Homer TLC, Inc. v. Kashif shahzad
Claim Number: FA1405001558709
Complainant is Homer TLC, Inc. (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA. Respondent is Kashif shahzad (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hamptonbaylightingcompany.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin 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 12, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <hamptonbaylightingcompany.com> 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 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 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@hamptonbaylightingcompany.com. Also on May 14, 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 June 5, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <hamptonbaylightingcompany.com> domain name is confusingly similar to Complainant’s HAMPTON BAY mark.
2. Respondent does not have any rights or legitimate interests in the <hamptonbaylightingcompany.com> domain name.
3. Respondent registered and uses the <hamptonbaylightingcompany.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Respondent registered the <hamptonbaylightingcompany.com> domain name on December 21, 2013, and uses it to divert Internet users to Respondent’s resolving website featuring sponsored ads, or third-party websites that compete with Complainant.
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 Panel finds that Complainant has rights in the HAMPTON BAY mark in accordance with Policy ¶ 4(a)(i) through its registrations for the mark with the USPTO. 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). 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).
Respondent’s <hamptonbaylightingcompany.com> domain name includes Complainant’s entire HAMPTON BAY mark, and adds the generic terms “lighting” and “company,” the gTLD “.com.” Respondent removes the space in Complainant’s mark. Previous panels have conclusively found that these variations indicate that a disputed domain name is confusingly similar to a registered mark, instead of identical, as Complainant argues. In Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) the panel found that the <westfieldshopping.com> domain name was confusingly similar because the WESTFIELD mark was the dominant element and respondent added the generic term “shopping.” Additionally, in Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) the panel concluded that the elimination of spaces between terms and the addition of a gTLD does not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). The Panel finds that Respondent’s <hamptonbaylightingcompany.com> domain name is confusingly similar to Complainnat’s HAMPTON BAY mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 alleges that Respondent has no rights or legitimate interests in the <hamptonbaylightingcompany.com> domain name. Complainant asserts that there is no evidence in the WHOIS information to suggest that Respondent is known by the disputed domain name. Previous panels have found that a respondent is not commonly known by a disputed domain name where there is no evidence in the WHOIS information indicating that respondent is commonly known by the disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Thus, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial of fair use of the disputed domain name. Complainant asserts that Respondent uses the disputed domain name to direct Internet users to a website containing various sponsored advertisements and links, including some that compete with Complainant by offering goods and services similar to Complainant’s. Complainant asserts that Respondent presumably receives compensation from the featured links on the resolving website. The Panel notes Complainant’s Exhibit D showing a screen shot of Respondent’s website displaying advertisements including, “Lighting by Gregory,” “Home and Bath Lighting,” “Remote Tech Support 24/7,” “Modern Pendant Lamp Sale,” and “Outdoor Lighting Sale.” 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 finds that Respondent’s use of the disputed domain name to offer advertisements and information about Complainant’s products is neither a bona fide offering of goods or services nor a Policy legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the disputed domain name to divert Internet users to third-party websites that compete with Complainant by offering similar products. Panels have routinely found bad faith use and registration where a respondent uses a disputed domain name to resolve to a website that competes with a complainant and thereby disrupts complainant’s business. 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).”); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business). Thus, the Panel finds that Respondent registered and is using the <hamptonbaylightingcompany.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Respondent is attracting Internet users to Respondent’s website by using Complainant’s mark to resolve to a website with competing links, no doubt for commercial gain. Prior panels have 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 finds that Respondent registered and is using the <hamptonbaylightingcompany.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent had constructive knowledge of Complainant’s HAMPTON BAY mark due to Complainant’s registration with the USPTO and Complainant’s long-held rights in the mark. The Panel finds that Respondent had actual notice of Complainant's mark, based on it competing use of the disputed domain name, and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hamptonbaylightingcompany.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 7, 2014
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