Homer TLC, Inc. v. William Manning / WEM Global, Inc.
Claim Number: FA1308001513560
Complainant is Homer TLC, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is William Manning / WEM Global, Inc. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <glacierbayfaucet.org>, registered with eNom, Inc. (R39-LROR).
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on August 7, 2013; the National Arbitration Forum received payment on August 7, 2013.
On August 8, 2013, eNom, Inc. (R39-LROR) confirmed by e-mail to the National Arbitration Forum that the <glacierbayfaucet.org> domain name is registered with eNom, Inc. (R39-LROR) and that Respondent is the current registrant of the name. eNom, Inc. (R39-LROR) has verified that Respondent is bound by the eNom, Inc. (R39-LROR) 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 August 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all en-tities and persons listed on Respondent’s registration as technical, administra-tive, and billing contacts, and to postmaster@glacierbayfaucet.org. Also on August 13, 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 September 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 operates Home Depot retail stores across the United States.
Complainant uses the GLACIER BAY trademark in connection with its sale of bathroom fixtures, toilets, faucets, bathroom accessories and related goods.
Complainant holds rights registrations for the GLACIER BAY trademark, on file with the United States Patent and Trademark Office (“USPTO”) (including Reg-istry No. 3,395,807, registered March 11, 2008).
Respondent first registered the disputed domain name on December 1, 2009.
The <glacierbayfaucet.org> domain name is confusingly similar to Complainant’s GLACIER BAY mark.
Respondent has not been commonly known as <glacierbayfaucet.org>.
Complainant has not authorized Respondent to use its GLACIER BAY mark in a domain name.
Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The domain name resolves to a website that hosts hyperlinks to the websites of Complainant’s competitors in the bathroom renovation industry.
The disputed domain name targets Internet users seeking products provided under Complainant’s GLACIER BAY mark, diverting them to Respondent’s web-site, which in turn promotes hyperlinks to Complainant’s competitors.
Respondent’s employment of the <glacierbayfaucet.org> domain name disrupts Complainant’s business.
Respondent presumably benefits commercially from its efforts to mislead Internet users by its use of the domain name.
Respondent knew of Complainant and its rights in the GLACIER BAY mark at the time Respondent registered the disputed domain name.
Respondent registered and uses the disputed domain name bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the GLACIER BAY trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark author-ity, the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demon-strates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that the <glacierbayfaucet.org> domain name is confusingly similar to the GLACIER BAY trademark. The domain name incorporates the mark in its entirety, merely eliminating the space between the terms of the mark, and adding the generic term “faucet,” which relates to an aspect of Complainant’s business, and the generic Top Level Domain (“gTLD”) “.org.” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. 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 the terms of the mark of another and the addition of a gTLD in creating a domain name do not establish distinctiveness from a UDRP complainant’s mark under Policy ¶ 4(a)(i)).
Similarly, see Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> domain name confus-ingly similar to a UDRP 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)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known as <glacierbayfaucet.org>, and that Complainant has not authorized Respondent to use its GLACIER BAY mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “William Manning / WEM Global, Inc.,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), where a panel concluded that a respondent was not commonly known by disputed domain names, and so failed to show that it had rights to or legitimate interests in them as provided in Policy ¶ 4(c)(ii), where the relevant WHOIS in-formation, as well as all other evidence in the record, gave no indication that that respondent was commonly known by the domain names, and where a UDRP complainant had not authorized that respondent to register a domain name con-taining its mark.
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s use of the disputed domain name is 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), in that, for Respondent’s presumed profit, the domain name resolves to a website that hosts hyperlinks to the websites of Complain-ant’s competitors in the bathroom renovation industry. This use of the domain is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legit-imate noncommercial or fair use under Policy ¶ 4(c)(iii). See, for example, Com-pania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), finding, under Policy ¶¶ 4(c)(i) or 4(c)(iii), that a respondent’s use of a disputed domain name was not a bona fide offering of goods or services or a legitimate noncommercial or fair use where the website resolving from the domain name displayed links to websites offering products and services in competition with a UDRP complainant’s business.
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the con-tested <glacierbayfaucet.org> domain name, as alleged in the Complaint, dis-rupts Complainant’s business. This stands as proof of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008), a panel there finding that a respondent’s use of the website resolving from a domain name which was con-fusingly similar to a UDRP complainant’s mark in order to divert Internet users to that complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent’s employment of the <glacierbayfaucet.org> domain name to attempt to profit by creating confusion among Internet users as to the possibility of Complainant’s affiliation with the domain name demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), a panel there finding that, because a respondent presumably received referral fees from its promotion of links carried on the website resolving from a domain name which was confusingly similar to a UDRP complainant’s mark, that respondent’s use of the domain name showed bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Finally under this head of the Policy, the evidence demonstrates that Respondent knew of Complainant and its interests in the GLACIER BAY trademark when Re-spondent registered the <glacierbayfaucet.org> domain name, which further supports a conclusion of bad faith registration of the domain name. See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (find-ing bad faith registration of a domain name under Policy ¶ 4(a)(iii) where there were reasonable grounds to believe that a respondent had notice of a UDRP complainant’s mark when it registered a confusingly similar domain name). See also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002), where a panel found bad faith registration of a domain name because the link between a com-plainant’s mark and the content advertised on a respondent’s website was obvious, so that that respondent “must have known about the Complainant’s mark when it registered the subject domain name.”
Accordingly, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <glacierbayfaucet.org> domain name be forth-with TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 19, 2013
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