Homer TLC, Inc. v. Osvaldo Vera
Claim Number: FA1405001558705
Complainant is Homer TLC, Inc. ("Complainant"), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA. Respondent is Osvaldo Vera ("Respondent”), Paraguay.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hamptonbay-lighting.net>, registered with GoDaddy.com, LLC.
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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 9, 2014; the National Arbitration Forum received payment on May 9, 2014.
On May 9, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <hamptonbay-lighting.net> 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 May 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 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@hamptonbay-lighting.net. Also on May 12, 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.
A timely Response was received and determined to be complete on May 12, 2014.
On May 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
- Complainant has used the HAMPTON BAY trademark in connection with lighting fixtures, ceiling fans and air conditioners since as early as 1986. Complainant sells its goods in over 2,100 stores in North America, through its licensee, Home Depot USA. Complainant receives revenue in excess of $1 Billion annually under said mark.
- Along with other trademark registrations worldwide, Complainant owns seven such registrations with the United States Patent and Trademark Office ("USPTO”) for the HAMPTON BAY mark. Since 1992, Complainant has owned and conducted business through its domain name, <hamptonbay.com>.
- The disputed domain name, <hamptonbay-lighting.net>, is identical or confusingly similar to Complainants HAMPTON BAY mark. The addition of a hyphen and the generic term, "lighting,” do not mitigate the confusing similarity between name and mark. Moreover, the inclusion of the gTLD, .net, is irrelevant in a Policy consideration of confusing similarity.
- Respondent has no rights or legitimate interests in the disputed domain name. Respondent has received no permission or license to use the name. There is no evidence to suggest that Respondent has been commonly known by the name. Respondent is not using the name in connection with a bona fide offering of goods or services or in a legitimate noncommercial or fair use manner. The name is used by Respondent for a website that provides sponsored ad links that lead to the websites of third parties that offer goods that compete directly with Complainant’s products.
- Respondent registered and is using the disputed domain name in bad faith. Respondent was aware of Complainant’s rights in the HAMPTON BAY mark prior to registration of the disputed domain name. Moreover, Respondent’s likely receipt of fees for the employment of the name to redirect Internet users to the websites of Complainant’s competitors smacks of bad faith registration and use under the Policy.
B. Respondent
- Respondent consents to transfer the disputed domain name to Complainant, as, not being a resident of the United States of America, Respondent was unaware of his infringement of any pre-existing rights.
A well established United States company that markets lighting fixtures, ceiling fans and air conditioners, Complainant has utilized the HAMPTON BAY trademark in connection with its operations for decades. It has obtained many registrations for that mark, including with the USPTO (e.g., Reg. No. 2,309,163; registered Jan. 18, 2000).
Respondent is the owner of the disputed domain name, <hamptonbay‑lighting.net>, which was registered on March 27, 2012. The name is attached to a website that contains sponsored ad links to third party websites that offer goods competitive with Complainant’s products.
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.
Preliminary Issue- Consent to Transfer
Respondent consents to transfer the disputed domain name, <hamptonbay‑lighting.net>, to Complainant. The Panel notes that there are many prior UDRP decisions where panels facing similar circumstances have foregone a full Policy analysis to order summarily a transfer of rights in a disputed domain name. In this case, the Panel detects little rationale to deviate from this precedent. Complainant is clearly the owner of trademark rights to HAMPTON BAY, which is fully incorporated within the disputed domain name, <hamptonbay-lighting.net>; and there is no indication whatsoever that Respondent could establish any legitimate pre-registration connection with or rights in that name. Moreover, Respondent’s explicit willingness to transfer the disputed domain name comes with no conditions or caveats. Therefore, the Panel will order the transfer forthwith. See Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) ("[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
The Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hamptonbay-lighting.net> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: May 28, 2014
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