Homer TLC, Inc. v. Reza Alavi
Claim Number: FA1305001500166
Complainant is Homer TLC, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Reza Alavi (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lightinghamptonbay.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Héctor Ariel Manoff as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 16, 2013; the National Arbitration Forum received payment on May 16, 2013.
On May 17, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <lightinghamptonbay.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 May 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 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@lightinghamptonbay.com. Also on May 20, 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.
A timely Response was received and determined to be complete on June 9, 2013.
Additional Submission by the Complainant was received on June 14, 2013 in a timely manner according to the Forum's Supplemental Rule #7.
Additional Submission by the Respondent was received on June 18, 2013 in a timely manner according to the Forum's Supplemental Rule #7.
On June 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Héctor Ariel Manoff 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Reverse Domain Name Hijacking
C. Additional Submissions
Complainant
Respondent
Complainant holds the HAMPTON BAY trademark, uses it in connection with lighting fixtures, ceiling fans, and air conditioning units since at least 1986 and has common law rights and federal registrations. Complainant registered HAMPTON BAY mark with the USPTO, Reg. No. 2,309,163, on January 18, 2000.
Respondent registered the disputed domain name, <lightinghamptonbay.com>, on September 27, 2012. The website is a blog which consists of after-purchase and informative articles that intend to provide information about HAMPTON BAY products which also includes sponsored links.
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.
Complainant claims that it has owned the HAMPTON BAY trademark, used it in connection with lighting fixtures, ceiling fans, and air conditioning units since at least as early as 1986. Complainant states that its licensee, Home Depot USA, Inc., sells in excess of one billion dollars ($1,000,000,000 USD) in HAMPTON BAY products each year. Complainant claims that it has secured its rights in the HAMPTON BAY mark by obtaining registrations with the USPTO. See Reg. No. 2,309,163 registered on Jan. 18, 2000 (Exhibit B).
The Panel agrees that USPTO registration is an adequate basis for Policy ¶ 4(a)(i), even when Respondent is located in Australia. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. 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.”).
In this particular case there is no doubt that the Respondent knew the Complainant’s trademark which is expressly mentioned on its site.
Complainant also argues that Respondent has registered the disputed <lightinghamptonbay.com> domain name, which only adds the generic term “lighting” to the HAMPTON BAY mark and that this addition of the gTLD “.com” is irrelevant in finding confusing similarity.This Panel holds that the addition of generic terms to Complainant’s mark is not sufficient to distinguish a disputed domain name. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark).
Respondent’s claim about Internet users are not so unwary as to mistaken a 20-page WordPress blog with the 100,000 pages Complainant’s official website is not a ground to be discussed in this dispute according to this Panel. The core of it is not the website’s content but the registration and use of a domain name that includes a registered trademark.
This Panel finds that even though a search for “lighting hampton bay” could not be the most common one, consumers could be do it by searching for reviews or comments about the products. Thus, there is likelihood of getting the Respondent’s website and finding sponsored advertisements of Complainant’s competitors.
This Panel finds that the Google unbiased algorithm is out of the scope of this dispute and cannot be considered as evidence.
In light of the preceding facts and case precedent, the Panel determines that the disputed domain name is confusingly similar to HAMPTON BAY mark, especially taking into account that the generic term added in this case is “lighting” which directly refers to the goods identified by HAMPTON BAY mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business).
The Panel finds that the <lightinghamptonbay.com> domain name is confusingly similar to the HAMPTON BAY mark and that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in <lightinghamptonbay.com> domain name, since it has not provided sufficient evidence that Respondent has been commonly known by the cited domain names. According to WHOIS, the domain name owner is Reza Alavi of Strathmore, Victoria, Australia, information that has not been denied by Respondent.
In addition, Respondent has no relationship of any sort with Complainant or Home Depot USA, Inc. and Respondent has never requested or received any authorization, permission, or license to use the HAMPTON BAY mark.
The fact that one of Respondent’s major advertisers is Home Depot is not a ground to presume a consent from Complainant’s to the disputed domain name. These types of advertisements are not over the Complainant’s control.
