Homer TLC, Inc. v. shahrul naim
Claim Number: FA1410001583870
Complainant is Homer TLC, Inc. (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA. Respondent is shahrul naim (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thehamptonbaypatiofurniture.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 8, 2014; the National Arbitration Forum received payment on October 8, 2014.
On October 8, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <thehamptonbaypatiofurniture.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 October 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 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@thehamptonbaypatiofurniture.com. Also on October 9, 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 November 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Homer TLC, Inc. is the owner of the distinctive and well-known HAMPTON BAY trademark. Homer TLC, Inc., through its predecessor in interest and licensee (collectively “Complainant” or “Home Depot”), commenced use of the mark HAMPTON BAY (hereinafter the "HAMPTON BAY Mark") in connection with lighting fixtures, ceiling fans, and air conditioners at least as early as 1986. Since that time, Complainant has continually used the HAMPTON BAY Mark in commerce in the United States and abroad.
Through its licensee, Home Depot USA, Inc., the operator of THE HOME DEPOT stores, Complainant has worldwide sales under the HAMPTON BAY Mark in excess of One Billion US Dollars each year. Complainant offers goods, including patio and outdoor furniture, under the HAMPTON BAY Mark in each of its over 2100 retail stores in the United States, Canada and Mexico. In 2004, Complainant sold in excess of 38 million fans under the HAMPTON BAY Mark, making this the second largest selling brand of ceiling fans in North America.
Over the years, Complainant has prominently used and promoted the HAMPTON BAY Mark in advertising, sales, and various other ways. Complainant’s sales and advertising expenses under the HAMPTON BAY Mark have been extensive and in the tens of millions of US Dollars each year. As a result, the HAMPTON BAY Mark serves to identify and indicate the source of Complainant’s goods to the consuming public, and to distinguish its goods from those of others. As a result of Complainant’s long usage and promotion of the HAMPTON BAY Mark, it has become well-known to and widely recognized by consumers.
In addition to its common law rights, Complainant owns ten United States federal registrations for trademarks incorporating “HAMPTON BAY” and also owns numerous registrations and pending applications for HAMPTON BAY trademarks worldwide.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
[a.] The thehamptonbaypatiofurniture.com domain name is identical to the HAMPTON BAY Mark in which Home Depot has trademark rights worldwide.
[i] Home Depot has rights in its trademarks.
The HAMPTON BAY Mark has been used in commerce in connection with, among other things, ceiling fans and lighting fixtures since at least as early as 1986. In addition, Home Depot has registered and uses the domain name hamptonbay.com in connection with the advertising of its goods, including its patio furniture, on the Internet. Home Depot first registered the hamptonbay.com domain name in 1992 and has continuously maintained the registration for hamptonbay.com since that time.
The HAMPTON BAY Mark has become a highly valuable asset of Home Depot, representing substantial goodwill. The value of this asset has been cultivated as a result of Home Depot’s continuous and exclusive use of the mark for many years, and because of Home Depot’s efforts to promote the mark through the expenditure of substantial sums and careful control of the public perception of both the nature and quality of the goods and services provided in connection with the mark.
It is well established under the Policy that Home Depot’s registration of a mark with federal authority establishes a prima facie case of Home Depot’s rights. See, e.g., Delta Corporate Identity, Inc. and Delta Air Lines, Inc. v. dltaairlines.com and deltaaairlines.com c/o Hanna El Hinn, FA548217 (NAF Oct. 12, 2005), citing Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.”), and Innomed Techs., Inc. v. DRP Servs., FA221171 (NAF Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes complainant's rights in the mark”).
[ii] The thehamptonbaypatiofurniture.com domain name is identical to the HAMPTON BAY Mark.
Home Depot has used its HAMPTON BAY Mark in commerce since at least 1986. As noted above, such long-standing and continuous use gives Home Depot exclusive rights in the HAMPTON BAY Mark. ICANN panels have found that, where, as in this case, a domain name incorporates a distinctive mark in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar. See Lowen Corp. v. Henry Chan, D2004-4030 (WIPO August 5, 2004) (finding that the domain name lowensigns.com is confusingly similar to LOWEN).
