Homer TLC, Inc. v.
Claim Number: FA0809001222948
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 <homedepotcoupons.info>, registered with GoDaddy.com, 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 September 3, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 4, 2008.
On September 4, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <homedepotcoupons.info> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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").
On September 5, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 25, 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@homedepotcoupons.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 3, 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 markets home improvement and furnishing products under the THE HOME DEPOT service mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on January 26, 1982 (Reg. No. 1,188,191).
Complainant operates over 2,200 retail stores in the
Complainant has used the THE HOME DEPOT service mark in commerce continuously since at least 1979.
Respondent is not commonly known by the <homedepotcoupons.info> domain name, nor has it ever been the owner or licensee of the THE HOME DEPOT mark.
Respondent registered the <homedepotcoupons.info>
mark on May
27, 2008.
The disputed domain name resolves to a website that sells coupons of both Complainant and Complainant’s largest business competitors, and also contains links to competing third-party business websites.
Respondent’s <homedepotcoupons.info> domain name is confusingly similar to Complainant’s THE HOME DEPOT mark.
Respondent does not have any rights or legitimate interests in the domain name <homedepotcoupons.info>.
Respondent has registered and continues to use the <homedepotcoupons.info> 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 has established rights in its THE HOME DEPOT service
mark for purposes of Policy ¶ 4(a)(i) through its
registration with the USPTO. See 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.”
Complainant contends that Respondent’s <homedepotcoupons.info> domain name is confusingly similar to its THE HOME DEPOT mark. The <homedepotcoupons.info> domain name differs from Complainant’s mark in three ways: (1) the definite article “the” has been removed from the mark; (2) the descriptive term “coupons” has been added at the end of the mark; and (3) the generic top-level domain (“gTLD”) “.info” has likewise been added. Neither the removal of an article nor the addition of a descriptive term sufficiently distinguish a domain name from an incorporated mark for purposes of Policy ¶ 4(a)(i). See Saul Zaentz Co. v. Dodds, FA 233054 (Nat. Arb. Forum Mar. 16, 2004) (found that a domain name merely omitted the definite article “the” and the preposition “of” from a complainant’s mark and thus failed to “sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i)”); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar to a competing mark because the combination of the two words "brambles" and "equipment" in the domain implies that there is an association with a complainant’s business). Similarly, the addition of a gTLD does not reduce the likelihood of confusion between the domain name and the mark because every domain name must contain a top-level domain. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003):
It
has been established that the addition of a generic top-level domain is
irrelevant when considering whether a domain name is identical or confusingly
similar under the Policy.
Because the likelihood that Internet visitors will confuse
the disputed domain name with Complainant’s mark is not eliminated or
diminished by these changes, we conclude that Respondent’s disputed domain name
is confusingly similar to Complainant’s service mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights to and legitimate interests in the <homedepotcoupons.info> domain name. Under Policy ¶ 4(a)(ii), once a complainant makes out a prima facie case against a respondent, that respondent acquires the burden of showing evidence that it does have rights to or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights to or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent.
Complainant has made out a prima facie case under Policy ¶ 4(a)(ii). Respondent, for its part, has failed to respond to the Complaint. In these circumstances we are permitted to conclude that Respondent has no rights or interests cognizable under the Policy. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s
failure to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain
name. It also allows the Panel to accept
all reasonable allegations set forth…as true.
Nonetheless, we will examine the record before us to determine if there is any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name sufficient for purposes of the Policy.
In this connection, we first observe that Complainant
contends, and Respondent does not deny, that Respondent is not commonly known
by the <homedepotcoupons.info>
domain name, nor has it ever been the owner or licensee of the THE HOME DEPOT
mark. Moreover, the WHOIS record for the
disputed domain name lists Respondent as “Arnold
Brod.” On these facts, we conclude
that Respondent is not commonly known by the <homedepotcoupons.info> domain name pursuant
to Policy ¶ 4(c)(ii).
See Am. W. Airlines, Inc.
v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003): “Respondent has registered
the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration
information, Respondent is not commonly known by the [<awvacations.com>]
domain name.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb.
Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii)
"to require a showing that one has been commonly known by the domain name
prior to registration of the domain name to prevail").
We next note that there is no dispute as to Complainant’s allegation to the effect that Respondent maintains a website at the <homedepotcoupons.info> domain name that sells coupons from both Complainant and Complainant’s largest competitors and contains links to competing third-party business websites. Respondent’s sales of coupons bearing Complainant’s THE HOME DEPOT mark without license or authority from Complainant, as well as Respondent’s sales of coupons of Complainant’s competitors and the links to competing third-party websites are neither bona fide offerings of goods or services under Policy ¶ 4(c)(i) nor legitimate noncommercial or fair uses under Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the goods of others, as well as a complainant’s goods without that complainant’s authority, is not bona fide use); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of a complainant’s mark to sell that complainant’s perfume, as well as other brands of perfume, is not bona fide use); further see TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed a series of links, some of which resolved to websites of a complainant’s competitors, was not a bona fide offering of goods or services).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is diverting Internet customers from Complainant’s website to Respondent’s website that resolves from the disputed domain name, in the process disrupting Complainant’s business by selling coupons for products sold by Complainant’s competitors, and by providing links to competing third-party websites. These actions are evidence of registration and use of the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Franpin SA v. Paint Tools S.L., D2000-0052 (WIPO May 25, 2000) (finding bad faith where a respondent, a company financially linked to a complainant’s main competitor, registered and used a domain name to disrupt that complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that a respondent diverted business from a complainant to a competitor’s website within the meaning of Policy ¶ 4(b)(iii)).
We may presume from the evidence that Respondent gains commercially through this diversion of Internet traffic, both through the sales of coupons that feature Complainant’s mark and the marks of Complainant’s competitors and from click-through fees. Because Respondent has used the disputed domain name for commercial gain through a likelihood of confusion with Complainant’s mark, we conclude that, pursuant to Policy ¶ 4(b)(iv), Respondent’s use of the disputed domain name is also evidence of registration and use in bad faith. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that a respondent registered and used the domain name <wwfauction.com> in bad faith because the domain resolved to a commercial website that a complainant’s customers were likely to confuse with that complainant as a source of its products because of that respondent’s use of that complainant’s logo on the site); to the same effect, see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003).
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 <homedepotcoupons.info> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 7, 2008
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