Homer TLC, Inc. v. Muzainah Musa
Claim Number: FA1409001580164
Complainant is Homer TLC, Inc. (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA. Respondent is Muzainah Musa (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hamptonbaylightingandfans.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 17, 2014; the National Arbitration Forum received payment on September 17, 2014.
On September 18, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <hamptonbaylightingandfans.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 September 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 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@hamptonbaylightingandfans.com. Also on September 22, 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 October 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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. Complainant uses the HAMPTON BAY mark to promote the sale of ceiling fans and light fixtures. The mark has been registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,309,163, registered Jan. 18. 2000). Complainant believes the <hamptonbaylightingandfans.com> domain name is confusingly similar to the HAMPTON BAY mark because the domain name merely combines the mark with a phrase (“lighting and fans”) that describes the exact goods Complainant sells under that mark.
2. Respondent has no rights or legitimate interests in this <hamptonbaylightingandfans.com> domain name. Complainant has not authorized Respondent to use the HAMPTON BAY mark in any context. Further, Respondent does not appear to be commonly known as the <hamptonbaylightingandfans.com> domain name.
3. Respondent’s use of the domain name does not constitute a bona fide or legitimately noncommercial use. Respondent’s resolving website provides “information” about HAMPTON BAY products and also provides commercial hyperlinks and other links that send Internet users to Amazon.com vendors and other third parties that sell both related and competing products.
4. Respondent has registered and used the <hamptonbaylightingandfans.com> domain name in bad faith. Respondent’s use of the disputed domain name serves to disrupt Complainant’s own operation. Further, Respondent’s bad faith is traceable to its registration and use of a domain name with actual knowledge of Complainant’s rights, and with complete disregard of Complainant’s interest in the trademark.
5. The <hamptonbaylightingandfans.com> domain name was registered by Respondent on April 3, 2014.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the HAMPTON BAY mark. Respondent’s domain name is confusingly similar to Complainant’s HAMPTON BAY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <hamptonbaylightingandfans.com> domain name, and that Respondent registered and uses the domain name 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.”).
Complainant uses the HAMPTON BAY mark to promote the sale of ceiling fans and light fixtures. The mark has been registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,309,163, registered Jan. 18, 2000). This trademark registration constitutes evidence of Policy ¶ 4(a)(i) rights in the HAMPTON BAY mark. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant believes the <hamptonbaylightingandfans.com> domain name is confusingly similar to the HAMPTON BAY mark because the domain name merely combines the mark with a phrase (“lighting and fans”) that describes the exact product Complainant sells under that mark. The alterations to the mark of removing the spacing and adding the gTLD are not relevant. See HomeVestors of Am., Inc. v. Sean Terry, FA 1523266 (Nat. Arb. Forum Nov. 11, 2013) (“[T]he Panel notes that panels have previously held that a domain name’s elimination of spaces found in the complainant’s mark and addition of a gTLD such as “.com” do not sufficiently differentiate the domain name from the complainant’s mark for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i).”). Furthermore, the descriptive phrase “lighting and fans” enhances confusing similarity because it suggests the specific types of goods sold under the mark. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). Thus, the Panel concludes that Policy ¶ 4(a)(i) confusing similarity exists here.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant first argues that it has not authorized Respondent to use the HAMPTON BAY mark in any context. Further, nothing in the record indicates that Respondent is commonly known by the <hamptonbaylightingandfans.com> domain name. “Muzainah Musa” is listed as registrant of record in the WHOIS information of this domain name. Thus, the Panel concludes that Respondent is not commonly known as this <hamptonbaylightingandfans.com> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding 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).
Complainant argues there is no evidence that Respondent’s use of the domain name amounts to a bona fide or legitimate noncommercial use. Respondent’s resolving website provides “information” about HAMPTON BAY products and in addition includes commercial hyperlinks and other links that send Internet users to Amazon.com vendors and other third parties that sell both related and competing products. The Panel agrees that Respondent’s use of the <hamptonbaylightingandfans.com> domain name is not protectable as a bona fide offering or legitimate noncommercial or fair use under these facts. See, e.g., Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
First, Complainant argues that Respondent has engaged in Policy ¶ 4(b)(iii) bad faith. In support, Complainant claims that all Respondent does on the website is provide “information” about HAMPTON BAY products as a means to promote commercial hyperlinks that send Internet users to Amazon.com vendors and other third parties that sell both related and competing products. The Panel finds such use disruptive of Complainant’s business within the meaning of Policy ¶ 4(b)(iii). bad faith.
Complainant next argues that when Respondent registered the domain name it had actual knowledge of Complainant’s rights in the HAMPTON BAY mark. Because the resolving website makes specific reference to Complainant’s products as well as the HAMPTON BAY mark the Panel concludes that Respondent had actual knowledge of the Complainant’s rights in the mark and therefore engaged in bad faith as provided for in Policy ¶ 4(a)(iii). 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.”).
The Panel finds 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 <hamptonbaylightingandfans.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 29, 2014
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