Homer TLC, Inc. v. James Samuel / Personal
Claim Number: FA1402001546076
Complainant is Homer TLC, Inc. (“Complainant”), represented by Sheri Hunter of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is James Samuel / Personal (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hamptonbayusa.com>, registered with ENOM, INC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 28, 2014; the National Arbitration Forum received payment on February 28, 2014.
On March 3, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <hamptonbayusa.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. 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 March 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 2014 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@hamptonbayusa.com. Also on March 3, 2014, 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 March 31, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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, through the stores operated by its licensee Home Depot USA, sells lighting fixtures, ceiling fans, and other products under the HAMPTON BAY trademark, with sales exceeding $1 billion annually. Complainant and its predecessors in interest have used the HAMPTON BAY mark in the United States and abroad since at least as early as 1986. Complainant’s mark is the subject of numerous U.S. and international trademark registrations.
Complainant contends that the disputed domain name <hamptonbayusa.com> is identical to Complainant’s HAMPTON BAY mark. The argument made in support of that contention, however, refers to confusing similarity, and the Panel considers this statement sufficient to raise the issue of confusing similarity.[1]
Complainant states that it has no relationship with Respondent and has not authorized Respondent to use its HAMPTON BAY mark. Complainant asserts that Respondent is not known by the disputed domain name. Complainant further asserts that Respondent is using the domain name for commercial gain by directing Internet users seeking Complainant’s goods and services to a purported informational website containing sponsored advertisements to Complainant’s competitors, and that this use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. On these grounds Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name.
Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith. In support thereof, in addition to the allegations set forth above, Complainant alleges that Respondent had at least constructive knowledge of Complainant’s trademark rights when it registered and began using the domain name, in light of Complainant’s numerous U.S. and international trademark registrations. Complainant further alleges that Respondent must have registered the domain name with Complainant’s mark in mind, based upon the connection between Complainant and the goods and services that Respondent has advertised using the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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 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 disputed domain name combines Complainant’s registered trademark with the geographic term “usa” and the top-level domain suffix “.com”. These additions do not diminish the similarity between the domain name and Complainant’s mark. See, e.g., Homer TLC, Inc. v. Private Whois homedepot‑usa.com, FA 1428982 (Nat. Arb. Forum Mar. 22, 2012) (finding <homedepot‑usa.com> confusingly similar to HOME DEPOT). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Complainant has made its prime facie case, and Respondent has failed to come forward with any evidence of rights or legitimate interests. The Panel finds that Complainant has met its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor.” Under paragraph 4(b)(iv), bad faith may be shown by evidence that “by using
the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Respondent registered a domain name that combines Complainant’s mark with a broad geographic term. The Panel infers from the circumstances that Respondent was aware of Complainant’s mark and intentionally targeted the mark. (The Panel disregards Complainant’s arguments regarding constructive knowledge, which is insufficient to demonstrate bad faith under the Policy. See, e.g., Homer TLC, Inc. v. Private Whois homedepot‑usa.com, supra.) Respondent has used the domain name to direct Internet users to sites from which Respondent presumably receives commissions or other commercial benefit, trading on Complainant’s mark. Such use is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. See, e.g., Homer TLC, Inc. v. Shibu Varughese / Ozhumannil Business Solutions, FA 1505587 (Nat. Arb. Forum July 31, 2013).
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hamptonbayusa.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: March 31, 2014
[1] The Panel is troubled by this lack of precision, particularly in light of the fact that the same Complainant, in a proceeding involving nearly the same issue and in which it was represented by the same law firm, was admonished by the Panel in that proceeding that the proper argument is confusing similarity rather than identicality.
Complainant contends that Respondent’s <homedepot-usa.com> domain name is identical to Complainant’s HOME DEPOT mark. However, the Panel determines that, due to the addition of a hyphen, the geographic term “usa,” and generic top-level domain (“gTLD”) “.com,” the proper argument should be that the disputed domain name is confusingly similar, not identical, to Complainant’s HOME DEPOT mark.
Homer TLC, Inc. v. Private Whois homedepot‑usa.com, FA 1428982 (Nat. Arb. Forum Mar. 22, 2012).
In addition, the same section of the Complaint in this proceeding twice refers to the disputed domain name as “homedepotonline.com”, presumably the result of a careless cut-and-paste job and a lack of proofreading. And later in the Complaint, Complainant’s contention regarding fair use appears under a heading that refers only to bona fide offering of goods or services, which is a separate issue. Fair use is not a trivial point in this case, given Complainant’s characterization of Respondent’s website as “a purported informational site.” Under the Policy, rights or legitimate interests may arise from an informational or fan site where any commercial activity is merely incidental or ancillary. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 2.5 (2d ed. 2011), available at http://www.wipo.int/amc/en/domains/search/overview/.
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