Homer TLC, Inc. v. Gary Dean / GLD Media Solutions
Claim Number: FA1403001549695
Complainant is Homer TLC, Inc. (“Complainant”), represented by Sheri Hunter of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Gary Dean / GLD Media Solutions (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hamptonbay.us>, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 20, 2014; the National Arbitration Forum received a hard copy of the Complaint on March 26, 2014.
On March 20, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <hamptonbay.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On March 26, 2014, a Notification of Complaint and Commencement of Administrative Proceeding (“the “Commencement Notification”), setting a deadline by which Respondent could file a Response to the Complaint, was transmitted Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplement 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.
1. Complainant owns the well-known HAMPTON BAY trademark in connection with lighting fixtures, ceiling fans, and home décor since as early as 1989.
a. Through Complainant’s licensee, Home Depot USA, Inc., Complainant has worldwide sales under the HAMPTON BAY mark in excess of one billion US dollars each year.
i. Complainant owns registrations for the HAMPTON BAY mark with the United States Patent and Trademark Office (“USPTO”) (E.g., Reg. No. 2,309,163 registered January 18, 2000).
b. Respondent’s <hamptonbay.us> domain name is identical to Complainant’s HAMPTON BAY mark.
i. Respondent’s disputed domain name contains Complainant’s HAMPTON BAY mark in its entirety with the addition of the country-code top-level domain (“ccTLD”) “.us.”
2. Respondent has no rights or legitimate interests in the <hamptonbay.us> domain name.
a. Respondent is not commonly known by the disputed domain name.
i. Respondent is not associated at all with Complainant. Respondent has never requested or received authorization, permission or license from Complainant in any way.
ii. The WHOIS information for Respondent’s disputed domain name lists “Gary Dean” as the domain name’s registrant.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
i. Respondent redirects Internet users interested in Complainant’s goods and services to a purported informational site containing various sponsored advertisements. Respondent additionally offers information about Complainant’s lighting fixtures, ceiling fans and other related goods.
ii. The links featured on Respondent’s resolving website compete with Complainant’s business, and respondent thereby collects revenue when Internet users visit the resolving website.
3. Respondent registered or is using the <hamptonbay.us> domain name in bad faith.
a. Respondent uses the disputed domain name to direct Internet users to a website displaying links and advertisements that redirect Internet users to third-party websites that compete with Complainant.
b. Respondent had knowledge of Complainant’s HAMPTON BAY mark when Respondent registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Homer TLC, Inc. of Atlanta, GA, USA is the owner of the domestic registration for the mark HAMPTON BAY. Complainant has continuously used this mark at least as early as 2000 in connection with lighting fixtures, ceiling fans and home décor items.
Respondent is Gary Dean / GLD Media Solutions, of Waltham, MA, USA. Respondent’s registrar’s address is listed as Bellevue, WA, USA. Respondent registered the <hamptonbay.us> domain name on or about November 1, 2011.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as aplicable in rendering its decision.
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(f), 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 contends that it owns the well-known HAMPTON BAY trademark in connection with lighting fixtures, ceiling fans, and home décor since as early as 1989. Complainant explains that through Complainant’s licensee, Home Depot USA, Inc., Complainant has worldwide sales amounts under the HAMPTON BAY mark in excess of one billion US dollars each year. Complainant thus states that it has rights in the HAMPTONG BAY mark by owning registrations for the HAMPTON BAY mark with the USPTO (E.g., Reg. No. 2,309,163 registered January 18, 2000). Panels have continuously found that showing evidence of ownership of a registration with the USPTO for a given mark indicates rights in that mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Additionally, the Panel notes that it is irrelevant whether Complainant registered the domain name in the location of Respondent. See 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 Panel here finds that Complainant has rights in the HAMPTON BAY mark in accordance with Policy ¶ 4(a)(i).
Complainant further argues that Respondent’s <hamptonbay.us> domain name is identical to Complainant’s HAMPTON BAY mark. Complainant states that Respondent’s disputed domain name contains Complainant’s HAMPTON BAY mark in its entirety with the addition of the ccTLD “.us.” The Panel notes that Respondent removes the space in Complainant’s HAMPTON BAY mark. Panels have frequently found that a disputed domain name is identical to a registered mark where the domain displays a complainant’s mark in its entirety, eliminates the space in the mark and adds a ccTLD. See Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark). The Panel here finds that Respondent’s <hamptonbay.us> domain name is identical to Complainant’s HAMPTON BAY mark.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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). The Complainant has met this burden.
The Panel notes that there is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <hamptonbay.us> domain name. The Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant asserts that Respondent has no rights or legitimate interests in the <hamptonbay.us> domain name. Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). Complainant contends that Respondent is not associated at all with Complainant and that Respondent has never requested or received authorization, permission or license from Complainant in any way. Complainant furthers its point by noting that the WHOIS information for Respondent’s disputed domain name lists “Gary Dean” as registrant. Panels have frequently found that a respondent is not commonly known by a domain name when there is no evidence on the record indicating that it is known by the domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel here finds that Respondent is not commonly known by, and has not established rights or legitimate interests in, the <hamptonbay.us> domain name pursuant to Policy ¶ 4(c)(iii).
Complainant also contends that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Complainant states that Respondent redirects Internet users interested in Complainant’s goods and services to a purported informational site containing various sponsored advertisements. Complainant contends that Respondent additionally offers information about Complainant’s lighting fixtures, ceiling fans and other related goods. Complainant further states that the links featured on Respondent’s resolving website compete with Complainant’s business, and respondent thereby collects revenue when Internet users visit the resolving website. Panels have previously found that using a disputed domain name to compete with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a 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)). The Panel here finds that Respondent is making neither a Policy ¶ 4(c)(ii) bona fide offering of goods or services nor a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use of the disputed domain name.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant asserts that Respondent registered or is using the <hamptonbay.us> domain name in bad faith. Complainant claims that Respondent uses the disputed domain name to direct Internet users to a website displaying links and advertisements that redirect Internet users to third-party websites that compete with Complainant. The Panel notes that Respondent’s resolving website displays the heading “Hampton Bay USA” followed by the links; “Top 5 Hampton Bay Outdoor Lighting Collections,” “Hampton Bay Kitchen Cabinets Review with Helpful Preferences,” “Hampton Bay pergola Hunts: Smart Tips to Find the Best Shade,” “Hampton Bay Fans Lighting: How to Find the Perfect Deals,” and “How to get Hampton Bay Fans part.” Panels have previously found bad faith use or registration where a respondent uses a domain name to resolve to a website displaying links that refer to and compete with a complainant. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel here finds that Respondent registered or is using the <hamptonbay.us> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant additionally contends that respondent uses the identical <hamptonbay.us> domain name to resolve to a website with the heading “Hampton Bay” and uses Complainant’s logo. Complainant states that Respondent is attempting to attract Internet users to Respondent’s website by taking advantage of the confusion caused by displaying Complainant’s mark and services on the resolving website. Panels have continuously found bad faith when a respondent uses a domain name to resolve to a website displaying links that confuse Internet users as to complainant’s relationship with the disputed domain name. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). The Panel here finds that Respondent registered or is using the <hamptonbay.us> domain name in bad faith under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <hamptonbay.us> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 2, 2014
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