Homer TLC, Inc. v. Damar / Damar Marketing
Claim Number: FA1410001586603
Complainant is Homer TLC, Inc. (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA. Respondent is Damar / Damar Marketing (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hamptonbay-lighting.com>, registered with DYNADOT 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.
Hon. Karl V. Fink (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 Oct 26, 2014, DYNADOT LLC confirmed by e-mail to the National Arbitration Forum that the <hamptonbay-lighting.com> domain name is registered with DYNADOT LLC and that Respondent is the current registrant of the name. DYNADOT LLC has verified that Respondent is bound by the DYNADOT 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 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@hamptonbay-lighting.com. 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.
On October 30, 2014 and November 21, 2014, the Forum received correspondence from Respondent. However, Respondent did not submit a proper Response to the Complaint.
Having received no formal Response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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.
Complainant
Complainant owns the HAMPTON BAY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,309,163 registered January 18, 2000). Complainant has used the mark in connection with lighting fixtures, ceiling fans, and air conditioners since 1986. The <hamptonbay-lighting.com> domain name is confusingly similar to the HAMPTON BAY mark. The addition of a hyphen and the generic term “lighting” to the mark does not negate the confusing similarity between the name and the incorporated mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has never been commonly known by the <hamptonbay-lighting.com> name and shares no relationship with Complainant. Respondent uses the <hamptonbay-lighting.com> domain name to direct users to Respondent’s own website, which offers information about HAMPTON BAY lighting fixtures, ceiling fans, and related goods, as well as numerous sponsored advertisements. The promoted advertisements and links direct users to third-party websites offering goods and services that directly compete with Complainant. Respondent generates click-through revenue from these links and advertisements.
Respondent registered and used the disputed domain name in bad faith. Respondent uses the <hamptonbay-lighting.com> domain name to divert visitors to Complainant’s competitors. Respondent must have known of Complainant’s rights in the HAMPTON BAY mark at the time the disputed domain name was registered.
Respondent
Respondent did not submit a proper Response.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 used the HAMPTON BAY mark in connection with lighting fixtures, ceiling fans, and air conditioners since 1986. Complainant owns the HAMPTON BAY mark through its registration with the USPTO (e.g., Reg. No. 2,309,163 registered January 18, 2000). The Panel agrees that Complainant’s USPTO registration is sufficient to establish Policy ¶ 4(a)(i) rights in the HAMPTON BAY mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant argues the <hamptonbay-lighting.com> domain name is confusingly similar to the HAMPTON BAY mark. Complainant asserts that the addition of a hyphen and the generic term “lighting” to the mark does not negate the confusing similarity between the name and the incorporated mark. The disputed domain name eliminates the space between the two-word mark and adds the generic top-level domain (“gTLD”) “.com.” Further, the added term “lighting” is a direct reference to Complainant’s offerings under the HAMPTON BAY mark, which include light fixtures. The Panel agrees that the <hamptonbay-lighting.com> domain name is confusingly similar to the HAMPTON BAY mark pursuant to Policy ¶ 4(a)(i) as the domain name includes the mark in full less the spacing, and adds the descriptive term “lighting” alongside irrelevant elements, namely a hyphen and gTLD. See Google Inc. v. Private Person / Andrey Skorodubov, FA 1506184 (Nat. Arb. Forum Jul. 28, 2013) (finding that the disputed domain name is confusingly similar to the complainant’s mark regardless of the omission of a letter and spaces in the mark and the addition of hyphens, a descriptive term, and a gTLD).
Complainant has proven this element.
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.”).
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has never been commonly known by the <hamptonbay-lighting.com> name and shares no relationship with Complainant. The WHOIS information lists “Damar / Damar Marketing” as registrant of the domain name. In light of the available evidence, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent is not using the disputed domain name for a bona fide offering or a legitimate noncommercial or fair use. Complainant claims that Respondent uses the <hamptonbay-lighting.com> domain name to direct users to Respondent’s own website, which offers information about HAMPTON BAY lighting fixtures, ceiling fans, and related goods, as well as numerous sponsored advertisements. Complainant claims the promoted advertisements and links direct users to third-party websites offering goods and services that directly compete with Complainant, and that Respondent generates click-through revenue from these links and advertisements. Complainant provides evidence in its exhibits that the resolving page offers information related to Complainant’s HAMPTON BAY goods, as well as links to related offerings such as “Outdoor Lighting Austin,” “Home Lighting Magazine,” and “Progress Lighting.” The Panel agrees Respondent’s use does not amount to a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because the domain name resolves to promote content both related to Complainant, as well as products and providers that compete with Complainant. See Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008) (“Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant has proven this element.
Complainant argues that Respondent’s bad faith is demonstrated by Respondent’s use of the <hamptonbay-lighting.com> domain name to divert visitors to Complainant’s competitors. The disputed domain name resolves to display information relating to HAMPTON BAY lighting fixtures, ceiling fans, and related goods, as well as numerous sponsored advertisements, which direct users to third-party links such as “Outdoor Lighting Austin,” “Home Lighting Magazine,” and “Progress Lighting.” The Panel accepts that such links are competition as envisioned by Policy ¶ 4(b)(iii), and finds this is evidence that Respondent registered and used the <hamptonbay-lighting.com> domain name in bad faith.
Complainant argues that Respondent must have known of Complainant’s rights in the HAMPTON BAY mark at the time the disputed domain name was registered. Complainant notes that both the disputed domain name and resolving content rely on Complainant’s offerings under the HAMPTON BAY mark. The Panel agrees that such use demonstrates Respondent’s actual knowledge of Complainant and its trademark rights, and therefore finds evidence of Policy ¶ 4(a)(iii) bad faith. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Complainant has proven this element.
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 <hamptonbay-lighting.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 24, 2014
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