Homer TLC, Inc. v. TIMOTHY LARSEN / TJL SOLUTIONS, INC.
Claim Number: FA1511001647922
Complainant is Homer TLC, Inc. (“Complainant”), represented by Justin S. Haddock of King & Spalding LLP, Texas, USA. Respondent is TIMOTHY LARSEN / TJL SOLUTIONS, INC. (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hamptonbayceilingfans8.com>, registered with eNom, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 19, 2015; the Forum received payment on November 19, 2015.
On November 19, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <hamptonbayceilingfans8.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 November 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 2015 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@hamptonbayceilingfans8.com. Also on November 23, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 22, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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’s Contentions
1. Complainant owns a trademark registration with the United States Patent and Trademark Office for the HAMPTON BAY trademark (e.g., Reg. No. 2,309, 163, registered Jan. 18, 2000). The mark is used in connection with the sale of ceiling fans, air conditioners, and electrical lighting fixtures. The <hamptonbayceilingfans8.com> domain name is confusingly similar to the HAMPTON BAY trademark because the domain name contains the entire mark and differs only by the addition of the descriptive phrase “ceiling fans.” the number “8,” and the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain name, nor is Respondent a licensee of Complainant. Further, the domain name is being used to both display a competing advertisement, as well as addition competing hyperlinks.
3. Respondent has engaged in bad faith registration and use. Respondent is disrupting Complainant’s business by using the domain name to display a competing advertisement in addition to competing hyperlinks. Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s trademark rights.
B. Respondent’s Contentions
1. Respondent failed to submit a response in this proceeding.
1. Respondent’s <hamptonbayceilingfans8.com> domain name is confusingly similar to Complainant’s HAMPTON BAY mark.
2. Respondent does not have any rights or legitimate interests in the <hamptonbayceilingfans8.com> domain name.
3. Respondent registered or used the <hamptonbayceilingfans8.com> 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 owns a trademark registration with the United States Patent and Trademark Office for the HAMPTON BAY trademark (e.g., Reg. No. 2,309, 163, registered Jan. 18, 2000). The mark is used in connection with the sale of ceiling fans, air conditioners, and electrical lighting fixtures. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark under the Policy. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <hamptonbayceilingfans8.com> domain name is confusingly similar to the HAMPTON BAY trademark. Complainant notes that the domain name contains the entire mark and differs only by the addition of the descriptive phrase “ceiling fans” (descriptive because the mark is used to sell ceiling fans), the number “8,” and the generic top-level domain (“gTLD”) “.com.” As a general rule, the gTLD “.com” is incapable of distinguishing a domain name from the trademark at issue. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Also, past panels have found that the addition of descriptive phrases and/or numbers fails to provide distinguishing relief for the respondent. See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Therefore, the Panel finds that the <hamptonbayceilingfans8.com> domain name is confusingly similar to the HAMPTON BAY trademark under Policy ¶ 4(a)(i).
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.”).
Complainant asserts that Respondent is not commonly known as the <hamptonbayceilingfans8.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the HAMPTON BAY mark in domain names. The Panel notes that “TIMOTHY LARSEN” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under 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 that Respondent’s use of the <hamptonbayceilingfans8.com> domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant contends that the domain name resolves to a webpage that displays an article praising one of Complainant’s competitors. Further, Complainant claims that the domain name also contains hyperlinks that resolve to the websites of other competing parties. The Panel notes Complainant’s Exhibit D, which displays a screenshot of the webpage that resolves from the disputed domain name. The Panel also notes Complainant’s Exhibit E, which displays screenshots of the webpages resolving from the purported competing hyperlinks. Prior panels have declined to award a respondent rights under Policy ¶¶ 4(c)(i) or (iii) where the domain name resolved to a webpage that displayed either advertisements for a competitor or competing hyperlinks. See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did 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)); see also United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). The Panel finds that Respondent is either displaying a competing advertisement or competing hyperlinks or both, and they too decline to grant Respondent rights under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting its business. Complainant argues that its business is disrupted because the webpage resolving from the disputed domain name features both a competing advertisement, as well as competing hyperlinks. The Panel again notes Complainant’s Exhibit D, which displays a screenshot of the webpage that resolves from the disputed domain name, as well as Complainant’s Exhibit E, which displays screenshots of the webpages resolving from the purported competing hyperlinks. Prior panels have found bad faith under Policy ¶ 4(b)(iii) where the resolving webpage contained competing hyperlinks or some other form of competition with the complainant. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Tribeca Film Ctr., Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001) (rejecting the Mission KwaSizabantu approach and holding that “a respondent can ‘disrupt the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner”). Thus, the Panel finds bad faith under Policy ¶ 4(b)(iii).
Complainant also contends that in light of the fame and notoriety of its HAMPTON BAY trademark, it is inconceivable that Respondent could have registered the disputed domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hamptonbayceilingfans8.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 4, 2016
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