Homer TLC, Inc. v. homegroup c/o Domain Administrator
Claim Number: FA0804001178676
Complainant is Homer TLC, Inc. (“Complainant”), represented by Chet
F. Garner, of Fulbright & Jaworski L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <myhomedepot.com>, registered with Enom, Inc.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On April
23, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 13, 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@myhomedepot.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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:
1. Respondent’s <myhomedepot.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 <myhomedepot.com> domain name.
3. Respondent registered and used the <myhomedepot.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Homer TLC, Inc., through its licensee Home
Depot USA, Inc., operates over 2,200 Home Depot retail stores in the
Respondent registered the <myhomedepot.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.
Complainant registered the THE HOME DEPOT mark with the
USPTO. In Janus International Holding Co. v. Rademacher, D2002-0201 (WIPO
Complainant contends that the <myhomedepot.com> domain name is confusingly similar to
Complainant’s mark. The disputed domain
name wholly incorporates Complainant’s mark, and differs from the mark by the
addition of the possessive pronoun “my,” the addition of the generic top-level
domain (“gTLD”) “.com,” and the deletion of the article “the.” Previous panels have concluded that the
addition of generic words, including possessive pronouns to a mark, does not
distinguish the disputed domain name for the purposes of confusing similarity
under Policy ¶ 4(a)(i). See NIIT Ltd. v. Parthasarathy Venkatram,
D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’
which incorporates the word NIIT as a prominent part thereof, is confusingly
similar to the Complainant’s trade name and trademark NIIT”). Moreover, all registered domain names are
required to have a top-level domain; thus Respondent’s addition of the gTLD
“.com” is not relevant for distinguishing the mark. 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). Finally, deleting a non-essential term of the
mark does not distinguish the disputed domain name. See
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant’s initial burden is to show that Respondent does
not have rights or legitimate interests in the domain name in dispute. The panel in Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Although Respondent has not responded to the Complaint, thus allowing the Panel to presume that Respondent does not have any rights or legitimate interests in the disputed domain name, the Panel nevertheless will consider all evidence in the record under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by
the disputed domain name because it has not authorized Respondent to use its
THE HOME DEPOT mark and the WHOIS information does not indicate that Respondent
is commonly known by the disputed domain name.
In Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the panel found no rights
or legitimate interests 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. Therefore, the Panel
concludes that Respondent is not commonly known by the disputed domain name under
Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum
Complainant also contends that Respondent’s use of the <myhomedepot.com> domain name to
redirect Internet users to related and unrelated websites, generating
click-through fees for Respondent, fails to demonstrate rights or legitimate
interests in the disputed domain name.
The Panel finds that Respondent’s use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial use under Policy ¶
4(c)(iii). See WeddingChannel.com
Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003)
(finding that the respondent’s use of the disputed
domain name to redirect Internet users to websites unrelated to the
complainant’s mark, websites where the respondent presumably receives a
referral fee for each misdirected Internet user, was not a bona fide
offering of goods or services as contemplated by the Policy); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum
Dec. 1, 2003) (finding that the respondent was not using the domain name within
the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the
domain name to take advantage of the complainant's mark by diverting Internet
users to a competing commercial site).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent is attempting to attract
Internet users to its commercial website, creating a likelihood of confusion
with the THE HOME DEPOT mark as to the source, sponsorship, affiliation, or
endorsement of the website that resolves from the <myhomedepot.com> domain name. The Panel finds Respondent’s use of the
disputed domain name to display links to competing and unrelated third-party
websites is evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). See American Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where the respondent directed Internet users
seeking the complainant’s site to its own website for commercial gain).
By displaying links
competing with Complainant’s business, Respondent’s use of the disputed domain
name is also capable of disrupting Complainant’s business, which is evidence of
registration and use in bad faith 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 the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business).
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 <myhomedepot.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: June 2, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum