Homer TLC, Inc. v. usman khalid
Claim Number: FA1405001559560
Complainant is Homer TLC, Inc. (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA. Respondent is usman khalid (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hamptonbaytoday.com>, <allhamptonbay.com>, and <hamptonbaycollection.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 15, 2014; the National Arbitration Forum received payment on May 15, 2014.
On May 15, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <hamptonbaytoday.com>, <allhamptonbay.com>, and <hamptonbaycollection.com> domain name are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 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@hamptonbaytoday.com, postmaster@allhamptonbay.com, postmaster@hamptonbaycollection.com. Also on May 21, 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 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Homer TLC, Inc. is the owner of the HAMPTON BAY mark.
Complainant uses the HAMPTON BAY mark 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 <hamptonbaytoday.com>, <allhamptonbay.com>, and <hamptonbaycollection.com> domain names are confusingly similar to Complainant’s HAMPTON BAY mark.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent has never been commonly known by the disputed domain names. Respondent’s disputed domain names direct Internet users to Respondent’s website, which Respondent uses to offer information about HAMPTON BAY ceiling fans and other products.
Respondent registered and is using the disputed domain names in bad faith. Respondent registered several domain names incorporating the HAMPTON BAY mark. Respondent is using the disputed domain names to direct Internet users to a website with links and sponsored ads that direct visitors to goods and services that compete with Complainant. Respondent uses the disputed domain names to direct consumers to commercial websites offering goods and services in direct competition with Complainant.
Respondent is deemed to have constructive knowledge of Complainant’s HAMPTON BAY mark. Respondent knew of Complainant when it registered the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for HAMPTON BAY.
Respondent is not affiliated with Complainant and had not been authorized to use the HAMPTON BAY mark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired trademark rights in HAMPTON BAY.
The at-issue domain names address a website which Respondent uses to offer information about HAMPTON BAY-branded goods. The hyperlinks on Respondent’s relevant websites direct visitors to goods and services competing with Complainant. Respondent collects pay-per-click revenue each time one of the links is accessed.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the HAMPTON BAY mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). It is irrelevant that Respondent may operate outside the jurisdiction of the relevant trademark registrar. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i)”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Each of Respondent’s at-issue domain names incorporates Complainant’s entire HAMPTON BAY trademark less its space, adds one of the generic terms “today”, “all”, or “collection”, and has the top level domain name “.com” appended thereto. Respondent’s various additions of generic terms to Complainant’s trademark do not materially distinguish any of Respondent’s domain names from the HAMPTON BAY trademark. Likewise, neither the removal of the space from Complainant’s trademark nor the addition of the top level domain name is significant. Therefore, the Panel finds that each of the at-issue domain names is confusingly similar to Complainant’s HAMPTON BAY mark under Policy ¶4(a)(i). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the domain names.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in any of the at-issue domain names, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “usman khalid” as the at-issue domain names’ registrant. Moreover, the record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by any of the domain names. The Panel thus concludes that Respondent is not commonly known by any of the at-issue domain names for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s <hamptonbaytoday.com>, <allhamptonbay.com>, and <hamptonbaycollection.com> domain names direct Internet users to one of Respondent’s websites, which Respondent uses to offer information about HAMPTON BAY ceiling fans and other products. The website also displays hyperlinks to competing websites. Visitors to the <allhamptonbay.com> website are presented with articles or entries that cover a variety of unrelated topics and hyperlinks for third-party websites. When an Internet user arrives at the <hamptonbaytoday.com> webpage, the user is presented with articles and entries purporting to offer information on HAMPTON BAY lights, ceiling fans, and related products, as well as links to third-party websites. Finally, the webpage at <hamptonbaycollection.com> displays third-party advertisements for products similar to those provided by Complainant. Some of the links on the at-issue domain names’ websites are to competing websites or websites providing competing hyperlinks. Given the foregoing, the Panel concludes that Respondent is not using the <hamptonbaytoday.com>, <allhamptonbay.com>, or <hamptonbaycollection.com> domain names in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶4(a)(ii).
Each at‑issue domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy regarding the at-issue domain names.
Respondent uses the at-issue domain names to redirect Internet users to websites that contains links to goods and services that compete with Complainant. Respondent’s registration and use of confusingly similar domain names for such purpose disrupts Complainant’s business and demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). Additionally, the links appearing on the websites are undoubtedly pay-per-click links whereby Respondent commercially benefits each time a link is accessed. Therefore, it is clear that Respondent’s design for the confusingly similar domain names was to mislead users and thereby increase traffic to the at-issue websites where it may benefit from the resident pay-per-click links. Respondent’s use of the at-issue domain names in this manner demonstrates that Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Finally, it is evident from the notoriety of Complainant’s trademark and Respondent’s use of the confusingly similar domain names to address websites containing numerous references to Complainant’s mark, that Respondent was familiar with Complainant’s trademark at the time it registered each of the at-issue domain names. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered the domain names in bad faith under Policy ¶ 4(a)(iii). See 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hamptonbaytoday.com>, <allhamptonbay.com>, and <hamptonbaycollection.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 18, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page