Home Depot Product Authority, LLC v. Mark Berger
Claim Number: FA1610001696945
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Mark Berger (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hamptonbay-ceilingfans.com>, registered with Wild West Domains, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 6, 2016; the Forum received payment on October 6, 2016.
On October 6, 2016, Wild West Domains, LLC confirmed by e-mail to the Forum that the <hamptonbay-ceilingfans.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 October 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 2016 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-ceilingfans.com. Also on October 7, 2016, 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.
A timely Response was received and determined to be complete on October 25, 2016.
Complainant filed an additional submission which was received on October 28, 2016 and was timely. The Panel has considered the additional submission and has taken it into account in reaching its decision
On October 31, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant owns the HAMPTON BAY mark through registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,309,163, registered Jan. 18, 2000). See Compl., at Attached Ex. B.
2. Complainant uses the HAMPTON BAY mark to identify lighting fixtures, ceiling fans, and air conditioners.
3. The <hamptonbay-ceilingfans.com> domain name is confusingly similar to the HAMPTON BAY mark. The added terms “ceiling” and “fans” describe the goods Complainant offers under the mark and therefore fail to negate confusing similarity. Moreover, the addition of “.com” and a hyphen is irrelevant in determining confusing similarity.
4. Respondent lacks rights in the disputed domain name. Respondent has no relationship with Complainant, and Respondent is not commonly known by the disputed domain name. Further, Respondent has not used the disputed domain name for a bona fide offering of goods or services. Instead, Respondent uses the disputed domain name for commercial gain by redirecting users to a purported information site containing numerous sponsored advertisements, some of which redirect to Complainant’s competitors. See Comp., at Attached Ex. D–F.
5. Respondent registered and is using the disputed domain name in bad faith. Respondent uses the disputed domain name to promote links to Complainant’s competitors, which disrupts Complainant’s business. Further, Respondent knew of Complainant’s HAMPTON BAY mark at the time of registration, actually or constructively, but registered the <hamptonbay-ceilingfans.com> domain name despite such knowledge.
B. Respondent
Respondent made the following contentions
1. Respondent does not contest Policy ¶ 4(a)(i).
2. Respondent was asked by a client to build the website to which the domain name resolves, but the client did not pay for the completed work. As such, Respondent ran advertisements on the site to recoup his invested time and lost resource cost.
3. Respondent uses the domain name and website to offer unique content to site visitors who are enthusiasts of HAMPTON BAY products. He offers real support and guidance to people who have ceiling fan problems, and users can post reviews and other helpful information, comments, etc. in response to articles on the website.
4. Respondent works to optimize domain names, and does not seek to compete with or promote businesses that compete with Complainant.
5. Respondent did not register and use the <hamptonbay-ceilingfans.com> in bad faith. Any advertisements included on the resolving website are not related to the underlying purpose of the website, and the advertisements may redirect back to Complainant’s website, to the benefit of Complainant.
C. Additional Submissions
Complainant filed an additional submission which was received on October 28, 2016 and was timely. In its additional submission, Complainant made the following contentions.
1. Respondent’s use of the domain name to “offer useful information to site visitors who may own Hampton Bay fans” does not establish rights or legitimate interests in the domain name.
2. Respondent has admitted that at least part of his intent in using the domain name was for commercial purposes.
3. Respondent’s actual knowledge of Complainant’s mark is evidence of his bad faith.
4. Respondent cannot negate his bad faith by contending that Complainant has somehow benefited from the registration and use of the domain name.
1. Complainant is a United States company engaged in the business of supplying lighting fixtures, ceiling fans, and air conditioners under the HAMPTON BAY mark.
2. Complainant owns the HAMPTON BAY mark through registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,309,163, registered Jan. 18, 2000). See Compl., at Attached Ex. B.
3. Respondent registered the domain name on September 10, 2014.
4. Respondent has used the domain name for commercial gain by redirecting users to a purported information site containing sponsored advertisements, some of which redirect to Complainant’s competitors.
