Homer TLC, Inc. v. Eve Johnson a/k/a New Tesch
Claim Number: FA0809001223077
Complainant is Homer TLC, Inc. (“Complainant”), represented by Chet
F. Garner of Fulbright & jaworski L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <homedepot-installation.com> and <homedepotblinds.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 4, 2008; the National Arbitration Forum received a hard copy of the Complaint September 5, 2008.
On September 10, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <homedepot-installation.com> and <homedepotblinds.com> domain names are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names. Melbourne It, Ltd. d/b/a Internet Names Worldwide verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide registration agreement and thereby has 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 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 6, 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@homedepot-installation.com and postmaster@homedepotblinds.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 15, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The disputed domain names that Respondent registered, <homedepot-installation.com> and <homedepotblinds.com>, are confusingly similar to Complainant’s THE HOME DEPOT mark.
2. Respondent has no rights or legitimate interests in the <homedepot-installation.com> and <homedepotblinds.com> domain names.
3. Respondent registered and used the <homedepot-installation.com> and <homedepotblinds.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Homer TLC, Inc., is the owner of the THE HOME DEPOT mark. Through Complainant and its predecessor-in-interest, Complainant has used the THE HOME DEPOT mark since 1979 in connection with home improvement center services. Complainant registered the THE HOME DEPOT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,188,191 issued January 26, 1982).
Respondent registered the disputed domain name, <homedepot-installation.com>, April 4, 2008 and registered <homedepotblinds.com>, April 18, 2008. Both disputed domain names resolve to the same website for a business operating under the name “Windy City Shades.” This website purports to offer and sell goods and services in direct competition with those offered under Complainant’s THE HOME DEPOT mark. Additionally, the listed WHOIS contact information for these disputed domain names lists the identical physical address and telephone number. However, the listed aliases “Eve Johnson” and “New Tesch,” as well as the listed contact e-mail addresses differ.
Preliminary Issue: Multiple
Respondents
In the instant proceeding, Complainant alleged that the entities that control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the only differences in the WHOIS contact information for both the <homedepot-installation.com> and <homedepotblinds.com> domain names are Respondent’s alias and the e-mail address. The physical address and telephone numbers are identical for both disputed domain names. Moreover, both disputed domain names resolve to the same website for a business operating under the name “Windy City Shades.”
The Panel finds that Complainant presented sufficient
evidence for the Panel to presume and find that the disputed domain names are
controlled by the same entity and the Panel proceeds with an analysis of the
instant proceeding pursuant to the Policy.
See Yahoo!, Inc. v. Soksripanich
& Others., D2000-1461 (WIPO Jan. 29, 2001) (finding multiple aliases to
be the same respondent when the administrative contact information of the
various subject domain names was the same or quite similar); see also Yahoo! Inc. & GeoCities v. Data
Art Corp., D2000-0587 (WIPO Aug. 10, 2000) (decision rendered against
multiple aliases where "the addresses used and the Contacts designated
[were] inter-linking and identical."); see
also Am. Online, Inc. v. Johuathan
Invs., Inc. & AOLLNEWS.COM, D2001-0918 (WIPO Sept. 14, 2001) (determining that when service is
proper and the respondent(s) fail to respond to the complaint, the panel may
accept the complainant’s assertion that the various aliases are the same person
or entity as true).
Primary Issue
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 established rights in the THE HOME DEPOT mark
through registration with the USPTO pursuant to Policy ¶ 4(a)(i). See Miller Brewing
Both the <homedepot-installation.com> and <homedepotblinds.com>
domain names contain Complainant’s THE HOME DEPOT mark, omitting the initial
article “the.” The omission of “the” in
the beginning of a disputed domain names fails to differentiate that domain
name. See Marriott Int’l, Inc. v. Stealth Commerce,
FA 109746 (Nat. Arb. Forum May 28, 2002) (“[T]he addition of the
[article] ‘the’ to the beginning of the domain names fails to make them
separate and distinct, as distinguishable from Complainant’s marks.”). The <homedepot-installation.com> domain name follows Complainant’s mark with a
hyphen and the descriptive word “installation.”
