Homer TLC, Inc. v. Jacek Woloszuk
Claim Number: FA1504001613637
Complainant is Homer TLC, Inc. (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA. Respondent is Jacek Woloszuk (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hamptonbayguide.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 9, 2015; the Forum received payment on April 9, 2015.
On April 10, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hamptonbayguide.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 April 13, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 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@hamptonbayguide.com. Also on April 13, 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 May 14, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant uses the HAMPTON BAY mark in connection with ceiling fans and lighting fixtures. Complainant has registered the HAMPTON BAY mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,309,163, Registered January 8, 2000), which establishes rights in the mark. Respondent’s <hamptonbayguide.com> domain name is confusingly similar to the HAMPTON BAY mark because the spacing between words is eliminated, the generic term “guide” is added to the mark, and the generic top-level domain (“gTLD”) “.com” is added.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <hamptonbayguide.com> domain name, nor has Complainant authorized Respondent to register the HAMPTON BAY mark in connection with any domain name registrations. Further, Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a page which purports to offer information about HAMPTON BAY light fixtures and ceiling fans, and contains numerous sponsored advertisements. Upon clicking the links and ads, Internet users are redirected to competitors of Complainant, presumably netting Respondent click-through fees.
Respondent has demonstrated bad faith disruption under Policy ¶ 4(b)(iii) through its competitive use of the disputed domain name. Next, Respondent has attracted, for commercial gain, Internet users via its hyperlinks and advertisements which are designed to confuse Internet users as to the source, sponsorship or affiliation with Complainant. Finally, Respondent had actual and/or constructive knowledge of the HAMPTON BAY mark and Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, correspondence from Respondent to the dispute resolution provider states: “In good faith, I would like to comply with your request to transfer the <hamptonbayguide.com> domain name to Home Depot.”
Complainant has trademark rights in the HAMPTON BAY mark.
Respondent registered the at-issue domain name after Complainant acquired rights in HAMPTON BAY.
Respondent consents to having the at-issue domain name transferred to Complainant.
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.”).
Consent to Transfer
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶4(a)ii or 4(a)iii when a respondent consents to such relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
Here, since there is a clear indication that Respondent agrees to transfer the at-issue domain name to Complainant, the Panel follows its rational set out in Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Shirlee Cornejo / Universal Export Import Ltd. FA1471116 (Nat. Arb. Forum January 2, 2013), American Petroleum Institute v. Lynn Matthews, FA1507800 (Nat. Arb. Forum, July 30, 2013), Microsoft Corporation v. Simon Ward / Game Codes Ltd., FA1534229 (Nat. Arb. Forum, January 16, 2014), Capital One Financial Corp. v Matthew Krei FA1569979 (Nat. Arb. Forum, July 30, 2014), as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name to the complainant.
As more fully discussed in the cases cited above, as a necessary prerequisite to Complainant obtaining the requested relief, even where Respondent consents to such relief, Complainant must nevertheless demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. In the instant case, Complainant establishes its rights in the HAMPTON BAY mark through its USPTO trademark registration of such mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Furthermore, Respondent’s <hamptonbayguide.com> domain name is fashioned by adding the generic term “guide” to Complainant’s HAMPTON BAY trademark less its space and then appending the generic top-level domain “.com” to the resulting string. These changes are insufficient to materially distinguish the domain name from Complainant’s HAMPTON BAY trademark under the Policy. Therefore, the Panel finds that Respondent’s <hamptonbayguide.com> domain name is confusingly similar to Complainant’s HAMPTON BAY trademark. See Google Inc. v. serap ozk, FA 1562193 (Nat. Arb. Forum July 14, 2014) (finding that adding terms, removing the space in the GOOGLE GLASS mark and adding a gTLD does not add any distinction to a disputed domain name to avoid confusing similarity); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end).
In light of the foregoing, Respondent’s consent-to-transfer the at-issue domain name to Complainant compels the Panel to order that the <hamptonbayguide.com> domain name be transferred as requested. The Panel finds no reason to provide further analysis under Paragraph 4(a)(ii) and/or 4(a)(iii) in its decision.
Having determined that Respondent’s domain name is confusingly similar to a mark in which Complainant has trademark rights under the ICANN Policy ¶4(a)(i), and having established that Respondent has consented to the relief Complainant requests, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hamptonbayguide.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 17, 2015
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