowledge of Complainant’s trademark rights at the time Respondent registered the <hamptonbay-ceiling-fans.com> domain name based on its multiple federal USPTO trademark registrations for the HAMPTON BAY mark. While past UDRP panels have not generally found constructive knowledge to be enough for a bad faith finding, this Panel finds that Respondent had actual knowledge of Complainant's HAMPTON BAY mark in light of the use of the disputed domain name and therefore finds that Respondent registered the <hamptonbay-ceiling-fans.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum 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").
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hamptonbay-ceiling-fans.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 8, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page