Homer TLC, Inc. v. FLAVIO QUARANTA
Claim Number: FA1412001593593
Complainant is Homer TLC, Inc. (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA. Respondent is FLAVIO QUARANTA (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hamptonbayreviews.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 5, 2014; the National Arbitration Forum received payment on December 5, 2014.
On December 9, 2014, ENOM, INC. confirmed by email to the National Arbitration Forum that the <hamptonbayreviews.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the names. 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 December 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 29, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hamptonbayreviews.com. Also on December 9, 2014, the Written Notice of the Complaint, notifying Respondent of the email 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 January 6, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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
Complainant’s licensee Home Depot USA, Inc., sells lighting fixtures and other products under the HAMPTON BAY trademark in retail stores in the United States, Canada, and Mexico, with sales exceeding $1 billion annually. Complainant and its predecessors in interest have used the HAMPTON BAY mark since at least as early as 1986. Complainant’s mark is the subject of numerous U.S. and international trademark registrations.
Complainant contends that the disputed domain name <hamptonbayreviews.com> is identical to its HAMPTON BAY mark. Complainant contends further that Respondent has no rights or legitimate interests in the domain name, and that Respondent registered and used the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is not identical to Complainant’s mark.
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 contends that the disputed domain name <hamptonbayreviews.com> is identical to its HAMPTON BAY mark. The proper claim here, of course, is confusing similarity rather than identicality. This point was made in Homer TLC, Inc. v. Private Whois homedepot-usa.com, FA 1428982 (Nat. Arb. Forum Mar. 22, 2012):
Complainant contends that Respondent’s <homedepot-usa.com> domain name is identical to Complainant’s HOME DEPOT mark. However, the Panel determines that, due to the addition of a hyphen, the geographic term “usa,” and generic top-level domain (“gTLD”) “.com,” the proper argument should be that the disputed domain name is confusingly similar, not identical, to Complainant’s HOME DEPOT mark.
To similar effect is Homer TLC, Inc. v. Nazree Bahar (Offer 297 at Sedo.com), FA 1447056 (Nat. Arb. Forum July 6, 2012):
Complainant argues that the <ihomedepot.com> domain name is identical to Complainant’s HOME DEPOT mark. The disputed domain name adds the letter “i,” removes the space from between the terms, and adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. Based upon these minor changes, the Panel finds that the <ihomedepot.com> domain name is not identical but confusingly similar to Complainant’s HOME DEPOT mark under Policy ¶ 4(a)(i).
The same conclusion was reached by another Panelist in Homer TLC, Inc. v. Tomas Santos Rodrigues, FA 1515519 (Nat. Arb. Forum Oct. 12, 2013):
Complainant argues that the disputed domain name <aircompressorhusky.com> is identical to Complainant’s HUSKY mark under Policy ¶ 4(a)(i). . . . The Panel finds that these variations indicate that the disputed domain name is confusingly similar to the registered mark, even though Complainant claims that the disputed domain name is identical.
The point was reiterated by the present Panelist in a more recent decision, Homer TLC, Inc. v. James Samuel / Personal, FA 1546076 (Nat. Arb. Forum Mar. 31, 2014) (expressing frustration at Complainant’s “lack of precision, particularly in light of the fact that the same Complainant, in a proceeding involving nearly the same issue and in which it was represented by the same law firm, was admonished by the Panel in that proceeding that the proper argument is confusing similarity rather than identicality,” citing Homer TLC, Inc. v. Private Whois homedepot-usa.com, supra).
Most recently, yet another Panelist made the point in Homer TLC, Inc. v. Syed Abdul Khaliq, FA 1564088 (Nat. Arb. Forum July 14, 2014):
Complainant asserts that Respondent’s <hamptonbaylightfixtures.com> domain name is identical to Complainant’s HAMPTON BAY mark. Complainant argues that Respondent includes Complainant’s HAMPTON BAY mark in its entirety with the addition of the generic terms “light” and “fixtures.” Complainant states that Respondent further includes the gTLD “.com.” Respondent also removes the space in Complainant’s registered mark. Past panels have conclusively found that these variations indicate that a disputed domain name is confusingly similar to a registered mark, instead of identical, as Complainant alleges.
The five cases cited above were decided by five different Panelists, but all involved the same Complainant as the present matter, Homer TLC, Inc.—and in all five instances Complainant was represented by the same law firm that represents it in the present matter, Fulbright & Jaworski LLP.
Under the circumstances, the Panel considers it reasonable to consider only the precise allegation made by Complainant: that the disputed domain name is identical to Complainant’s mark. Of course, as the decisions cited above clearly state, a domain name that adds other terms to a trademark is not identical to that mark. The Panel so finds.
In light of the Panel’s dispositive finding on the first element, the Panel declines to address the question of rights or legitimate interests.
In light of the Panel’s dispositive finding on the first element, the Panel declines to address the question of registration and use in bad faith.
Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <hamptonbayreviews.com> domain name REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: January 8, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page