national arbitration forum

 

DECISION

 

Homer TLC, Inc.  v. Bessouiket Benamara

Claim Number: FA1104001385067

 

PARTIES

Complainant is Homer TLC, Inc. (“Complainant”), represented by Richard J. Groos of Fulbright & Jaworski L.L.P., Texas, USA.  Respondent is Bessouiket Benamara (“Respondent”), Ontario.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hamptonbay.org>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 20, 2011; the National Arbitration Forum received payment on April 21, 2011.

 

On April 21, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <hamptonbay.org> domain name is registered with GoDaddy.com, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On April 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 2011, 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.org.  Also on April 27, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 May 20, 2011, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    The domain name that Respondent registered, <hamptonbay.org>, is identical to Complainant’s HAMPTON BAY mark.

 

2.    Respondent has no rights to or legitimate interests in the <hamptonbay.org> domain name.

 

3.    Respondent registered and used the <hamptonbay.org> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Homer TLC, Inc., uses the HAMPTON BAY mark in connection with the sale of lighting fixtures, ceiling fans, and air conditioners. Complainant owns multiple trademark registrations for the HAMPTON BAY mark with the United States Patent and Trademark Office (“USPTO”), including the following:

 

Reg. No. 2,309,163  issued January 18, 2000;

Reg. No. 3,325,879  issued October 30, 2007;

Reg. No. 3,340,864  issued November 20, 2007;

Reg. No. 3,661,997  issued July 28, 2009; and

Reg. No. 3,706,952  issued November 3, 2009.

 

Respondent, Bessouiket Benamara, registered the <hamptonbay.org> domain name December 24, 2009. The disputed domain name resolves to a purported informational website containing numerous sponsored advertisements relating to Complainant, its HAMPTON BAY products, and other related topics and companies.

 

DISCUSSION

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."

 

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.”).

 

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 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.

 

Identical to and/or Confusingly Similar

 

Complainant owns multiple trademark registrations for the HAMPTON BAY mark with the USPTO, including the following:

 

Reg. No. 2,309,163  issued January 18, 2000;

Reg. No. 3,325,879  issued October 30, 2007;

Reg. No. 3,340,864  issued November 20, 2007;

Reg. No. 3,661,997  issued July 28, 2009; and

Reg. No. 3,706,952  issued November 3, 2009.

 

The Panel finds that Complainant’s USPTO trademark registrations sufficiently establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i), even when Respondent lives or operates outside the United States. See Metro Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

Complainant argues that Respondent’s <hamptonbay.org> domain name is identical to Complainant’s HAMPTON BAY mark because the disputed domain name only varies from the mark in the deletion of the space between the terms and the addition of the generic top-level domain (“gTLD”) “.org.” The Panel finds that both of these changes are inconsequential and do not distinguish the disputed domain name from a mark in which Complainant has protected rights mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy   ¶ 4(a)(i).

 

The Panel finds that Respondent’s disputed <hamptonbay.org> domain name is identical to Complainant’s HAMPTON BAY mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant makes a prima facie case showing that Respondent lack such rights, the burden of proof shifts to Respondent to show that it does have such rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant made a prima facie case in these proceedings. Since Respondent failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). This Panel elects, however, to consider the evidence in the record according to the Policy ¶ 4(c) factors to determine if the evidence suggests that Respondent has any rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent has no relationship with Complainant or its licensee, Home Depot. Complainant argues that Respondent has never requested or received any authorization, permission or license from Complainant or Home Depot to use the HAMPTON BAY mark in any way. The WHOIS information for the <hamptonbay.org> domain name identifies the registrant as “Bessouiket Benamara,” which has no nominal connection with the disputed domain name. The Panel accordingly determines that Respondent is not commonly known by the <hamptonbay.org> domain name and lacks rights and legitimate interests under a Policy ¶ 4(c)(ii) analysis. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

Complainant asserts that Respondent uses the <hamptonbay.org> for illegitimate commercial gain by linking it to a purportedly informational website that contains numerous sponsored advertisements related to Complainant, Complainant’s HAMPTON BAY products, and Complainant’s competitors. Complainant urges that this use is not consistent with the Policy requirements of a bona fide offering of goods or services under ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use according to ¶ 4(c)(iii).  The Panel agrees.  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); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy  ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

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 asserts that Respondent uses the <hamptonbay.org> domain name to divert Complainant’s intending customers to competitors through the sponsored pay-per-click advertisements displayed on the resolving website. The Panel finds that these diversion efforts disrupt Complainant’s business and support a finding of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).

 

Complainant contends as well that Respondent intended to attract Complainant’s customers by registering Complainant’s identical mark in the <hamptonbay.org> domain name. Complainant argues that Complainant provides information on Complainant’s HAMPTON BAY products, as well as sponsored links, at the disputed domain name. The Panel finds that the content of the resolving website and the presence of Complainant’s mark in the disputed domain name create a likelihood of confusion among Internet users as to the source or sponsorship of the disputed domain name, which Respondent likely intends to exploit as the pay-per-click links generate revenue from the clicks of these misled consumers. The Panel thus concludes that Respondent’s actions show bad faith registration and use according to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also 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).”).

 

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).

 

DECISION

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.org> domain name be TRANSFERRED from Respondent to Complainant.

 

Hon. Carolyn Marks Johnson, Panelist

Dated:  May 24, 2011.

 

 

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