Furthermore, the addition of the common or generic terms “the” and “patio furniture” to Home Depot’s HAMPTON BAY trademark does not negate the confusing similarity between thehamptonbaypatiofurniture.com and the HAMPTON BAY Mark under Policy ¶4(1)(i). See Exxon Mobil Corporation v. mga enterprises limited, FA0907001273445 (NAF Aug. 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); Homer TLC, Inc. v. Whois Guard, FA619597 (NAF Feb. 14, 2006) (finding that the addition of common words to Complainant’s registered mark did not negate the confusing similarity). Moreover, the addition of a generic top-level domain, such as “.com,” is irrelevant in determining similarity of Respondent’s thehamptonbaypatiofurniture.com domain to Home Depot’s HAMPTON BAY Mark. See, e.g., Delta Corporate Identity, Inc. and Delta Air Lines, Inc, citing Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[t]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”); See also, Thomas B. Hudson v. Ted Machi & Associates, FA133759 (NAF Jan. 21, 2003).
In this case, the thehamptonbaypatiofurniture.com domain name is identical to and incorporates in its entirety the HAMPTON BAY Mark. The domain name differs from the HAMPTON BAY Mark only by the addition of the generic terms “the” and “patio furniture” and the top-level domain, “.com.” These minor differences are insufficient to distinguish the thehamptonbaypatiofurniture.com domain name from the HAMPTON BAY Mark.
[b.] Respondent Has No Rights or Legitimate Interests in the Domain Name.
Because Home Depot has made a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests in the Domain Name. See, e.g., Tejon Ranchcorp and Tejon Ranch Co. v. J & L Enterprises, FA524749 (NAF September 20, 2005), citing Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (where complainant has asserted that respondent has no rights or legitimate interests with respect to domain name, respondent must come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent.”), and G.D. Searle v. Martin Mktg., FA118277 (NAF Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent”).
Moreover, Respondent must show it has rights or legitimate interest in respect of the domain name at issue by “concrete evidence.” See Kate Spade, LLC v. Darmstadter Designs, No. D2001-1384 (WIPO Jan. 3, 2002) citing UDRP Policy 4(c). “Concrete evidence” requires more than personal assertions; it requires documents or third party declarations in support of such assertions. Id. A failure to produce such concrete evidence entitles a panel to conclude that the respondent has no such rights or legitimate interest. Id.
From the evidence discussed below, it is clear that Respondent has no rights or legitimate interest in the thehamptonbaypatiofurniture.com domain name.
[i] Respondent has no relationship with Home Depot.
Respondent has no relationship, affiliation, connection, endorsement or association with Home Depot. Respondent has never requested or received any authorization, permission or license from Home Depot to use the HAMPTON BAY Mark in any way.
[ii] Respondent has never been commonly known by the domain name thehamptonbaypatiofurniture.com or by the HAMPTON BAY Mark and has never acquired any trademark rights in the same.
There is no evidence in the WHOIS information to suggest that Respondent is known by the thehamptonbaypatiofurniture.com domain name. Indeed, given Home Depot’s long-time and extensive world-wide rights in the HAMPTON BAY Mark in connection with lighting fixtures, ceiling fans, patio and outdoor furniture, and air conditioners, Respondent could not have rights in the HAMPTON BAY Mark unless Home Depot granted them. However, that has not occurred.
[iii] Respondent has not used the domain name in good faith and in connection with a bona fide offering of goods or services.
Respondent’s use for commercial gain of a domain name that is identical to the HAMPTON BAY Mark to direct Internet users interested in Home Depot’s goods and services to a purported informational site containing numerous sponsored advertisements is not a legitimate noncommercial or fair use of the domain name. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA96577 (NAF Feb. 27, 2001) (respondent's commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA95407 (NAF 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.”) Here, the thehamptonbaypatiofurniture.com domain name directs Internet users to Respondent’s website, which Respondent uses to offer information about HAMPTON BAY patio furniture and other related goods, as well as numerous sponsored advertisements.
When an Internet searcher reaches the thehamptonbaypatiofurniture.com website and clicks on the links and/or sponsored ads, he or she is connected immediately to the web site of one of Home Depot’s competitors or otherwise directed to third party web sites offering goods and services that directly compete with Home Depot. Upon information and belief, Respondent receives compensation each time a searcher clicks on one of these links, which constitutes use of the domain for commercial gain. In fact, Respondent’s website at the subject domain name includes a web page titled “Earnings Disclaimer,” which expressly states that “[t]he owner is “likely to receive monetary compensation when you make a purchase for a product or service after clicking the affiliate link displayed.”