5. Those circumstances do not give rise to a right or legitimate interest in the domain name and they also show that Respondent registered and used the domain name 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:
(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.
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the HAMPTON BAY mark to identify lighting fixtures, ceiling fans, and air conditioners. Complainant submits that it owns the HAMPTON BAY mark through registration with the USPTO (e.g., Reg. No. 2,309,163, registered Jan. 18, 2000) and has adduced evidence to that effect which the Panel accepts. See Compl., at Attached Ex. B. It should also be said that Respondent is apparently domiciled in Canada. But it has often been held by UDRP panels that the trademark relied on by a complainant to establish standing need not be registered in the country in which the respondent is domiciled but, as the internet is international, the trademark may be registered in any jurisdiction. The Panel therefore agrees that Complainant’s USPTO registration satisfies the initial rights requirement of Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The second issue that arises is whether the disputed <hamptonbay-ceilingfans.com> domain name is identical or confusingly similar to Complainant’s HAMPTON BAY mark. Complainant submits that the <hamptonbay-ceilingfans.com> domain name is confusingly similar to the HAMPTON BAY mark. Complainant argues that the added terms “ceiling” and “fans” describe the goods Complainant offers under the mark and therefore fail to negate confusing similarity. The Panel also notes that the disputed domain name also differs from the mark by the omission of spacing and the addition of “.com” and a hyphen. The instant alterations have been considered insufficient to distinguish a domain name from a trademark. See Best Western Int’l, Inc. v. Lost in Space, SA, FA 126834 (Forum Nov. 7, 2012) (finding that the deletion of spacing in a mark and the addition of a gTLD are irrelevant as they are dictated by the standardized nature of second- and top-level domain names, and further that the addition of generic and descriptive terms fails to negate confusing similarity); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that the <hamptonbay-ceilingfans.com> domain name is confusingly similar to the HAMPTON BAY mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s HAMPTON BAY mark and to use it in its domain name and has added the generic words “ceiling” and “fans” which, as they describe the products of Complainant , do not detract from the confusing similarity that is clearly present but suggest that the domain name is referring to the ceiling fans of Complainant;
(b) Respondent registered the disputed domain name on September 10, 2014;
(c) Respondent has used the domain name for commercial gain by redirecting users to a purported information site containing sponsored advertisements, some of which redirect to Complainant’s competitors;
(d) Complainant submits that Respondent engaged in the aforementioned activities without the permission or authority of Complainant and has adduced evidence to that effect which the Panel accepts;
(e) Complainant argues that Respondent lacks rights in the disputed domain name. Notably, Complainant urges that Respondent has no relationship with Complainant, and that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS lists “Mark Berger” as registrant. In light of the evidence, the Panel determines Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response);
(f) Further, Complainant argues that Respondent has not used the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Complainant submits that Respondent uses the disputed domain name for commercial gain by redirecting users to a purported information site containing numerous sponsored advertisements, some of which redirect to Complainant’s competitors. See Comp., at Attached Ex. D–F. That cannot amount to a bona fide offering of goods and services, as it cannot be bona fide to mislead internet users in that manner and give the false impression that the domain name is an official domain name of Complainant and that the website is an official website of Complainant. Specifically, the disputed domain provides banner ads with links to a website called “Ceiling fans ‘N’ more…” which offers for sale ceiling fan replacement parts and accessories, and provides additional banner ads to third party websites offerings goods that directly compete with Complainant. Such competitive use has been found to demonstrate a lack of rights and legitimate interests. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (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).”). Therefore, the Panel agrees that Respondent’s competitive and apparent commercial use of the disputed domain name indicates a lack of bona fide offering of goods or services or any legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. That being so, it then falls to decide if the response of Respondent rebuts that prima facie case.
The Panel finds that Respondent has not rebutted the prima facie case against him. That is so for the following reasons.
