Homer TLC, Inc. v. Shibu Varughese / Ozhumannil Business Solutions
Claim Number: FA1306001505587
Complainant is Homer TLC, Inc. (“Complainant”), represented by Sheri Hunter of Fulbright & Jaworski LLP, Texas, USA. Respondent is Shibu Varughese / Ozhumannil Business Solutions (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hamptonbay.co> registered with GoDaddy.com, LLC.
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 A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 19, 2013; the National Arbitration Forum received payment on June 19, 2013.
On June 19, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <hamptonbay.co> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 June 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2013 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.co. Also on June 21, 2013, 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 July 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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’s Allegations
i. Complainant owns the HAMPTON BAY mark through its United States Patent and Trademark Office (“USPTO”) registration (e.g., Reg. No. 2,309,163 registered January 18, 2000).
ii. Complainant has used the mark in connection with lighting fixtures, ceiling fans, and air conditioners since 1986.
iii. Complainant offers goods under the mark in over 2,100 retail stores in the United States, Canada, and Mexico. Complainant’s sales and advertising and promotion of the mark have been extensive, such that Complainant’s HAMPTON BAY mark has become well-known to and widely recognized by consumers.
i. Policy ¶ 4(a)(i)
1. The <hamptonbay.co> is identical to the HAMPTON BAY mark. The inclusion of the generic top-level domain (“gTLD”) “.co” is irrelevant.
ii. Policy ¶ 4(a)(ii)
1. Respondent has never been commonly known by the disputed domain or by the HAMPTON BAY mark as there is no evidence in the WHOIS information to suggest Respondent is known by the disputed domain. Further, Complainant has no affiliation or association with Respondent.
2. Respondent is not using the disputed domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain name directs Internet users interested in Complainant’s goods and services to a purported informational site containing numerous sponsored advertisements. The links and sponsored advertisements provided on the resolving page direct users to website on which competing goods are sold.
iii. Policy ¶ 4(a)(iii)
1. Respondent is using the confusingly similar disputed domain to direct Internet users to a website with links and advertisements that promote goods and services that compete with Complainant, disrupting Complainant’s business.
2. Respondent has attempted to commercially benefit, presumably through click through fees associated with links and sponsored advertisements promoted on the resolving page, from the goodwill tied to Complainant’s mark.
3. Respondent’s registration of the disputed domain name with constructive and actual knowledge of Complainant’s rights is evidence of bad faith registration and use.
c. Respondent registered the disputed domain on August 3, 2011.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 owns the HAMPTON BAY mark through its registration with the USPTO (e.g., Reg. No. 2,309,163 registered January 18, 2000). The Panel notes that according to the WHOIS record, Respondent is a resident of the United States, as is Complainant. Complainant’s USPTO registration is sufficient to establish its right in the mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues the domain name <hamptonbay.co> is identical to the HAMPTON BAY mark. Complainant contends that the inclusion of the top-level domain “.co” is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. The Panel notes that “.co” is a country-code top-level domain (“ccTLD”) which represents Columbia, rather than a gTLD, and further observes that the disputed domain name differs from the mark at issue as the space between the two word HAMPTON BAY mark is deleted in the domain name. Deletion of the space between the words of Complainants mark and addition of a ccTLD are insufficient to differentiate the disputed domain from the mark. See 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 … does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Mars, Inc. v. Dayal, FA 1381704 (Nat. Arb. Forum Apr. 30, 2011) (stating that inclusion of the complainant’s entire mark in the domain name while adding only the ccTLD “.co” generates a domain name that is identical to the complainant’s mark under the Policy). The Panel therefore finds the <hamptonbay.co> domain name to be confusingly similar to the HAMPTON BAY mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent has never been commonly known by the disputed domain or by the HAMPTON BAY mark as there is no evidence in the WHOIS information to suggest Respondent is known by the disputed domain. Further, Complainant contends that it has no affiliation or association with Respondent. The Panel notes that Respondent did not submit a Response to refute Complainant’s contentions. Because Complainant claims that Respondent was not authorized to register a domain name containing Complainant’s registered mark, and there is no evidence that suggests Respondent is commonly known by the disputed domain name, the Panel finds that Respondent is not commonly known by the domain name at issue under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant argues that Respondent is not using the disputed domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant asserts that the disputed domain name directs Internet users interested in Complainant’s goods and services to a purported informational site containing numerous sponsored advertisements. The links and sponsored advertisements provided on the resolving page direct users to website on which competing goods are sold, from which Complainant presumes Respondent receives click-through revenue. Previous panels have generally found that domain names that resolve to websites that display links to third parties, including to a complainant’s competitors, do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel finds that Respondent’s use of the disputed domain to display links to third-party websites, from which it presumably receives click through fees, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is using the confusingly similar disputed domain to direct Internet users to a website with links and sponsored advertisements that promote goods and services that compete with Complainant, disrupting Complainant’s business. Complainant contends that such use is evidence of Respondent’s bad faith. Previous panels have found evidence of bad faith where a respondent provides links to competitors of the complainant through the confusingly similar domain name. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“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).”). The Panel therefore finds evidence of bad faith under Policy ¶ 4(b)(iii).
Complainant alleges that Respondent has attempted to commercially benefit, presumably through click through fees associated with links and sponsored advertisements promoted on the resolving page, from the goodwill tied to Complainant’s mark and that such effort is further evidence of Respondent’s bad faith. Previous panels have found bad faith registration and use where a respondent uses the disputed domain name to offer links to third-party websites that offer similar goods or services to those offered by the complainant, and likely benefits commercially from the links. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Thus, the Panel finds evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
The Panel infers that Respondent had actual knowledge of Complainant’s rights in the mark, given Respondent’s inclusion of the entire mark in the disputed domain name and Respondent’s use of the domain to provide links and advertisements to goods and services that compete with Complainant. The Panel therefore determines that Respondent registered the disputed domain name 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
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.co> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: July 31, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page