The Panel concludes that it is thus clear that Respondent is not commonly known by the <lightinghamptonbay.com> domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
The Panel finds that Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and thus 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 (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.”).
According to the evidence submitted by Complainant (Exhibit D) Respondent is using the <lightinghamptonbay.com> domain name to host an informational website that contains sponsored advertisements, some of them about lighting-related goods (<lightingdirect.com>, <lightsculptors.com>, <1000bulbs.com>), which, the Panel presumes, generate pay per click fees.
As regards Respondent’s reference to free speech protections under the First Amendment of the United States Constitution, prior Panels has established that the right to free speech is different from having a legitimate interest in the domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace International, D2001-0376 (WIPO May 14, 2001). (noting that while the response proceeds to show why the respondent has a right to free speech and a legitimate interest in criticizing the activities of organizations like the complainant, that right is a very different thing from having a right or legitimate interest in respect of the domain name).
This Panel finds that Respondent’s use on blog posts about HAMPTON BAY, which includes advertisements to Complainant’s competing goods is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
This Panel finds that Respondent has control over the sponsored advertisements since they appear on specific parts of the website. See Darice, Inc. v. Texas International Property Associates - NA NA, FA0709001082320 (“the ‘frame’ itself does appear to be within Respondent’s control, since it is part of the design of the website, remaining constant even though the displayed links may change from time to time”).
The Panel considers that Respondent registered a domain name that incorporated a registered trademark, agreed to include sponsored advertisements knowing they may include advertisements of Complainant’s direct competitors and did not do anything to block it (despite Respondent’s allegations about rejection of advertisements for Home Depot’s competitor no evidence about it was submitted). See also the cited decision. (concluding that the disputed domain name was registered with actual knowledge of Complainant’s DARICE mark and domain name and that Respondent’s website is deliberately targeted at Complainant’s market and goodwill by hosting advertisements by way of links, some of which Respondent must have expected would lead to Complainant’s competitors. Such use of the domain name is neither a bona fide offering of goods or services under the Policy, paragraph 4(c)(i) nor a legitimate noncommercial or fair use under paragraph 4(c)(iii)).
The Panel agrees that Respondent’s use on blog posts about HAMPTON BAY, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As regards Respondent’s reference to free speech protections under the First Amendment of the United States Constitution, this Panel finds the argument is out of the subject of this dispute. It does not refer to the website’s content but the domain name itself, which incorporates a registered trademark. Respondent could keep the blog by using a different domain name.
This Panel finds that despite the positive comments made by Respondent in the blog posts, the hyperlinks within and surrounding the blog post are in fact links to competing and rival companies. This, along with other circumstances detailed below make this Panel conclude that registration and use of <lightinghamptonbay.com> is in bad faith.
Respondent registered the domain name 12 years after Complainant had the HAMPTON BAY mark registered. Respondent incorporated the whole trademark and added a generic term directly related to the goods identified by the trademark and furthermore Respondent agrees that sponsored advertisements may include promoting goods of competitors of the trademark’s owner.
The Panel concludes that in spite of the positive comments on the Complainant’s goods, the disputed domain name was registered in order to attract and derive commercial gain from traffic seeking Complainant’s website and trademark. This Panel considers that the copyright notice section included in Respondent’s website is not sufficient to avoid confusion and the cited attraction.
The Panel finds that Respondent had knowledge of the HAMPTON BAY mark since it is expressly mentioned on the website <lightinghamptonbay.com>, and Respondent as well had knowledge of Complainant's rights in this mark.
This Panel considers that the fact that the disputed domain name has not been offered for sale is not enough to dismiss bad faith in registering and using a domain name that incorporates a registered trademark.
Thus, the Panel concludes that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iv). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Reverse Domain Name Hijacking
This Panel finds that Complainant has satisfied Policy ¶ 4(a)(i), and thus has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lightinghamptonbay.com> domain name be TRANSFERRED from Respondent to Complainant.
Héctor Ariel Manoff, Panelist
Dated: June 26, 2013
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