Homer TLC Inc. v. Renown
Claim Number: FA0204000112457
Complainant is Homer TLC Inc., Claymont, DE, USA (“Complainant”) represented by Steven M Levy, of Homer TLC Inc. Respondent is Renown, Colombo, SRI LANKA (“Respondent”) represented by Zak Muscovitch, a Barrister and Solicitor.
The domain name at issue is <homedepot.biz>, registered with Registrars Asia Pty Ltd.
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 Irving H. Perluss (Retired) is the Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on April 26, 2002; the Forum received a hard copy of the Complaint on April 27, 2002.
On May 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 23, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
An incomplete Response was received on June 11, 2002. The complete Response was received and determined to be complete on June 18, 2002.
Complainant’s additional submission was received timely on June 11, 2002. Respondent’s additional submission was received late on June 18, 2002. The Panel, nevertheless, will consider the additional submissions as it is the Panelist’s practice to rule on the merits absent prejudice to the opposing party.
On July 9, 2002, pursuant to STOP Rule 6(b), the Forum appointed Judge Irving H. Perluss (Retired) as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
1. Complainant, Homer TLC, Inc., is a holding company and a wholly owned subsidiary of Home Depot U.S.A., Inc., which is, in turn, a subsidiary company of The Home Depot, Inc.
2. Complainant, through its predecessors in interest and licensees, commenced use of the marks HOME DEPOT and THE HOME DEPOT (hereinafter the “Home Depot Marks”) in connection with its home improvement products and services at least as early as 1979. In all instances, the words “Home Depot” are the most distinctive elements of the Home Depot Marks. Since that time, the Home Depot Marks have been continually used in commerce in a number of countries by Complainant and/or its predecessors in interest and licensees. Homer TLC, Inc. is the owner of the Registered Home Depot Marks.
3. Complainant has prominently used and promoted the Home Depot Marks through extensive advertising, marketing, and sales of goods and services related to home improvement, home décor, home appliances, gardening and landscaping, and building construction and repair. Complainant’s worldwide, annual sales under the Home Depot Marks have been in the tens of billions of U.S. dollars (U.S. $53.55 billion in fiscal year 2001) and its advertising expenses to promote the Home Depot Marks have been extensive, reaching into the hundreds of U.S. dollars each year.
4. In addition to retail locations in the United States, Canada, Mexico, Puerto Rico, Argentina, and Chile, Complainant has marketed its products and services internationally under the Home Depot Marks through its website at <homedepot.com>, which receives in excess of 4 million visits each day, and through its Export Division. Complainant’s website has been in operation since 1992. Complainant is also the owner of approximately 120 country-level and other top-level domain names in the form of <homedepot.[ ]> in approximately 70 different countries.
5. The disputed domain name <homedepot.biz> is confusingly similar to the Home Depot Marks in that Respondent has registered the identical words “Home Depot.” Given the expected prominence of the dot-biz domain space, there will undoubtedly be a high number of instances of customers typing <homedepot.biz> into their Internet browsers expecting to reach Complainant’s website. Under these circumstances, the only conclusion that can be reached is that the <homedepot.biz> domain is confusingly similar to Complainant’s Home Depot Marks.
6. Respondent apparently owns and operates a well-known “football club” (i.e., soccer) in Sri Lanka, Respondent’s country of domicile. The Respondent is engaged in the training of football players and the participation in football competitions. A search of the trademark registry of Sri Lanka revealed no trademark registrations or pending applications in the name of Respondent which include the words “Home Depot.” Complainant itself owns two trademark registrations in Sri Lanka for its “Home Depot” marks. Furthermore, an inspection of Respondent’s business and premises conducted in-person by Complainant’s investigator on April 23, 2002, revealed that no signs or other indicia exist at those premises which include the words “Home Depot.”
7. Prior to its registration of the disputed domain name, Respondent apparently did not make any use of the name “Home Depot” and Respondent is not currently using such name or is commonly known by any name which includes the words “Home Depot.
8. Respondent has not made, and is currently not making, any bona fide offering of goods or services in connection with the words “Home Depot” or any other legitimate use of such name and has obtained no rights in the name.
