Hamptonbay.com

The timeline behind hamptonbay.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Homer TLC, Inc. v. Lorna Kang Claim Number: FA0510000573872 PARTIES Complainant is Homer TLC, Inc. (“Complainant”), represented by Carrie L. Johnson, of Fulbright & Jaworski, 2100 IDS Center, 80 S. Eighth Street, Minneapolis, MN 55402. Respondent is Lorna Kang (“Respondent”), Park Services, Telok Intan, P.O. Box 21, Perak 36009, Malaysia. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <hamptonbay.com>, registered with Moniker Online Services, Inc. PANEL 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. Judge Harold Kalina (Ret.) as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on October 7, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 11, 2005. On October 11, 2005, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <hamptonbay.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On October 12, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 1, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@hamptonbay.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On November 8, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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." 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <hamptonbay.com> domain name is identical to Complainant’s HAMPTON BAY mark. 2. Respondent does not have any rights or legitimate interests in the <hamptonbay.com> domain name. 3. Respondent registered and used the <hamptonbay.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Homer TLC, Inc., through its predecessor in interest and licensee (collectively, “Complainant”), commenced use of the HAMPTON BAY mark in connection with the commercial sales of ceiling fans, electric light fixtures and air conditioners at least as early as 1986. Complainant has continuously used the HAMPTON BAY mark in commerce in over 1900 retail stores in the United States and abroad including, Canada and Mexico, since that time. Complainant holds various trademark registrations incorporating the HAMPTON BAY mark with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 1,437,921, issued April 28, 1987). Respondent registered the <hamptonbay.com> domain name on May 2, 2002 and is using the domain name to redirect Internet users to Respondent’s directory website, which provides a list of hyperlinks leading to websites that offer ceiling fans and lighting products in competition with Complainant. Respondent is also the registered owner of 628 other domain names incorporating variations of famous marks belonging to well-known third parties including <playstaytion2.com>, <preiceline.com>, <neewsweek.com>, <verizonwhitepages.com> and <harrypottter.com>. DISCUSSION 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." 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.”). 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. Identical and/or Confusingly Similar Complainant has established rights in the HAMPTON BAY mark through registration with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”). Moreover, the <hamptonbay.com> domain name is identical to Complainant’s HAMPTON BAY mark because the domain name incorporates Complainant’s mark in its entirety and merely omits the space between the words “hampton” and “bay.” The Panel finds that such a minor omission does not distinguish the domain name from Complainant’s HAMPTON BAY mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that the respondent’s domain name <charlesjourdan.com> is identical to the complainant’s marks). Furthermore, the addition of the generic top-level domain name “.com” does not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to the complainant’s BODY BY VICTORIA mark). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant has alleged that Respondent does not have rights or legitimate interests in the <hamptonbay.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). Respondent is using the <hamptonbay.com> domain name to redirect Internet users to Respondent’s website where Respondent provides a variety of hyperlinks, some of which lead to Complainant’s competitors, that offer ceiling fans and lighting products for sale. Respondent presumably receives referral fees in exchange for hosting these third- party commercial links on its website. Thus, the Panel finds that 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 of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services). Moreover, Respondent has offered no evidence and there is no evidence in the record suggesting that Respondent is commonly known by the disputed domain name. Thus, Respondent has not established rights or legitimate interests in the <hamptonbay.com> domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith The Panel infers that Respondent receives click-through fees for diverting Internet users to various commercial websites. Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv) as Respondent is using the <hamptonbay.com> domain name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of its website. See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website). Additionally, Respondent is using the disputed domain name, which contains Complainant’s HAMPTON BAY mark, to redirect Internet users to a website featuring links to websites advertising the sale of ceiling fans, electric light fixtures and air conditioners that compete with Complainant’s business. This suggests that Respondent had actual knowledge of Complainant’s rights in the mark when it registered the domain names and chose the disputed domain name based on the goodwill Complainant has acquired in its HAMPTON BAY mark. Respondent’s registration of a domain name containing Complainant’s mark in spite of Respondent’s actual knowledge of Complainant’s rights in the mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also 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”). Moreover, Respondent has registered over 600 other domain names incorporating variations of famous marks belonging to well-known third parties, including <playstaytion2.com>, <preiceline.com>, <neewsweek.com>, <verizonwhitepages.com> and <harrypottter.com>. The Panel finds that Respondent’s history of registering domain names incorporating third-party trademarks is sufficient to establish that Respondent has a pattern of registering and using domain names in bad faith pursuant to Policy ¶ 4(b)(ii). See L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that the respondent acted in bad faith by establishing a pattern of registering misspellings of famous trademarks and names); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see also Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION 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.com> domain name be TRANSFERRED from Respondent to Complainant. Judge Harold Kalina (Ret.), Panelist Dated: November 22, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.