Horizon Hobby, Inc. v. Sonny Lambert
Claim Number: FA0804001176659
Complainant is Horizon Hobby,
Inc., (“Complainant”) represented by Louis
J. Alex, of Cook, Alex, McFarron,
Manzo, Cummings & Mehler, Ltd.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <horizonhobby.us>, registered with Godaddy.com, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 7, 2008; the Forum received a hard copy of the Complaint on April 8, 2008.
On April 8, 2008, Godaddy.com, Inc. confirmed by e-mail to the Forum that the domain name <horizonhobby.us> is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 16, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 6, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received on May 6, 2008, but was not complete as the Response was not received in hard copy as required by usDRP Rule 5. The Panel declines to consider the same because it would not have affected the outcome even if the Panel had considered it. See Bank of Am. Corp. v. N.W. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003).
On May 14, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. The disputed domain name is identical or confusingly similar to Complainant’s mark;
2. Respondent has no rights or legitimate interests in the disputed domain name.
3. The disputed domain name was registered in bad faith.
The Panel declined to consider Respondent’s Response as deficient both procedurally and substantively.
The Panel finds in favor of Complainant and hereby orders that the disputed domain name be transferred to Complainant.
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant does not contend that it owns a trademark registration for the HORIZON HOBBY mark. However, the Panel determines that trademark registration is unnecessary under the usDRP, provided Complainant demonstrates sufficient use of the mark to convey common law rights. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the UDRP “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the UDRP to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The [UDRP] Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant contends that it has used its HORIZON HOBBY mark since at least 1985. Complainant uses the mark in connection with its production and distribution of a variety of hobby model products, particularly radio control aircraft and related parts. Additionally, Complainant operates a website at the <horizonhobby.com> domain name. The Panel determines that Complainant has shown common law rights sufficient for the purposes of Policy ¶ 4(a)(i). See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
The Panel finds that the <horizonhobby.us> domain name is identical to Complainant’s HORIZON HOBBY mark, as the disputed domain name contains Complainant’s mark in its entirety, with the addition of the country-code top-level domain “.us.” The Panel determines this addition is irrelevant for the purposes of Policy ¶ 4(a)(i). See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Rights or Legitimate Interests
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is using the <horizonhobby.us> domain name to sell replacement and upgrade parts for Complainant’s toy helicopters, without Complainant’s authorization. The Panel determines that such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant).
Complainant contends that Respondent does not own a trademark registration in the <horizonhobby.us> domain name and is not commonly known by the disputed domain name. The WHOIS information lists the registrant as “Sonny Lambert.” In the absence of evidence of a trademark registration in the <horizonhobby.us> domain name or a related term as well as the absence of being commonly known by the disputed domain name, the Panel finds that Respondent has not established rights or legitimate interests in the <horizonhobby.us> domain name for purposes of Policy ¶¶ 4(c)(i) or 4(c)(iii). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)); see also 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.”)
Registration and Use in Bad Faith
Complainant contends that Respondent is using the <horizonhobby.us> domain name to operate a website that sells replacement and upgrade parts for Complainant’s products, without Complainant’s permission. The Panel finds that such use constitutes a disruption of Complainant’s business and is therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Moreover, Complainant contends that Respondent’s manner of use of the <horizonhobby.us> domain name will likely lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting website. The Panel finds that such use is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant has included a copy of a UDRP Complaint filed with the National Arbitration Forum on April 8, 2008. In that Complaint, Complainant lists thirty-one other domain names that it alleges infringe on its various marks which are used in connection with its radio controlled aircraft hobby products. Complainant contends that this evidences a pattern of registering domain names associated with Complainant’s marks. The Panel finds that Respondent has exhibited a pattern of registering domain names that infringe on Complainant’s marks, and further finds that this pattern is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) (“It is found and determined that Respondent is in violation of [UDRP] ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering trademark-related domain names in bad faith.”); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <horizonhobby.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 27, 2008
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