9. Respondent has made an illegitimate, bad faith use of the <homedepot.biz> domain name with the intent, for commercial gain, to misleading divert consumers seeking the Complainant on the Internet. Considering the worldwide fame of the Home Depot Marks and the extensive use of the <homedepot.biz> domain name, Respondent knowingly registered the domain name with prior knowledge of the fame of Complainant’s Home Depot Marks with the intent to benefit from Complainant’s reputation and the goodwill associated with the Home Depot Marks.
10. Respondent, through its President and administrative contact, Mr. Vincent Peeris, using the same address as that listed for the <homedepot.biz> domain, has registered numerous generic domains such as <amateursex.biz>, >freeporn.biz>, <gay.biz>, and <shoes.biz>. He also owns <nakedlive.com>, <buff.net>, and other names. Complainant was unable to locate any content on any websites incorporating these domains. From this evidence, it is charged that Respondent’s intention is to stockpile these domains and later sell them at whatever profit it can realize.
11. Respondent has gone beyond generic domains and has also registered the following domains (in the dot.biz and other top-level domain spaces) that are identical copies of well-known trademarks which are the property of the stated owners:
Domain Lawful Trademark Owner TM Registration
<britneyspears.biz> Britney Spears, New York,
New York, USA US 2302300
<sprint.biz> Sprint Communications Company,
Overland Park, Kansas US 1104943
<dvds.biz> Indigita Corporation, Irvine,
California, USA US 2241767
<freebies.biz> Freebies Publishing, Santa Barbara,
California, USA US 1807431
exchange.com> American Stock Exchange LLC US 0876068
12. The evidence thus demonstrates that Respondent has engaged in a pattern of registering well-known trademarks as <dot.biz> and <dot.com> domains for the purpose of holding them hostage from their rightful owners. Specifically, Respondent has registered the <homedepot.biz> domain name in order to prevent Complainant from reflecting its Home Depot Marks in a corresponding <dot.biz> domain name. As a result, Respondent’s actions will disrupt the business of Complainant since it will be unable to rightfully use its Home Depot Marks in the <dot.biz> space which is becoming very popular with customers. Further, by using the <homedepot.biz> domain name, Respondent intends to attempt to attract and divert, for commercial gain, Internet users to a website, by creating a likelihood of confusion with Complainant’s Home Depot Marks as to the source, sponsorship, affiliation, or endorsement of the goods and services to be offered on Respondent’s website. Finally, Respondent is not making a legitimate noncommercial or fair use of the <homedepot.biz> domain.
1. Respondent concedes that the disputed domain name is substantially similar to the Complainant’s registered trademarks.
2. Respondent, Renown SC, is a popular football club in Sri Lanka and in Asia.
3. In Sri Lanka, football (soccer) clubs are often community-based social organizations as well. As is becoming more common with football clubs on the Indian sub-continent and throughout Asia, Respondent has expanded its community involvement into fundraising ventures. The aims of these community ventures, such as cyber cafes, are to generate income to financially support the club and to improve the local community.
4. Two years at the Renown SC Annual General Meeting, the club decided to expand into Internet ventures in order to assist local Sri Lankans with becoming more computer literate and to help raise money for the club.
5. The club started acquiring domain names as <few.com> and <registername.com> with the goal being to build businesses around domain names that could intuitively attract Internet traffic or alternatively, lend themselves easily to an on-line business. In addition, several generic names were registered because these could be resold at a profit without infringing on any person’s intellectual property rights.
6. Domains relating to several market segments for future development were acquired, as the club was uncertain as to which business model would receive the most support from club members and investors.
7. At its annual general meeting, the club decided to acquire “.biz domains” that especially related to the real estate market since the club was about to go on-line with a real estate site which allows customers in the South Asian region to buy and sell homes on-line.
8. The club registered two domains for this purpose: <homedepot.biz> and <forsalebyowner.biz>, since both of them were generic domains and would easily lend themselves to the on-line real estate business.
