Homer TLC, Inc. v. N.A. c/o Li Gaoxin
Claim Number: FA0805001189819
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 <homedepotrebates.com>, registered with Answerable.com (I) Pvt. Ltd.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On May 10, 2008, Answerable.com (I) Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <homedepotrebates.com> domain name is registered with Answerable.com (I) Pvt. Ltd. and that Respondent is the current registrant of the name. Answerable.com (I) Pvt. Ltd. has verified that Respondent is bound by the Answerable.com (I) Pvt. Ltd. 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").
14, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of June
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.
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 <homedepotrebates.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 <homedepotrebates.com> domain name.
3. Respondent registered and used the <homedepotrebates.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Homer TLC, has used the THE HOME DEPOT mark to in
relation to its home-improvement retail stores since as early as 1979. Complainant registered the mark with the
United States Patent and Trademark Office (“USPTO”) on
Respondent registered the <homedepotrebates.com>
domain name with Answerable.com (I) Pvt. Ltd. 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 California Cosmetics, Inc. v. IMC Inc., FA 1174491 (Nat. Arb. Forum
Complainant contends that Respondent has incorporated the
main elements of its THE HOME DEPOT mark in the <homedepotrebates.com> domain name. Complainant asserts that the addition of the
generic term “rebates” cannot adequately distinguish the disputed domain name
from Complainant’s mark because previous panels have repeatedly concluded that
adding descriptive terms does not avoid the likelihood of confusion with a
complainant’s mark. In Deutsche Telekom AG v. Spiral Matrix, D2005-1145
(WIPO Jan. 2, 2005), the panel noted that addition of generic terms, including
rebates, to the T-MOBILE mark did not prevent confusion among Internet
users. The Panel here concludes that the
addition of the generic term “rebates” does not distinguish the disputed domain
name from the mark. The Panel also
concludes that the addition of the generic top-level domain (“gTLD”) “.com” is
not relevant in its analysis under Policy ¶ 4(a)(i) because all registered
domain names are required to have a top-level domain in order to be active
domain names. Moreover, Respondent’s
exclusion of the article “the” is an insignificant change and not sufficiently
distinguishing to create a domain name distinct from Complainant’s THE HOME
DEPOT mark. Notably, in Mega Society
v. LoSasso, FA 215404 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
When Complainant makes a prima
facie case of its allegations that Respondent lacks all rights and
legitimate interests in the <homedepotrebates.com>
domain name, the burden shifts to Respondent.
In Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Respondent has not responded to the Complaint. The panel in Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO
The WHOIS information indicates
that Respondent is “N.A. c/o Li Gaoxin.”
In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
The disputed domain name resolves to a website where links to unrelated and competing websites are displayed. In TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) the panel found that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services. Like in TM Acquisition Corp., Respondent’s use fails to demonstrate rights and legitimate interests. The Panel concludes that Respondent’s use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ (c)(iii). See 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.
Respondent is commercially benefiting from the goodwill associated with the THE HOME DEPOT mark by using a domain name that is confusingly similar to the mark to display links to competing products. The Panel infers that Respondent is receiving click-through fees by redirecting Internet users to competitors’ websites. The Panel finds that such use is capable of creating confusion as to Complainant’s source, sponsorship, affiliation, or endorsement of the website that resolves from the disputed domain name. In G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002), the panel found that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website. The Panel, therefore, finds that Respondent’s use is evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel also finds
that Respondent’s use is capable of disrupting Complainant’s business, and
therefore is evidence of registration and use in bad faith under Policy ¶ 4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <homedepotrebates.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: June 18, 2008
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