national arbitration forum

 

DECISION

 

Homer TLC, Inc. v. Unitedeurope Consulting

Claim Number: FA0711001110103

 

PARTIES

Complainant is Homer TLC, Inc. (“Complainant”), represented by Chet F. Garner, of Fulbright & Jaworski, 600 Congress Avenue, Suite 2400, Austin, TX 78701-2978.  Respondent is Unitedeurope Consulting (“Respondent”), Seo-gu, 1002 ho 115 dong Jungheung Apt. Chipyeong-dong, Gwangju 502772, KR.

 

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.

 

PANEL

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.

 

PROCEDURAL HISTORY

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 December 21, 2007, Korea Information Certificate Authority, Inc. d/b/a Domainca.com confirmed by e-mail to the National Arbitration Forum that the <homedepotopinions.com> domain name is registered with Korea Information Certificate Authority, Inc. d/ba/ Domainca.com and that Respondent is the current registrant of the name.  Korea Information Certificate Authority, Inc. d/b/a Domainca.com has verified that Respondent is bound by the Korea Information Certificate Authority, Inc. d/b/a Domainca.com 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 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 postmaster@homedepotopinions.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 28, 2008 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.

 

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.

 

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 <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.

 

FINDINGS

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 January 26, 1982 (Reg. No. 1,188,191).  Complainant also owns the <homedepot.com> domain name, and uses the website that resolves from that domain name to market its products and services.  Since 2003, Complainant has owned the <homedepotopinion.com> domain name, and has used it to collect consumer feedback regarding its stores and services.

 

Respondent registered the <homedepotopinions.com> domain name on November 26, 2005.  Respondent has been using the disputed domain name to advertise links to third-party websites offering competing products and services. 

 

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

 

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 Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also 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.”).

 

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. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

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 May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); 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).

 

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 Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

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. 

 

Registration and Use in Bad Faith

 

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 July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).

 

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 <homedepotopinions.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon, Ralph Yachnin, Panelist

Justice,

Supreme Court, NY (Ret.)

 

Dated:  Feburay 8, 2008

 

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