Respondent’s use of the thehamptonbaypatiofurniture.com domain name is also commercial because the various companies linked to the web site through these sponsored ads benefit from subsequent interest and purchases. ICANN panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See Focus Do It All Group v. Athanasios Sermbizis, D2000-0923 (WIPO October 6, 2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial). Respondent’s use cannot be characterized as fair use. See id. (finding that Respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainants until they found that instead they were in a directory which would do the Complainants potential harm”).
Respondent’s use of the domain name is not legitimate because it diverts Home Depot’s customers and potential customers to Respondent’s website and then to the web sites of Home Depot’s competitors. See id. (finding that Respondent’s domain name which linked visitors to a directory of regional competitors was not a legitimate use). See also Homer, TLC Inc. v. Kang, FA573872 (NAF Nov. 22, 2005) (“Respondent’s use of ‘a’ domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering . . . or a legitimate noncommercial or fair use . . . .”). Such use of Home Depot’s trademark is clearly confusing and deceptive to consumers. As such, Respondent’s website at thehamptonbaypatiofurniture.com is not used or maintained in good faith and in connection with a bona fide offering of goods or services.
[c.] Respondent Registered and Used the Domain Name in Bad Faith.
There are at least two pieces of evidence that show Respondent had knowledge of Home Depot’s trademark rights, yet proceeded to register and use the thehamptonbaypatiofurniture.com domain name in bad faith: (1) Respondent used Home Depot’s trademark in its domain name and on its website to divert visitors to competitors; and (2) the content of the Respondent’s website at the disputed domain name.
Respondent is using the thehamptonbaypatiofurniture.com domain name, which is identical to the HAMPTON BAY Mark, to direct Internet users to a website with links and sponsored ads that direct visitors to third party websites selling goods and services that directly compete with Home Depot. Such use is concrete evidence of bad faith registration and use. See, e.g., Homer TLC, Inc. v. Unitedeurope Consulting, FA 1110103 (NAF 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)”), and S. Exposure v. S. Exposure, Inc., FA 94864 (NAF July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Furthermore, it is clear that Respondent registered the disputed domain name with the HAMPTON BAY Mark in mind in light of the obvious link between Home Depot and the goods and services advertised on Respondent’s website, and given the fact that Respondent’s website directly references HAMPTON BAY branded products. See MIVA, Inc. v. WhoIs Privacy Inc., citing Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (because link between complainant’s mark and content advertised on respondent’s website obvious, respondent “must have known about the complainant’s mark when it registered the subject domain name”). As further evidence of Respondent’s knowledge of Complainant and its rights in and to the HAMPTON BAY Mark, Respondent’s website features copyrighted images, belonging to Complainant, of HAMPTON BAY branded patio furniture that were taken from Complainant’s website at homedepot.com. See Pandora Jewelry, LLC v. David Lee, D2010-0068 (WIPO March 1, 2010) (finding that Respondent was aware of Complainant and Complainant’s marketing of its products when Respondent displayed Complainant’s copyrighted images on website).
Any use by Respondent of the HAMPTON BAY Mark, even as a domain name, is an infringement of Home Depot’s long-held rights under trademark law. As the panelist in C-Line Products, Inc. v. Ralco Consulting c/o Robert Lebeaux pointedly noted, a potential domain name registrant
“would be well-advised to heed the oft-repeated admonition, such as that of Scott W. Pink, in his treatise, The Internet & E-Commerce Legal Handbook (2001), where at page 110, he states: ‘Once you have decided on the TLDs and ccTLDs, you will want to select the second level of the domain, the words that signify your unique address. In doing so, you should first conduct both a domain name search to make sure the particular domain is available as well as a trademark search to make sure your choice of a domain name does not potentially infringe on another person or entity’s trademark rights.” C-Line Products, Inc. v. Ralco Consulting c/o Robert Lebeaux, Claim No. FA187608 (NAF October 20, 2003) (Emphasis supplied).
