Homer TLC, Inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1308001515629
Complainant is Homer TLC, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <glacierbaytoilets.net>, registered with INTERNET.BS CORP.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 20, 2013; the National Arbitration Forum received payment on August 20, 2013.
On August 22, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <glacierbaytoilets.net> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 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@glacierbaytoilets.net. Also on August 23, 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 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
i. Complainant owns the GLACIER BAY mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,395,807, registered March 11, 2008).
ii. Complainant uses the GLACIER BAY mark in connection with bathroom fixtures, toilets, faucets, bathroom accessories, and related goods.
iii. Complainant, through its predecessor in interest and licensees, Home Depot, has used the mark in commerce since at least as early as April of 2000 and has gained substantial goodwill as a result of substantial promotion of its brand and the quality of the products.
i. Policy ¶ 4(a)(i)
1. The <glacierbaytoilets.net> domain name is identical to the GLACIER BAY mark. The additions of the term “toilets,” and the generic top-level domain (“gTLD”) “.net” are insufficient to differentiate the domain name from the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent has no rights or legitimate interests in the disputed domain name. Respondent has never been commonly known by the disputed domain name or by GLACIER BAY. Further, Respondent has no relationship with Complainant.
2. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. The disputed domain name redirects users to Respondent’s website, which Respondent uses to offer information about GLACIER BAY faucets and bathroom fixtures, as well as numerous sponsored advertisements and links. The links direct users to websites of Complainant’s competitors.
iii. Policy ¶ 4(a)(iii)
1. Respondent uses the disputed domain name to direct users to a website with links and sponsored ads that direct visitors to goods and services that compete with Complainant, which disrupts Complainant’s business. Such disruption is evidence of bad faith.
2. Respondent’s constructive, if not actual; knowledge of Complainant’s rights in the mark is further evidence of Respondent’s bad faith.
Respondent registered the disputed domain on May 25, 2010.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant claims to own the GLACIER BAY mark through its trademark registrations with the USPTO (e.g., Reg. No. 3,395,807, registered March 11, 2008). Complainant uses the GLACIER BAY mark in connection with bathroom fixtures, toilets, faucets, bathroom accessories, and related goods. The Panel notes that, according to the WHOIS record, Respondent is located in Panama. Previous Panels have determined that USPTO registrations are sufficient to establish the complainant’s rights in a mark, despite the fact that the respondent resides in a different country. 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.”). The Panel finds that Complainant’s USPTO registrations establish its rights in the GLACIER BAY mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <glacierbaytoilets.net> domain name is identical to the GLACIER BAY mark. Complainant asserts that the addition of generic term “toilets” to the GLACIER BAY mark does not negate the confusing similarity. Further, Complainant contends that addition of a gTLD, such as “.net”, is irrelevant to the confusing similarity analysis. Past panels have agreed with Complainant’s arguments in similar circumstances. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). The Panel notes that Complainant uses the GLACIER BAY mark in connection with bathroom products, including toilets. The Panel determines, as the panel did in Chanel, that the addition of a term with an obvious relationship to the complainant’s business actually adds to the confusing similarity between the mark and disputed domain name. The panel also notes that the disputed domain name differs from mark as the domain name eliminates the spaces between the words of Complainant’s GLACIER BAY mark. However, previous panels have not found that eliminating spaces in the mark at issue is inconsequential to the Policy ¶ 4(a)(i) analysis, as spaces are not permissible in domain names. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the <glacierbaytoilets.net> domain name is confusingly similar to Complainant’s GLACIER BAY mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel is reminded that 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.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent has never been commonly known by the disputed domain name or by GLACIER BAY. The Panel notes that the WHOIS record identifies “Fundacion Private Whois / Domain Administrator” as the registrant of the disputed domain name. Further, Complainant contends that Respondent has no relationship with Complainant. The Panel notes that Respondent failed to submit a Response in the proceeding, and therefore, has not refuted Complainant’s contentions. In line with previous decisions, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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).
Complainant also argues that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant asserts that the disputed domain name redirects users to Respondent’s website, which Respondent uses to offer information about GLACIER BAY faucets and bathroom fixtures, as well as numerous sponsored advertisements and links. Complainant contends that the links direct users to websites operated by Complainant’s competitors. Respondent’s webpage shows links to Complainant’s webpage, as well as links to American Crane and Josco, both competitors in the field of bath products and supplies. Previous panels have held that a disputed domain name that is used to promote the complainant’s products, as well as products of the complainant’s competitors, does not constitute as a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be 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).”). The Panel finds that Respondent does not use the domain name in connection with 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), due to its display of both competing goods and links to competing hyperlinks at the resolving website.
Complainant has proven this element.
Complainant asserts that Respondent uses the disputed domain name to direct users to a website with links and sponsored ads that direct visitors to goods and services that compete with Complainant, which disrupts Complainant’s business. Complainant argues that such disruption is evidence of bad faith. Complainant asserts that the screenshot shows that the website promotes links to American Crane and Josco. The Panel notes that both American Crane and Josco are competitors of Complainant in the field of bath products and supplies. As Complainant has provided evidence that Respondent uses the domain name to promote links to Complainant’s competitors, the Panel finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Complainant argues that Respondent’s constructive, if not actual; knowledge of Complainant’s rights in the mark is further evidence of Respondent’s bad faith. Previous panels have generally not regarded constructive notice to be sufficient for a finding of bad faith. See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."). However, the Panel concludes that Respondent had actual knowledge of Complainant's mark and rights given the appearance of Complainant’s mark in the disputed domain name and on the resolving page. As previous panels have determined that actual knowledge is sufficient to support a finding of bad faith, the Panel therefore finds that Respondent registered the disputed 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").
Complainant
has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <glacierbaytoilets.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 23, 2013
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