9. Respondent targeted these two domains since both of them were generic domains and ideal for Respondent’s site. Both names consist of common English language words and are not fanciful or unique. Both are somewhat descriptive of the nature of the services offered.
10. The disputed domain name consists of two common English words, and, accordingly, is a generic domain name.
11. Where a domain name is generic, the first person to register it in good faith is entitled to the domain name.
12. Generic and descriptive words and phrases will generally not be transferred to a Complainant even where a Complainant has a registered trademark.
13. Common words and descriptive terms are legitimately subject to registration as domain names on a “first come, first served” basis.
14. Complainant is not a major company recognized all over the world. It has retail locations only in the United States, Canada, Mexico, Puerto Rico, Argentina, and Chile.
15. The Complainant indicated that its website, <homedepot.com>, is targeted at the international market, but it ships its products only to clients in the U.S. and their site is only targeted in the U.S., not the whole world.
16. While Complainant might be a major company in the United States, and recognized as such by Americans, it does not operate at all in Sri Lanka or anywhere in Asia. It is entirely unknown in Sri Lanka, in particular.
17. Even though Respondent claims to have a trademark in Sri Lanka, there is no company in Sri Lanka named “Home Depot” and no one in South Asia knows about Home Depot at all.
18. Complainant is required to prove “bad faith registration” and “bad faith use” of the disputed domain name. Complainant has not proven either. As far as “bad faith use” is concerned, the Respondent has not yet done anything that would constitute “use” of the domain name.
19. Respondent has partnered with a web development company to develop the on-line real estate business.
20. Respondent never knew about the Complainant when it registered the domain name. The Complainant simply has no worldwide reputation and its mark is not so fanciful as to prevent another person from using it in association with completely different wares, especially in a country where the Complainant does no business.
21. Respondent never contacted the Complainant to sell the disputed domain name. It appears that the Complainant is reluctant to let anyone use a similar domain name, notwithstanding that the extension of available TLD’s (i.e. <.biz>, <.info>) was specifically intended to enable people to register names that were already taken in other TLD’s such as <.com> and <.net>.
C. Complainant’s Additional Submission
1. Respondent admits that the disputed domain name <homedepot.biz> is identical to the Complainant’s trademark HOME DEPOT.
2. Respondent has failed to submit any evidence which proves it owns or is the beneficiary of a trade or service mark identical to the domain name <homedepot.biz>. Consequently, Respondent has failed to prove any right or legitimate interest in the domain pursuant to STOP Policy ¶4(c)(i).
3. Respondent has submitted a rather far-fetched and unsupported story about being a Sri Lankan football (soccer) club that has a side business of registering domain names in order “to assist local Sri Lankans with becoming more computer-literate and to help raise money for the club.” While Respondent has admitted registering domain names for the purpose of “building on-line businesses” or alternatively, selling the domain names to “raise start-up capital,” Respondent failed to show that it used or made demonstrable preparations to use the domain name <homedepot.biz> before receiving notice of this dispute. Consequently, Respondent has failed to prove any right or legitimate interest in the domain pursuant to STOP Policy ¶4(c)(ii).
4. Respondent has failed to prove that it, or an associated business or organization, has been commonly known by the domain name. As a result, Respondent has failed to prove any right or legitimate interest in the name pursuant to STOP Policy ¶4(c)(iii).
5. In light of the fact the Respondent cannot demonstrate that it has any legitimate rights or interests in the domain <homedepot.biz>, the Respondent must be deemed to have acted in bad faith.
6. Respondent claims that it “targeted” the domain name <homedepot.biz> because it is made up of “generic” or “common English words.” While the words “home” and “depot” are in English language dictionaries, the combination of the two words is not in the dictionary and is neither generic nor common. Complainant’s trademark is distinctive and famous and is a suggestive, clever brand name which requires the customer to exercise a degree of imagination in order to identify Complainant’s services of operating retail stores selling home-improvement goods and services.
