Homer TLC, Inc. v. ZILFIQAR AHMED / SUPER ADS JUNCTION
Claim Number: FA1502001605517
Complainant is Homer TLC, Inc. (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA. Respondent is ZILFIQAR AHMED / SUPER ADS JUNCTION (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onlyhamptonbay.com>, registered with FastDomain Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 18, 2015; the Forum received payment on February 18, 2015.
On February 19, 2015, FastDomain Inc. confirmed by e-mail to the Forum that the <onlyhamptonbay.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 February 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 2015 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@onlyhamptonbay.com. Also on February 20, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 16, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 is the owner of the HAMPTON BAY trademark, which it has used since at least 1986 to promote its business of manufacturing and marketing lighting fixtures, ceiling fans and other goods.
Complainant holds a registration for the HAMPTON BAY trademark, which is on file with the United States Patent and Trademark Office (“USPTO”), as Registry No. 2,309,163, registered January 18, 2000.
Respondent registered the <onlyhamptonbay.com> domain name on or about June 5, 2014.
The domain name is confusingly similar to Complainant’s HAMPTON BAY mark.
Respondent has no relationship, affiliation or association with Complainant.
Respondent has never requested or received any authorization, permission or license from Complainant to use the HAMPTON BAY mark in any way.
Respondent has never been commonly known by the domain name.
Respondent has not used the domain name in connection with a bona fide offering of goods or services.
Respondent uses the domain name to redirect Internet users interested in Complainant’s products and services to a purported informational website containing sponsored advertisements for Complainant’s business competitors.
Respondent receives revenue from the operation of the website resolving from the domain name.
Respondent has no rights to or legitimate interests in the domain name.
Respondent knew of Complainant and its rights in the HAMPTON BAY mark when it registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 has rights in the HAMPTON BAY trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise from its registration in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here the United Kingdom). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a UDRP complainant can demonstrate rights in a mark in some jurisdiction). See also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant under Policy ¶ 4(a)(i) whether a UDRP complainant has registered its trademark in the country of a respondent’s residence).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that <onlyhamptonbay.com> domain name is confusingly similar to Complainant’s HAMPTON BAY trademark. The domain name contains the mark in its entirety, with only the elimination of the space between the terms of the mark and the addition of the generic term “only” and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. As to the addition of a gTLD to the mark, because every domain name requires a gTLD, this alteration of the mark in creating the domain name is not germane to our analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding the domain name <pomellato.com> identical to a UDRP complainant’s mark because the addition of the generic Top-Level Domain (gTLD) “.com” to the POMELLATO mark is not relevant to a Policy ¶ 4(a)(i) analysis).
And, on the point of the addition of a generic term to the mark of another in forming a domain name, see Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names, each incorporating a UDRP complainant’s entire mark and merely adding the term “credit,” were all confusingly similar to that mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent has no relationship, affiliation or association with Complainant, that Respondent has never requested or received any authorization, permission or license from Complainant to use the HAMPTON BAY mark in any way, and that Respondent has never been commonly known by the domain name <onlyhamptonbay.com>. Moreover, the pertinent record identifies the registrant of the domain name only as “ZILFIQAR AHMED / SUPER ADS JUNCTION,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding, based on the relevant WHOIS information and other evidence in the record, that a UDRP respondent was not commonly known by a contested domain name, and so failed to show that it had acquired rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii)).
We next observe that Complainant asserts, without objection from Respondent, that Respondent employs the <onlyhamptonbay.com> domain name to redirect Internet users interested in Complainant’s products and services to a purported informational website containing sponsored advertisements for Complainant’s business competitors, and that Respondent receives revenue from the operation of the website resolving from the domain name. In the circumstances here presented, we conclude that Respondent’s use of the domain name in neither a bona fide offering of goods or services as provided in Policy ¶ 4(c)(i) nor a legitimate noncommercial use of the domain name as provided in Policy ¶ 4(c)(iii). See, for example, Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Re-spondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
(1) We are persuaded by the evidence that Respondent’s use of the domain name <onlyhamptonbay.com>, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in the registration and use of the domain name. See 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).
See also S. Exposure v. S. Exposure, Inc., FA 94864 (NAF July 18, 2000) (finding that a respondent acted in bad faith by attracting Internet users to a website that competed with a UDRP complainant’s business).
We are also convinced by the record that Respondent knew of Complainant and its HAMPTON BAY trademark when Respondent registered the contested <onlyhamptonbay.com> domain name. This too is evidence of Respondent’s bad faith in the registration of the domain name. See, for example, MIVA, Inc. v. WhoIs Privacy Inc., citing Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (because the similarity between a UDRP complainant’s mark and the content advertised on a respondent’s website was obvious, that respondent “must have known about the complainant’s mark when it registered the subject domain name”).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <onlyhamptonbay.com> domain name be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 17, 2015
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