First, Respondent says that he was asked by a client to build the website to which the domain name resolves, but that the client did not pay for the completed work. As such, Respondent ran advertisements on the site to recoup his invested time and lost resource cost. That may well explain why Respondent registered the domain name and why he has used it in the manner in which he has. That, however, does not absolve Respondent from liability flowing from his unauthorized use of Complainant’s trademark as he had no authority from Complainant to use it and, in any event, he is liable under the Policy as he is registered as the domain name holder of the disputed domain name. The Panel here notes that Respondent’s submission is also an admission that it used the domain name and website for commercial purposes, which negates Respondent’s argument that this was an information site giving him a right or legitimate interest in the domain name.
Secondly, Respondent’s main argument is that all he has done is to register the domain name and use it as an information site, carrying, as it does, useful information for consumers interested in Complainant’s products, spare parts and service. It may well be that a site used for such a purpose gives rise to a right or legitimate interest in a domain name, as has been held numerous times with such sites as tribute or fan sites and criticism sites. But, despite the principal information contained on the site being useful for consumers, the site also has a substantial commercial use carrying, as it does, advertisements for other companies which in some cases are competitors of Complainant. Respondent is therefore using Complainant’s trademark without permission and in part to promote the wares of Complainant’s competitors. That conduct cannot give rise to a right or legitimate interest in the domain name.
Thirdly, Respondent replies to that argument by saying that any hits from internet users leading to potential sales will find their way back to Complainant and that, as Complainant is the only provider of Hampton Bay products, other than those sold by Amazon, which must buy the products from Complainant to meet any orders, Complainant probably benefits from the activity on the site. That is not correct and nor is it a valid argument. The advertisements in some cases lead to Complainant’s competitors, but they also promote other products from other suppliers. Accordingly, internet users attracted to the site may well and in fact are invited by the advertisements to buy products other than ceiling fans from those other suppliers. Respondent is therefore in those cases using Complainant’s trademark and its well known brand, without permission, to solicit business for other suppliers and their products. That cannot amount to a right or legitimate interest in the domain name. In any event, using a domain name to direct internet users to a trademark owner does not create a right or interest in the domain name, as such a stratagem is frequently used to build up contact lists or information about potential customers. Moreover, Complainant has clearly not consented to this use of its trademark.
Respondent has therefore not rebutted the prima facie case against it.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and is using the disputed domain name in bad faith. In arguing this point, Complainant contends that Respondent uses the disputed domain name to promote links to Complainant’s competitors, which disrupts Complainant’s business. The Panel notes Complainant’s Attached Exhibits D–F, which show Respondent’s resolving website, which includes advertisements that redirect Internet users to competitors of Complainant as well as suppliers of other goods. Such redirection has been considered an example of bad faith disruption of a complainant’s business. See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (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). The Panel therefore finds that Respondent has engaged in disruption under Policy ¶ 4(b)(iii) and hence in bad faith registration and use of the domain name.
Secondly, Complainant also argues that Respondent knew of Complainant’s HAMPTON BAY mark at the time of registration, but registered <hamptonbay-ceilingfans.com> despite such knowledge. Although previous panels have declined to find evidence of bad faith based solely on constructive knowledge, panels have found Policy ¶ 4(a)(iii) bad faith where the circumstances support an inference of actual knowledge of a trademark. To illustrate, the Panel in Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014), wrote, “The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.” See also Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith). The Panel agrees that Respondent’s use of the disputed domain name, in part to provide information relating to Complainant’s products and its use of the trademark on the website demonstrate Respondent’s familiarity with Complainant at the time of registration of the domain name. Indeed, that knowledge of Complainant, its mark and the well known products sold under it, was clearly the reason for registering and then using the domain name. Accordingly, the Panel finds that there is ample evidence of Respondent’s bad faith registration pursuant to Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <hamptonbay-ceilingfans.com> domain name using the HAMPTON BAY mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
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-ceilingfans.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 1, 2016
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