Respondent knew of Home Depot’s rights in the HAMPTON BAY Mark. Respondent’s registration and infringing use of the thehamptonbaypatiofurniture.com domain name, despite having such knowledge, indicates bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 owns the well-known HAMPTON BAY trademark in connection with lighting fixtures, ceiling fans, and home décor since as early as 1986. 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 has demonstrable rights in the HAMPTON BAY mark by owning 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). Registration of a mark with a national registry (such as the USPTO) sufficiently demonstrates rights in the mark for the purposes of the UDRP. 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). Complainant need only prove some rights in its mark. Complainant need not prove it has superior rights to Respondent, or even rights in Respondent’s jurisdiction. 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) . Complainant has rights in the HAMPTON BAY mark in accordance with Policy ¶4(a)(i).
Complainant claims Respondent’s <thehamptonbaypatiofurniture.com> domain name is confusingly similar to Complainant’s HAMPTON BAY mark. Respondent includes Complainant’s HAMPTON BAY mark in its entirety with the addition of the generic terms “the” and “patio furniture.” Respondent further adds the gTLD “.com.” Respondent also removes the space in Complainant’s registered mark. Such minor variations indicate a disputed domain name is confusingly similar to a registered mark. In Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) the panel found the <westfieldshopping.com> domain name was confusingly similar because the WESTFIELD mark was the dominant element and respondent merely added the generic term “shopping.” In Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) the panel concluded 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). Respondent’s <thehamptonbaypatiofurniture.com> domain name is confusingly similar to Complainant’s HAMPTON BAY mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. Respondent does not contend otherwise. Respondent has never requested or received any authorization, permission or license from Complainant to use the HAMPTON BAY mark in any way. There is no evidence in the WHOIS information to suggest Respondent is known by the disputed domain name. The WHOIS information for Respondent’s disputed <thehamptonbaypatiofurniture.com> domain name lists “shahrul naim” as registrant. A panel may find a respondent is not commonly known by a disputed domain name where there is no evidence in the WHOIS information indicating 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). Based upon the facts of this case, Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Respondent uses the dispute domain name to resolve to a website purporting to be an informational site containing numerous sponsored advertisements. Respondent displays information connected with Complainant’s patio furniture and other related goods. Respondent’s resolving website gives extensive information that appears to be directly related to Complainant and Complainant’s products. Some of the displayed links include, “Hampton Bay Patio Furniture,” “3 Day Blinds,” “AllModern: Modern Décor,” and “Joss & Main Official Site.” Respondent likely receives compensation each time an Internet user clicks on one of the displayed links (even if only in the form of free parking). Using a confusingly similar domain name to display information aimed at resulting in commercial gain, or displaying third party links seeking the same result, does not create rights or legitimate interests in a respondent. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA96577 (Nat. Arb. Forum Feb. 27, 2001) (respondent's commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also 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.”). Respondent’s use of the disputed domain name to confuse Internet users as to the legitimacy of the information provided on the resolving website and to offer third-party links competing with Complainant’s business is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the <thehamptonbaypatiofurniture.com> domain name in bad faith. Respondent’s disputed domain name resolves to a website offering information purportedly relating to Complainant and Complainant’s products. Respondent displays links to third-party vendors that compete with Complainant. Respondent’s use of the disputed domain name competes with Complainant, and therefore disrupts Complainant’s business. See, e.g., Homer TLC, Inc. v. Unitedeurope Consulting, FA 1110103 (NAF 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)”). This constitutes bad faith registration and use under Policy ¶4(b)(iii).
Complainant claims Respondent uses the disputed domain name to attract Internet users to the resolving website and confuse them as to Complainant’s affiliation with the resolving content. Respondent uses complainant’s marks repeatedly on the resolving website, and displays what appears to be Complainant’s products. Respondent even touts Complainant’s products (so Respondent could hardly claim to be ignorant of them). Respondent presumably earns compensation from third-party links, even if only in the form of free parking. A respondent acts in bad faith when 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 in order to generate revenue. 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). Respondent registered and is using the <thehamptonbaypatiofurniture.com> domain name in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent was fully aware of Complainant and Complainant’s marks when it registered the disputed domain name. In light of Respondent’s use of the web site and its content, this is undoubtedly true. Respondent registered the disputed domain name with the intent to divert Internet users to Respondent’s website. Respondent had actual knowledge of Complainant and Respondent had actual notice of Complainant's mark. Respondent registered and uses 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 Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <thehamptonbaypatiofurniture.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, November 18, 2014
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