7. Respondent’s assertion that it “didn’t know about the Complainant at all when it acquired the <homedepot.biz>” is difficult to believe. Respondent had constructive knowledge of Complainant’s trademark rights because Complainant owns two registrations for its mark in Sri Lanka. Moreover, Respondent obviously is very familiar with U.S. culture and businesses as evidenced by its registration of such domain names as <britneyspears.biz>, <sprint.biz>, and <americanstockexchange.com>. In light of these facts and the fame of the HOME DEPOT mark, there can be little question but that Respondent knew of Complainant’s rights and acted in bad faith pursuant to STOP Policy ¶4(b) when it registered the disputed domain name.
8. Respondent has offered no evidence to rebut the presumption of bad faith.
D. Respondent’s Additional Submission
1. The Complainant alleges that the Respondent “submitted a rather far-fetched and unsupported story about being a Sri Lankan football (soccer) club.” Press articles of verification have been submitted.
2. Complainant alleges that its use of “depot” is a suggestive, clever brand name. The fact is that “depot” is used in connection with many businesses from office supplies <officedepot.com> to puzzles <puzzledepot.com>.
3. Complainant alleges that the Respondent has not “offered an explanation however improbable as to why Sri Lankan, Indian or South Asian business or consumers would want to or more importantly, be able to use an English language domain name to conduct this kind of business, which is local in nature.” The fact is that the national languages of India, Pakistan, and Sri Lanka are different and it therefore would be difficult to develop sites for each market. That is why the Respondent is using an English language domain name. Furthermore, English is a common language for business in Sri Lanka and India as a result of its British heritage.
4. In its supplementary Complaint, the Complainant does not rebut the Respondent’s allegation that the Complainant only operates in very few countries thereby precluding a finding of popularity or fame on a worldwide scale.
5. Complainant did not rebut the Respondent’s allegation that the Complainant’s website is only for American customers.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
STOP Policy ¶4(a)(i)
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the <.biz> generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
Unlike domain name disputes brought under the UDRP, STOP claims require that the disputed domain name be identical to a trademark or service mark in which the Complainant holds rights. A domain name that is merely confusingly similar to a mark cannot be transferred through a STOP claim (although the holder of a non-identical but similar mark could bring a UDRP complaint when the domain name eventually clears any other pending STOP complaints). See, Commonwealth Bank v. Rauch, FA 102729 (Nat. Arb. Forum Feb. 23, 2002) (finding that the Complainant failed to establish rights in <cominvest.biz> pursuant to STOP Policy ¶4(a)(i) because its COMMINVEST mark was not identical to “cominvest” or <cominvest.biz>).
Here, the evidence is conclusive that Complainant has had for many years numerous worldwide registrations for the mark HOME DEPOT (including two in Sri Lanka since 1995) which are identical to the disputed domain name. The Panel so finds and concludes.
Under STOP Policy ¶4(c), the Respondent may demonstrate its rights or interests by proving:
i. The Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;
ii. Before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
iii. The Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even though it has acquired no trademark or service mark rights.
Respondent has submitted no evidence whatsoever to establish that it falls within ¶4(c)(i) or ¶4(c)(iii), and the Panel finds and concludes that Respondent has not so demonstrated.
With respect to ¶4(c)(ii), Respondent contends that it has made demonstrable preparations to use the subject domain name in connection with the purchase and sale of homes in Asia. It has submitted a partnership agreement executed on April 10, 2002, with a GlenRo Color Lab to develop a real estate website.
The Panel believes this is not a sufficient showing of “demonstrable preparations to use” before notice of the dispute so as to comply with ¶4(c)(ii), and it is so found and concluded. See Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (finding the Respondent’s assertion that she registered the domain name <foxstudios.biz> in order to get a website address for her planned dance studios was insufficient to establish that she had rights or interests in respect to the domain name at issue).
Herein, however, lies the “rub.”
STOP Policy ¶4(b) provides four non-exclusive examples of circumstances that, if proven, will satisfy the bad faith requirement of STOP Policy ¶4(a)(iii).
To establish bad faith under the STOP Policy, a Complainant need only prove either registration or use of the domain name in bad faith, not both as the UDRP requires.
