Homer TLC, Inc. v. m talksmart / Powerseo
Claim Number: FA1405001559189
Complainant is Homer TLC, Inc. (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA. Respondent is m talksmart / Powerseo (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hamptonbaylightingfans.com>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 13, 2014; the National Arbitration Forum received payment on May 13, 2014.
On May 14, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <hamptonbaylightingfans.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@hamptonbaylightingfans.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 The Honourable Neil Anthony Brown QC 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
Complaint made the following contentions.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of lighting fixtures, ceiling fans, air conditioners and related goods and services.
2. Complainant owns the HAMPTON BAY trademark through its registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,309,163 registered January 18, 2000). Complainant uses the mark in connection with ceiling fans and electric lighting fixtures.
3. The disputed domain name was registered on October 22, 2013.
4. Respondent uses the disputed domain name to direct Internet users to an information site containing numerous sponsored advertisements, which connect users to third party websites, some of which include competitors of 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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant owns the HAMPTON BAY mark through its registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,309,163 registered January 18, 2000). Complainant uses the mark in connection with ceiling fans and electric lighting fixtures. Complainant urges that its USPTO registration establishes rights in the mark for Policy ¶ 4(a)(i) purposes. Previous panels agree. Notably, in W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010), the panel found “USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.” Accordingly, the Panel finds that Complainant’s USPTO registrations sufficiently demonstrate rights in the HAMPTON BAY mark pursuant to Policy ¶ 4(a)(i) even though Respondent purports to reside in Pakistan.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s HAMPTON BAY trademark. Complainant argues that the <hamptonbaylightingfans.com> domain name is confusingly similar to Complainant’s HAMPTON BAY mark. Complainant urges that the additional terms “lighting” and “fans” are not distinguishing because the terms have an apparent relationship to Complainant’s business. The Panel recalls that Complainant uses the HAMPTON BAY mark in connection with ceiling fans and electric lighting fixtures. Further, Complainant urges that the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to the Policy ¶ 4(a)(i) analysis. The Panel also notes that the disputed domain name eliminates the spacing in Complainant’s mark. Under similar circumstances, previous panels have found that such minor alterations do not sufficiently distinguish the domain name from incorporated mark. See Exxon
Mobil Corporation v. mga enterprises limited, FA0907001273445 (Nat. Arb. Forum August 26, 2009) (finding that the addition of the terms “travel” and “club,” which have an obvious relationship to Complainant’s [Exxon’s] business, to Complainant’s mark in the disputed domain name <exxontravelclub.com> create a confusing similarity between the disputed domain name and the registered mark); see also 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).”). Accordingly, the Panel agrees that the <hamptonbaylightingfans.com> domain name is confusingly similar to Complainant’s HAMPTON BAY mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s HAMPTON BAY trademark and to use it in its domain name, adding only the words “lighting fans” which describe one of Complainant’s range of products;
(b) Respondent has then used the disputed domain name to direct Internet users to an information site containing numerous sponsored advertisements, which connect users to third party websites, some of which include competitors of Complainant;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) In support of its position that Respondent lacks rights and legitimate interests in the disputed domain name, Complainant asserts that Respondent has never been commonly known by the disputed domain name. Further Complainant contends that Respondent has no relationship with Complainant. The Panel notes that the WHOIS record provides that “m talksmart / Powerseo” is the registrant of record. Further, the Panel recalls that a response was not submitted in this matter, and therefore Complainant’s contentions have not been affirmatively refuted. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) the panel found 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. Considering the WHOIS information and any other available evidence before the Panel, the Panel agrees that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(e) Complainant also argues that Respondent’s use of the <hamptonbaylightingfans.com> domain name does not demonstrate rights or legitimate interests in the disputed domain name. Complainant urges that Respondent uses the disputed domain name to direct Internet users to an informational site containing numerous sponsored advertisements and links, which connect users to third party websites, some of which include competitors of Complainant. See Complainant’s Exhibits D-F. The Panel notes that the subject landing page includes links including “Get Replacement Parts,” “Remote Tech Support 24/7,” and “Lighting Overstock.com.” Id. Complainant presumes Respondent profits from the links and advertisements. Previous panels have found that such use does not constitute a bona fide offering of goods or services, or a legitimate and non-commercial use. See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA95407 (Nat. Arb. Forum Sept. 27, 2000) (“[U]nauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”). Accordingly, the Panel finds that Respondent’s use of the <hamptonbaylightingfans.com> domain name in connection with an information site promoting Complainant’s products as well as links to unrelated and competing providers does not constitute 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).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent is using the <hamptonbaylightingfans.com> domain name in connection with a website that promotes links and advertisements that direct users to third party websites, some of which compete with Complainant. Complainant claims such use disrupts Complainant’s own business and therefore is evidence of Respondent’s bad faith registration and use. The Panel recalls that Complainant supports its argument by providing screenshots of the disputed webpage, available for review in Complainant’s Exhibits D-F. Notably, the Panel observes that the landing page includes links including “Get Replacement Parts,” “Remote Tech Support 24/7,” and “Lighting Overstock.com.” Previous panels have found evidence of bad faith where the respondent used the disputed domain name to promote links to competitors of the complainant. See Homer TLC, Inc. v. Unitedeurope Consulting, FA 1110103 (Nat. Arb. Forum Feb. 8, 2008) (“Respondent’s use of the disputed domain name to advertise links to third-party competitors is evidence of registration and use in bad faith under Policy ¶ 4(b)(iii)”). Accordingly, the Panel finds evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Secondly, Complainant argues the content on the <hamptonbaylightingfans.com> domain name’s website creates a likelihood of confusion. In Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006), the panel found that using a domain name to promote goods similar to those of the complainant created a likelihood that Internet users may confuse the complainant as a source or sponsor of the content viewable on the domain name’s website. Here the Panel concludes that Respondent’s use of the domain name to promote a website that held hyperlinks to other businesses illustrates an attempt to profit off a Policy ¶ 4(b)(iv) likelihood of confusion.
Thirdly, Complainant also argues that Respondent had at least constructive knowledge of Complainant’s rights in the HAMPTON BAY mark at the time of registration. While prior panels have held that constructive knowledge is insufficient to support a finding of bad faith, panels have found evidence of bad faith where actual knowledge can be inferred from the circumstances. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). At present, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the HAMPTON BAY mark given the specific content relating to Complainant on the resolving page (see Complainant’s Exhibits D-F), and therefore find evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the HAMPTON BAY mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hamptonbaylightingfans.com> domain name be TRANSFERRED from Respondent to Complaint.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 6, 2014
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