national arbitration forum

 

DECISION

 

Homer TLC, Inc. v. kai tian

Claim Number: FA1307001510935

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hampton-bay-lighting.com>, registered with GODADDY.COM, LLC.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 22, 2013; the National Arbitration Forum received payment on July 23, 2013.

 

On July 24, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <hampton-bay-lighting.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 July 25, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 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@hampton-bay-lighting.com.  Also on July 25, 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 August 21, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <hampton-bay-lighting.com> domain name, the domain name at issue, is confusingly similar to Complainant’s HAMPTON BAY      mark.

 

2.    Respondent does not have any rights or legitimate interests in the domain name at issue.

 

3.    Respondent registered and used the domain name at issue in bad faith.

 

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

 

FINDINGS

Complainant is the owner of the distinctive and well-known HAMPTON BAY mark, used in connection with lighting fixtures, ceiling fans, and air conditioners. Complainant has continuously used the mark since as early as 1986. Complainant also owns trademark registrations for the HAMPTON BAY mark (e.g., Reg. No. 2,309,163 registered Jan. 18, 2000) with the United States Patent and Trademark Office (“USPTO”).  The disputed domain name is identical or confusingly similar to the <hampton-bay-lighting.com> domain name. The addition of the term “lighting” does not negate the confusing similarity that exists. Moreover, the addition of hyphens and the generic top-level domain (“gTLD”) “.com” is similarly irrelevant.

 

Respondent has no relationship with Complainant and has never been commonly known by the disputed domain name. There is no evidence in the WHOIS information to suggest that Respondent is known by the <hampton-bay-lighting.com> domain name.  The <hampton-bay-lighting.com> domain name  is not being used for a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <hampton-bay-lighting.com> domain name resolves to a website which contains numerous sponsored advertisements related to lighting fixtures, ceiling fans, and other related goods. Respondent hosts a website where links are displayed that send Internet users to websites of Complainant’s competitors if clicked on. Respondent is diverting Complainant’s actual and prospective customers to Respondent’s own website, and  then to the websites of Complainant’s competitors. Respondent is commercially benefiting from the <hampton-bay-lighting.com> domain name’s display of competitive links.  Respondent had actual and constructive knowledge of Complainant’s rights in the HAMPTON BAY mark given the numerous registrations for the mark with the USPTO.

 

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."

 

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.”).

 

Identical and/or Confusingly Similar

Complainant  is the owner of the distinctive and well-known HAMPTON BAY mark, used in connection with lighting fixtures, ceiling fans, and air conditioners. Complainant  has continuously used the mark since as early as 1986 and owns trademark registrations for the HAMPTON BAY mark (e.g., Reg. No. 2,309,163 registered Jan. 18, 2000) with the USPTO.   Panels have found that registration of a mark with a trademark authority, regardless of the location of the parties, is evidence of having rights in that mark. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) ("The Panel finds that USPTO registration is sufficient to establish these rights even when Respondent lives or operates in a different country."). Therefore, Complainant has rights in the HAMPTON BAY mark pursuant to Policy ¶ 4(a)(i).

 

The disputed domain name is identical or confusingly similar to the <hampton-bay-lighting.com> domain name.  The addition of the term “lighting” does not negate the confusing similarity that exists and, moreover, the addition of hyphens and the gTLD “.com” is similarly irrelevant.  In Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005), the panel found that adding terms which described an aspect of the complainant’s business to the complainant’s mark in a domain did not remove the domain name from the realm of confusing similarity. Further, the panel in Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004), held that hyphens and top-level domains are irrelevant for purposes of the Policy. Accordingly, this Panel finds that the <hampton-bay-lighting.com> domain name is confusingly similar to the HAMPTON BAY mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been established. 

 

Rights or Legitimate Interests

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 (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.”).

 

Respondent has no relationship with Complainant and Respondent has never been commonly known by the disputed domain name.  There is no evidence in the WHOIS information to suggest that Respondent is known by the <hampton-bay-lighting.com> domain name. The WHOIS record for the <hampton-bay-lighting.com> domain name lists “kai tian” as the domain name registrant. In Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel noted that the WHOIS record was strong evidence of whether a respondent is known by a mark or domain name. Therefore, because the WHOIS information does not reflect a relation to the disputed domain name, the Panel  here finds that Respondent is not commonly known by the <hampton-bay-lighting.com> domain name pursuant to Policy ¶ 4(c)(ii).

 

The <hampton-bay-lighting.com> domain name  is not being used for a bona fide offering of goods or services nor a legitimate noncommercial or fair use.  The <hampton-bay-lighting.com> domain name resolves to a website which contains numerous sponsored advertisements related to lighting fixtures, ceiling fans, and other related goods.  The display of such competing links is not a use which provides the respondent with rights or legitimate interests in the disputed domain name. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)). Therefore, Respondent’s use of the <hampton-bay-lighting.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).

 

The Panel finds that Policy ¶ 4(a)(ii) has been established. 

 

Registration and Use in Bad Faith

Respondent hosts a website where links are displayed that send Internet users to websites of Complainant’s competitors if clicked on.  According to Complainant, Respondent is diverting Complainant’s actual and prospective customers to Respondent’s own website, and often then to the websites of Complainant’s competitors. The Panel finds that Respondent is thus disrupting Complainant’s business pursuant to Policy ¶ 4(b)(iii), demonstrating bad faith. See 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)). 

 

Respondent commercially benefits from the <hampton-bay-lighting.com> domain name, by using the resolving website to display competitive links.  The sponsored links to competing products generate revenue for Respondent.  In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), the panel found bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes. Therefore, the Panel  finds that Respondent is attempting to create a likelihood of confusion which would allow Respondent to take advantage of Internet users’ belief that they are reaching Complainant’s website. This provides evidence that Respondent registered and uses the <hampton-bay-lighting.com> domain name in bad faith under Policy ¶ 4(b)(iv).

 

Complainant notes that its trademark registrations for the HAMPTON BAY mark existed well before the registration of the disputed domain name. Accordingly, Respondent had constructive knowledge of Complainant's rights in the mark. While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, this Panel  finds that, due to the fame of Complainant's mark, and the nature of use of the website associated with the disputed domain name, Respondent had actual knowledge of the mark and Complainant's rights. Thus, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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 established. 

 

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 <hampton-bay-lighting.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  August 24, 2013

 

 

 

 

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