Homer TLC, Inc. v MS & Associates
Claim Number: FA1410001586711
Complainant is Homer TLC, Inc. (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA. Respondent is MS & Associates (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hamptonbayoutdoorfurniture.org>, registered with GoDaddy.com, LLC (R91-LROR).
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 24, 2014; the National Arbitration Forum received payment on October 24, 2014.
On October 24, 2014, GoDaddy.com, LLC (R91-LROR) confirmed by e-mail to the National Arbitration Forum that the <hamptonbayoutdoorfurniture.org> domain name is registered with GoDaddy.com, LLC (R91-LROR) and that Respondent is the current registrant of the name. GoDaddy.com, LLC (R91-LROR) has verified that Respondent is bound by the GoDaddy.com, LLC (R91-LROR) 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 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 17, 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@hamptonbayoutdoorfurniture.org. Also on October 27, 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 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
Complainant uses HAMPTON BAY to identify its line of patio furniture, lighting fixtures, ceiling fans, and air conditioners products. The HAMPTON BAY mark is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., USPTO Reg. No. 3,340,864, registered Nov. 20, 2007). The domain name in dispute is <hamptonbayoutdoorfurniture.org>, and it is confusingly similar to the HAMPTON BAY mark because it adds only a gTLD and a string of generic terms.
Respondent has no rights or legitimate interests in the <hamptonbayoutdoorfurniture.org> domain name. Respondent has no license or authority to use HAMPTON BAY in trade, nor has Respondent ever been known by the name <hamptonbayoutdoorfurniture.org>. Furthermore, Respondent is using the <hamptonbayoutdoorfurniture.org> domain name for commercial gain to direct Internet users to a website that describes HAMPTON BAY goods, while featuring hyperlink advertisements for competing goods and services.
Respondent registered and is using the <hamptonbayoutdoorfurniture.org> domain name in bad faith. Respondent uses the domain name’s website to send Internet users to competing businesses. Respondent’s use of the domain name disrupts Complainant’s business. Further, Respondent had actual knowledge of Complainant’s interest in the HAMPTON BAY mark, based on Respondent’s discussion of HAMPTON BAY goods on the resolving website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Homer TLC, Inc. (Home Depot) uses HAMPTON BAY to identify its line of patio furniture, lighting fixtures, ceiling fans, and air conditioners products. The HAMPTON BAY mark is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., USPTO Reg. No. 3,340,864, registered Nov. 20, 2007). The HAMPTON BAY mark is a valuable asset of Home Depot, representing substantial goodwill.
Respondent, MS & Associates, registered the <hamptonbayoutdoorfurniture.org> domain name on July 28, 2010. Respondent is using the <hamptonbayoutdoorfurniture.org> domain name for commercial gain to direct Internet users to a website that describes HAMPTON BAY goods, while featuring hyperlink advertisements for competing goods and services.
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 has rights in the HAMPTON BAY mark under Policy ¶ 4(a)(i) through registration with the USPTO. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (USPTO registration is sufficient to establish Policy ¶ 4(a)(i) rights). The <hamptonbayoutdoorfurniture.org> domain name is confusingly similar to the HAMPTON BAY mark under Policy ¶ 4(a)(i) because it adds only a gTLD and a string of generic terms.
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).
Respondent is not commonly known by the <hamptonbayoutdoorfurniture.org> domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). Complainant has not authorized or licensed Respondent to use the HAMPTON BAY mark. The WHOIS record lists “MS & Associates” as the registrant of record for this domain name.
Respondent is using the <hamptonbayoutdoorfurniture.org> domain name for commercial gain to direct Internet users to a website that describes HAMPTON BAY goods, while featuring hyperlink advertisements for competing goods and services. Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).
Respondent uses the resolving website to send Internet users to competing businesses. Respondent’s use of the <hamptonbayoutdoorfurniture.org> domain name disrupts Complainant’s business and is bad faith registration and use under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent had actual knowledge of Complainant’s rights in the HAMPTON BAY mark when Respondent registered the <hamptonbayoutdoorfurniture.org> domain name. Therefore, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hamptonbayoutdoorfurniture.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 8, 2014
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