Homer TLC, Inc. v. Bessouiket Benamara
Claim Number: FA1306001505578
Complainant is Homer TLC, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Bessouiket Benamara (“Respondent”), Algeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hamptonbaydecor.com>, registered with GODADDY.COM, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 19, 2013; the National Arbitration Forum received payment on June 19, 2013.
On June 19, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <hamptonbaydecor.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. 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 June 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@hamptonbaydecor.com. Also on June 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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. 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.
A. Complainant
Complainant contends as follows:
Complainant has used the HAMPTON BAY mark in connection with lighting fixtures, ceiling fans, and air conditioners at least as early as 1986. Complainant registered the <hamptonbay.com> domain name in 1992 and has continuously maintained its registration since that time. Complainant has registered the HAMPTON BAY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,309,163 registered January 18, 2000).
Respondent’s <hamptonbaydecor.com> domain name is identical to Complainant’s HAMPTON BAY mark.
Respondent has never been commonly known by the <hamptonbaydecor.com> domain name or by the HAMPTON BAY mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Respondent uses the <hamptonbaydecor.com> domain name to redirect Internet traffic to Respondent’s website, which Respondent uses to offer information about HAMPTON BAY-brand lighting fixtures, ceiling fans and other related goods, as well as numerous sponsored advertisements. The links on Respondent’s site resolve to websites offering goods that compete with those offered by Complainant.
Respondent collects pay-per-click revenue each time one of these links is accessed.
Respondent is using the disputed domain name to direct Internet users to a website with links and sponsored ads that direct visitors to goods and services that compete with Complainant. Such use is evidence of bad faith registration and use.
Respondent is deemed to have had constructive knowledge of Complainant’s trademark rights at the time Respondent registered and began using the <hamptonbaydecor.com> domain name in light of Complainant’s numerous trademark registrations for the HAMPTON BAY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for HAMPTON BAY.
Respondent is not affiliated with Complainant and had not been authorized to use the HAMPTON BAY mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in HAMPTON BAY.
The at-issue domain name addresses a website which Respondent uses to offer information about HAMPTON BAY-brand lighting fixtures, ceiling fans and other related goods, as well as numerous sponsored advertisements. Links on Respondent’s website direct Internet users to websites with links and sponsored advertisements that direct visitors to goods and services competing with Complainant. Respondent collects pay-per-click revenue each time one of these links is accessed.
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.
In view of 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 draw such inferences it 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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the HAMPTON BAY mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). Complainant need not register its marks where Respondent operates to demonstrate such rights. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i)”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The <hamptonbaydecor.com> domain name incorporates Complainant’s HAMPTON BAY mark in its entirety less the space between HAMPTON and BAY, suffixes the spaceless mark with the descriptive word “decor,” and appends the resulting string with the top level domain name “.com.” The resulting differences between the at-issue domain name and Complainant’s mark do not distinguish the two for the purposes of the Policy. Therefore, the Panel finds that Respondent’s <hamptonbaydecor.com> domain name is confusingly similar to Complainant’s HAMPTON BAY mark under Policy ¶4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); 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)).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “Bessouiket Benamara.” as the at-issue domain name’s registrant. Moreover, the record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by the domain name. The Panel thus concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent uses the domain to redirect Internet users to a website that Respondent uses to offer information about HAMPTON BAY brand lighting fixtures, ceiling fans and other related goods, as well as numerous sponsored advertisements. Links on Respondent’s website address third party websites offering goods that compete with those offered by Complainant. Furthermore, it is reasonable to assume that Respondent collects pay-per-click revenue each time someone accesses one of these links. Given the foregoing, the Panel concludes that Respondent’s use of the <hamptonbaydecor.com> domain name constitutes 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). See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees. . . . is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent uses the at-issue domain name to redirect Internet users to a website that contains links and sponsored advertisements which guide visitors to goods and services that compete with Complainant. The website displays advertisements for HAMPTON BAY home décor products, as well as links to websites such as “Outdoor Patio Furniture,” “Landscape Lighting,” and “Got Lights?,” among others. Respondent’s registration and use of a confusingly similar domain name in this manner disrupts Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. 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).
Additionally, it is evident from the notoriety of Complainant’s trademark and Respondent’s use of that trademark in a confusingly similar domain name to address a website containing numerous references to such mark, that Respondent was familiar with Complainant’s trademark at the time it registered the domain name. Respondent’s knowledge of Complainant's trademark prior registration of the at-issue domain name further indicates that Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See 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 "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hamptonbaydecor.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 18, 2013
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