Homer TLC, Inc. v. Waseem Hassan
Claim Number: FA1409001579316
Complainant is Homer TLC, Inc. (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA. Respondent is Waseem Hassan (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hamptonbayonlinestore.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 11, 2014; the National Arbitration Forum received payment September 11, 2014.
On September 15, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <hamptonbayonlinestore.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 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@hamptonbayonlinestore.com. Also on September 16, 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 October 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
i. Complainant owns the HAMPTON BAY mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 2,309,163, registered January 18, 2000).
ii. Complainant uses the mark in connection with its business in selling ceiling fans and lighting fixtures.
iii. Complainant operates online through <hamptonbay.com>, which has been in use since 1992.
i. Under Policy ¶ 4(a)(i):
1. The <hamptonbayonlinestore.com> domain name is confusingly similar to Complainant’s HAMPTON BAY mark because Respondent has simply added the generic terms “online” and “store” to the mark.
ii. Under Policy ¶ 4(a)(ii):
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the <hamptonbayonlinestore.com> domain name. Respondent is neither licensed nor authorized to use the HAMPTON BAY mark.
3. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent uses the disputed domain name to direct Internet users to an informational site containing numerous sponsored advertisements, some of which are in direct competition with Complainant.
5. Respondent uses the disputed domain name for its commercial gain by receiving compensation each time an Internet user clicks on one of these links.
iii. Under Policy ¶ 4(a)(iii):
1. Respondent uses the disputed domain name to redirect Internet users to a webpage that contains links to third-party websites, some of which are in direct competition with Complainant.
2. Respondent had at least constructive knowledge of Complainant’s rights in the mark it that there was an obvious link between Complainant’s mark and the content advertised on respondent’s website.
Complainant established that it has rights to and legitimate interests in the disputed domain name.
Respondent has no such rights or legitimate interests in the disputed domain name.
Respondent registered and used a domain name that is confusingly similar to the Complainant’s protected mark and did so 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 Complainant to 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 to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant uses the HAMPTON BAY mark in connection with its business in selling ceiling fans and lighting fixtures. Complainant owns the HAMPTON BAY mark through its trademark registrations with the USPTO (e.g., Reg. 2,309,163, registered January 18, 2000). Complainant argues that such registrations are sufficient to establish rights in the HAMPTON BAY mark pursuant to Policy ¶ 4(a)(i) requirements. Complainant’s argument is supported by previous UDRP decisions. See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, this Panel finds that Complainant’s USPTO registrations are sufficient to establish rights in the HAMPTON BAY mark under Policy ¶ 4(a)(i).
Complainant argues that the <hamptonbayonlinestore.com> domain name is confusingly similar to Complainant’s HAMPTON BAY mark because Respondent has simply added the generic terms “online” and “store” to the mark. The Panel also notes that the disputed domain name differs from the mark given the affixation of the generic top-level domain (“gTLD”) “.com” and the omission of a space between the words of the mark. Previous panels have generally found that the mere addition of generic terms does not avoid findings of confusing similarity, and the affixation of a gTLD and the omission of a space between words is irrelevant to a Policy ¶ 4(a)(i) analysis. See Warner Bros. Entm’t Inc.; New Line Prods., Inc. & DC Comics v. Procount Bus. Servs., FA 360942 (Nat. Arb. Forum Dec. 22, 2004) (finding that the addition of one or more generic terms and a gTLD as well as the omission of spaces fails to create a meaningful distinction between the disputed domain name and the mark within it because “[s]uch additions do not disguise the fact that the dominant features of the domain names are [c]omplainant’s marks, and each domain name is therefore confusingly similar to the marks pursuant to Policy ¶ 4(a)(i)”).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to the Complainants protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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.”).
Complainant urges that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent is not commonly known by the <hamptonbayonlinestore.com> domain name. The Panel notes that the WHOIS information identifies “Waseem Hassan” as the registrant of the disputed domain name. Further, Complainant urges that Respondent is neither licensed nor authorized to use the HAMPTON BAY mark. The Panel recalls that Respondent failed to submit a response to refute any of Complainant’s contentions. Given the lack of other evidence the Panel finds that Respondent is not commonly known by the <hamptonbayonlinestore.com> domain name pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant urges that the disputed domain name currently redirects Internet users to respondent’s webpage that contains a variety of links to third-party websites, some of which are in direct competition with Complainant. See Complainant’s Ex. D. Previous panels have refused to find a bona fide offering of goods or services, or a legitimate noncommercial or fair use where the disputed domain name was used to forward Internet users to a website containing links and products competing with those of Complainant. 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).
Finally, Complainant alleges that Respondent receives compensation for each time a confused Internet user clicks on one of the advertisements placed on the web page. Generally, panels have found that such behavior is not consistent with a bona fide offering of goods and services, or a legitimate noncommercial or fair use of the disputed domain name. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Thus, this Panel finds that Respondent has not provided a bona fide offering of goods and services, or made a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that Respondent registered and is using the <hamptonbayonlinestore.com> domain name in bad faith. Complainant maintains that Respondent currently uses the disputed domain name to redirect confused Internet users to Respondent’s own webpage that contains a variety of different advertisements, some of which are in direct competition with Complainant. See Complainant’s Ex. D. Previous panels have found that such behavior constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, this Panel finds that Respondent registered and is using the disputed domain name in bad faith under a Policy ¶ 4(b)(iii) analysis.
Lastly, Complainant argues that Respondent had at least constructive knowledge of Complainant’s rights in the HAMPTON BAY mark due to the obvious link in the content advertised on its webpage and Complainant’s business. Although constructive notice will not support a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights, and therefore finds that Respondent registered the disputed 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 had "actual knowledge of Complainant's mark when registering the disputed domain name")."
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <hamptonbayonlinestore.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
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