Homer TLC, Inc. v. Zongyao Hu
Claim Number: FA0804001178650
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 <acehomedepot.com>, registered with Enom, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 16, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 17, 2008.
On April 17, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <acehomedepot.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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").
18, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 8, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 13, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is the operator of The Home Depot retail stores worldwide.
This includes over 2,000 stores with revenue of $80 million a year.
Complainant holds numerous registrations with the United States Patent and Trademark Office (“USPTO”) for variations of the HOME DEPOT service mark, including Reg. No. 1,188,191 issued Jan. 26, 1982).
Respondent registered the disputed domain name on September 16, 2005.
Respondent has never been authorized to use the HOME DEPOT mark, and Respondent is not and has never been commonly known by the disputed domain name.
The <acehomedepot.com> domain name currently resolves to a website in direct competition with Complainant’s business.
Respondent’s <acehomedepot.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark.
Respondent does not have any rights to or legitimate interests in the domain name <acehomedepot.com>.
Respondent registered and uses the <acehomedepot.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant registered the HOME DEPOT service mark with the USPTO, therefore establishing rights to the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).
See also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant contends that the <acehomedepot.com> domain name is confusingly similar to its HOME DEPOT mark. Respondent’s addition of the generic term “ace” to the mark in creating its domain name is insufficient to distinguish the domain name from the mark because the term relates to a competitor of Complainant’s business. See True Value Co. v. Jucco Holdings, FA 684382 (Nat. Arb. Forum Jun. 1, 2006) (finding the addition of the term “ace” to a complainant’s TRUE VALUE mark rendered the domain name “acetruevalue.com” confusingly similar to the mark because it referred to one of complainant’s competitors); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that the addition of other drug names to a mark does not create a distinct mark capable of overcoming a claim of confusing similarity, “it merely creates a domain name with severe potential to confuse Internet users as to the source, sponsorship and affiliation of the domain”).
In addition, because all domain names are required to have a top-level domain name, Respondent’s use of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from Complainant’s registered mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name such as “.net” or “.com” does not affect the domain name for purposes of determining whether it is identical or confusingly similar to a competing mark).
Therefore, we conclude that the <acehomedepot.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark pursuant to Policy ¶ 4(a)(i).
Complainant claims that Respondent has neither rights to nor legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Complainant has the initial burden of showing that Respondent does not have rights to or legitimate interests in the <acehomedepot.com> domain name. Once Complainant has made out a prima facie case showing that Respondent lacks rights and legitimate interests in the domain name, the burden shifts to Respondent to show that it does have such rights or legitimate interests. 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 appropriate circumstances, the assertion by a complainant that a respondent has no right to or legitimate interest in a contested domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
Complainant has met the initial burden of showing that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Because Respondent failed to answer the Complaint, we may presume that Respondent lacks rights and legitimate interests in its domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
See also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, we will examine the evidence of record to determine if there is any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c).
We begin by observing that Complainant asserts, and Respondent does not deny, that Respondent has never been authorized to use the HOME DEPOT mark, and that Respondent is not and has never been commonly known by the disputed domain name. Further, the pertinent WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Thus, we conclude that Respondent is not commonly known by the <acehomedepot.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name where the respondent is not known by the mark in question).
We also note that there is no dispute as to Complainant’s allegation that Respondent is using the <acehomedepot.com> domain name to redirect Internet users to a website offering services that compete with the business of Complainant. Such use is 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 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.” See also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website, which competed with the business of a complainant, was not a bona fide offering of goods or services).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <acehomedepot.com> domain name to gain financially, via presumed receipt of click-through fees for redirecting Internet users to competing services constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See 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).
See also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that a respondent acted in bad faith by attracting Internet users to a website that competed with a complainant’s business).
In addition, it appears that Respondent registered the <acehomedepot.com> domain name with at least constructive knowledge of Complainant’s rights in the HOME DEPOT service mark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
The Panel thus finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <acehomedepot.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 22, 2008
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