Homer TLC, Inc. v. Unitedeurope Consulting
Claim Number: FA0711001110103
Complainant is Homer TLC, Inc. (“Complainant”), represented by Chet
F. Garner, of Fulbright & Jaworski,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotopinions.com>, registered with Korea Information Certificate Authority, Inc. d/b/a Domainca.com.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 15, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 20, 2007. The Complaint was submitted in both Korean and English.
On January 2, 2008, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 22, 2008 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <homedepotopinions.com> domain name is confusingly similar to Complainant’s THE HOME DEPOT mark.
2. Respondent does not have any rights or legitimate interests in the <homedepotopinions.com> domain name.
3. Respondent registered and used the <homedepotopinions.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Homer TLC, Inc., is
the owner of the HOME DEPOT and THE HOME DEPOT marks. Complainant, though its predecessor in
interest and licensee, has been using the marks in connection with its home
improvement products and services since 1979.
Complainant has over 34 trademark registrations with the United States
Patent and Trademark Office (“USPTO”) incorporating “HOME DEPOT.” Complainant’s THE HOME DEPOT mark was
registered with the USPTO on
Respondent registered the <homedepotopinions.com>
domain name on
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.
The Panel finds that Complainant’s registration of THE HOME
DEPOT mark with the USPTO establishes Complainant’s rights to the mark under
Policy ¶ 4(a)(i).
See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
The <homedepotopinions.com> domain name
is confusingly similar to Complainant’s THE HOME DEPOT mark because it
incorporates the dominant portion of Complainant’s entire mark. The exclusion of the term “the” is
inconsequential to the determination of confusing similarity. The inclusion of the term “opinions” does not
serve as a distinguishing factor because it is generic and Complainant operates
a website using a similar generic term “opinion” in combination with THE HOME
DEPOT mark. Moreover, the inclusion of
the generic top-level domain (“gTLD”) “.com” does not sufficiently distinguish
the disputed domain name from Complainant’s mark because all domain names are
required to have a top-level domain.
Therefore, the Panel finds that the <homedepotopinions.com>
domain name is confusingly similar to Complainant’s THE HOME DEPOT mark
pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also Arthur Guinness Son & Co. (
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has the initial burden of demonstrating that
Respondent lacks all rights and legitimate interests in the disputed domain
name. Once Complainant
has made a prima facie assertion, the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the disputed domain name.
Here, Complainant contends that Respondent lacks all rights and
legitimate interests in the <homedepotopinions.com>
domain name, and the Panel finds this contention sufficient to make a prima facie case that Respondent lacks
rights and legitimate interests under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires
v. Greenpeace Int’l, D2001-0376 (WIPO
Because Respondent has not responded to the Complaint, the Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”). Despite Respondent’s failure to respond, the Panel will consider all evidence in the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Nothing in the WHOIS information indicates that Respondent
is commonly known by the <homedepotopinions.com>
domain name. Furthermore, Complainant
asserts that Respondent is not commonly known by the disputed domain name, and
that Respondent has never been authorized to use Complainant’s THE HOME DEPOT
mark. As a result, the Panel finds that
Respondent is not commonly known by the disputed domain name under 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 Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum
Respondent’s use of the disputed domain name to advertise links to websites offering products and services similar to Complainant’s products and services does not evidence rights or legitimate interests. Complainant also contends that Respondent is generating revenue online using “click-through” advertisements. The Panel therefore concludes that Respondent has used the disputed domain name for 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). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent is intentionally using the <homedepotopinions.com> domain name for commercial gain by advertising links to competing products and services, and benefiting from the confusing similarity to Complainant’s mark. The similarity between the disputed domain name and Complainant’s mark is capable of creating confusion as to the source, sponsorship, affiliation, or endorsement of the website that resolves from the disputed domain name. Complainant further contends that Respondent is commercially benefiting by receiving “click-through” fees. The Panel finds that such use is evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Furthermore, Respondent’s use of the disputed domain name to
advertise links to third-party competitors is evidence of registration and use
in bad faith under Policy ¶ 4(b)(iii). See also S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homedepotopinions.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon, Ralph Yachnin, Panelist
Supreme Court, NY (Ret.)
Dated: Feburay 8, 2008
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