STOP claims differ from UDRP claims in one very significant and fundamental way. Unlike the UDRP, under STOP when a registrant (Respondent) registers a domain name for which an IP claim was previously filed, the registrant is notified of the potential for trademark infringement before being allowed to proceed with the registration. One Panel has recognized that registration of a domain name despite such notice in appropriate circumstances, could “almost preclude any possibility of registration in good faith of a domain name. . . .” Gene Logic, Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding bad faith where Respondent registered the <genelogic.biz> domain name “with full knowledge that his intended business use of this domain name was in direct conflict with a registered trademark of a known competitor in exactly the same field of business”).
In this Panel’s view, Complainant has gone much farther and has established Respondent’s bad faith registration under STOP Policy ¶4(b)(ii).
Under UDRP ¶4(b)(ii), a Complainant may demonstrate Respondent’s bad faith by showing that Respondent registered the domain name for the purpose of preventing Complainant from registering domain names that reflect its mark(s), provided Respondent has engaged in a pattern of such conduct. Under STOP Policy ¶4(b)(ii), the Complainant may similarly prove bad faith by showing the Respondent registered the domain name for the purpose of preventing Complainant from registering domain names reflecting its mark(s). However, under the STOP provision, there is no “pattern” of conduct requirement. Thus, Panels have found bad faith under STOP Policy ¶4(b)(ii) when only one domain name was at issue and no prior history of trademark infringement was established. See Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy ¶4(b)(ii), noting that it was reasonable to conclude Respondent registered <peachtree.biz> with the intent to prevent Complainant from reflecting its PEACHTREE mark in a corresponding domain name, given Respondent’s knowledge of Complainant’s mark and Respondent’s lack of rights or interest in the mark).
But here, the Panel finds substantive evidence and, thus, concludes that Respondent has engaged in a pattern of conduct (even though a “pattern” is not required) for the purpose of preventing Complainant and others with registered trademarks from requesting domain names that reflect their marks.
What other explanation can there be by virtue of the registration by Respondent of such domain names utilizing well-known trademarks as <britneyspears.biz> and <sprint.biz>?
Respondent simply is not credible in its claim of naïveté and lack of actual knowledge of Complainant’s famous and distinctive mark. Indeed, in any event, because of the registration of Complainant’s mark in 1995 in Sri Lanka, Respondent is chargeable with constructive bad faith.
In Interstellar Starship Services, LTD. v. Epix, Inc. (9th Cir. 1999) 184 F.3d 1107, 1111, it was said:
“However, ISS became aware of the ‘EPIX’ trademark when it applied for its own registration of ‘EPIX.’ Adopting a designation with knowledge of its trademark status permits a presumption of intent to deceive. See Brookfield, 174 F.3d 15 1059 (citing Official Airline Guides, Inc. v. Goss, 6 F.3d 1385 (9th Cir. 1993)). In turn, intent to deceive is strong evidence of a likelihood of confusion. Sleekcraft, 559 F.2d at 354.”
But, says Respondent, the words “home” and “depot” are generic and it has been held that, where a domain name is generic, even an offer for sale by Respondent will not establish bad faith. See John Fairfax Publ’n. Pty Ltd. v. Domain Names 4U, D2000-1403 (WIPO Dec. 13, 2000) (finding legitimate interests and no bad faith registration where the Respondent is a seller of generic domain names); see also Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest).
The difficulty facing Respondent which it cannot overcome is that even though “home” and “depot” separately are generic, together they are not. The Panel agrees with Complainant that its trademark requires a customer to exercise his imagination to identify Complainant’s stores selling home-improvement goods and services.
Moreover, the purported use by Respondent is not a non-trademark use which would be permissible. Cf. Alpha Technologies v. Swarthmore Associates L.L.C., FA 112449 (Nat. Arb. Forum June 19, 2002).
Based on the above findings and conclusions, it is decided that the domain name <homedepot.biz> registered by Respondent RENOWN shall be, and the same is, hereby transferred to Complainant Homer TLC, Inc.
JUDGE IRVING H. PERLUSS
Dated: July 17, 2002