The <homedepotblinds.com> domain name follows
Complainant’s mark with the descriptive word “blinds.” The addition of a hyphen and inclusion of a
descriptive word that accurately describes a complainant’s business and
products fail to distinguish a disputed domain name. See
Teradyne, Inc. v. 4Tel Tech.,
D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the
registered mark is an insubstantial change. Both the mark and the domain name
would be pronounced in the identical fashion, by eliminating the hyphen"); see also Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business). Finally,
both disputed domain names incorporate the generic top-level domain (“gTLD”)
“.com.” Inclusion of a gTLD in a
disputed domain name is irrelevant to a Policy ¶ 4(a)(i)
analysis. See Trip
Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007)
(concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,”
or “.org,” is irrelevant to a Policy ¶ 4(a)(i)
analysis). As a result of the
aforementioned, the Panel finds that both the <homedepot-installation.com> and <homedepotblinds.com>
domain names are confusingly similar to Complainant’s THE HOME DEPOT mark
pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must first establish a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain names. The Panel finds
that Complainant met this burden and the burden now shifts to Respondent to
prove that it has rights or legitimate interests in the disputed domain
names. See VeriSign Inc. v. VeneSign
Respondent did not reply to the Complaint. Therefore, the Panel may presume that
Respondent lacks all rights and legitimate interests in the disputed domain
names. However, the Panel examines the
record in consideration of the elements listed under Policy ¶ 4(c) in order to
substantiate this presumption. 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.”); see also Vanguard Group, Inc.
v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that
because Respondent failed to submit a Response, “Complainant’s submission has
gone unopposed and its arguments undisputed.
In the absence of a Response, the Panel accepts as true all reasonable
allegations . . . unless clearly contradicted by the evidence.”).
Complainant contends that it at no time granted permission
or otherwise authorized Respondent to use its THE HOME DEPOT mark in any
way. Furthermore, the listed WHOIS information
for both disputed domain names list either the alias “Eve Johnson” or “New
Tesch.” Without any additional
information in the record, the Panel finds that Respondent is not commonly
known by the <homedepot-installation.com> and <homedepotblinds.com> domain names pursuant to
Policy ¶ 4(c)(ii).
See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii)
based on the WHOIS information and other evidence in the record); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5,
2007) (concluding that the respondent was not commonly known by the
<lilpunk.com> domain name as there was no evidence in the record showing
that the respondent was commonly known by that domain name, including the WHOIS
information as well as the complainant’s assertion that it did not authorize or
license the respondent’s use of its mark in a domain name).
Both the <homedepot-installation.com> and <homedepotblinds.com>
domain names resolve to the same website.
This website appears to be for a business operating under the name
“Windy City Shades.” This business
purports to offer services and goods in direct competition with those offered
under Complainant’s mark. As a result,
the Panel finds that this constitutes neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin,
FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s
use of a confusingly similar domain name to advertise real estate services
which competed with the complainant’s business did not constitute a bona fide offering of goods or services
under Policy ¶ 4(c)(i), or a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iii));
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 Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Both of the disputed domain names resolve to the website that
seeks to compete directly with Complainant.
The Panel finds that Respondent has registered and is using the <homedepot-installation.com> and <homedepotblinds.com>
domain names for the purpose of disrupting Complainant’s business and
accordingly acted in bad faith pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v.
Aston, FA 593977 (Nat. Arb. Forum
Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert
Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”);
see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA
724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent
registered and used the <classicmetalroofing.com> domain name in bad
faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the
respondent’s competing website).
Moreover, since Respondent advertises and purports to offer
and sell goods and services in direct competition with Complainant, the Panel
presumes that Respondent is attempting to commercially benefit from these
confusingly similar disputed domain names.
Consequently, the Panel considers this to be additional evidence of
Respondent’s bad faith registration and use of the <homedepot-installation.com> and <homedepotblinds.com>
domain names pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat.
Arb. Forum May 25, 2006) (finding that the respondent’s use of the
<arizonashuttle.net> domain name, which contained the complainant’s
ARIZONA SHUTTLE mark, to attract Internet traffic to Respondent’s website
offering competing travel services violated Policy ¶ 4(b)(iv)); see also AOL LLC v. AIM Profiles, FA
964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered
and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)
because the respondent was commercially gaining from the likelihood of
confusion between the complainant’s AIM mark and the competing instant
messaging products and services advertised on the respondent’s website which
resolved from the disputed domain name).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homedepot-installation.com> and <homedepotblinds.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 28, 2008.
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