Homer TLC, Inc. v. Linh Wang
Claim Number: FA1007001336037
Complainant is Homer
TLC, Inc. (“Complainant”), represented by Renee S. Kraft, of Fulbright & Jaworski L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <homedepot-survey.com>, registered with CPS-DATENSYSTEME GMBH.
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 July 16, 2010.
On July 19, 2010, CPS-DATENSYSTEME GMBH confirmed by e-mail to the National Arbitration Forum that the <homedepot-survey.com> domain name is registered with CPS-DATENSYSTEME GMBH and that Respondent is the current registrant of the name. CPS-DATENSYSTEME GMBH has verified that Respondent is bound by the CPS-DATENSYSTEME GMBH 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 July 21, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@homedepot-survey.com. Also on July 21, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 16, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <homedepot-survey.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark.
2. Respondent does not have any rights or legitimate interests in the <homedepot-survey.com> domain name.
3. Respondent registered and used the <homedepot-survey.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Homer TLC, Inc., uses its HOME DEPOT mark in connection with home improvement retail store services. Complainant registered its HOME DEPOT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2, 314,081 issued February 1, 2000).
Respondent, Linh Wang, registered the disputed domain name on June 22, 2010. The disputed domain name resolves to a survey website that purports to offer Internet users a $1,000 gift card in exchange for their filling out surveys regarding recent experiences shopping at Complainant’s retail stores.
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 asserts rights in its HOME DEPOT mark based on
its holding of a trademark registration for the mark with the USPTO (Reg. No.
2,314,081 issued February 1, 2000). The
Panel finds that Complainant’s registration of its mark with the USPTO is
evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing
Complainant asserts that Respondent’s <homedepot-survey.com>
domain name is confusingly similar
to Complainant’s HOME DEPOT mark.
Respondent’s disputed domain name eliminates the space between the terms
of Complainant’s mark and adds a hyphen and the generic term “survey,” as well
as the generic top-level domain (“gTLD”) “.com.” The Panel finds that these alterations are
not sufficient to avoid a finding of confusing similarity between Respondent’s
disputed domain name and Complainant’s mark.
See U.S.
News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007)
(“Elimination of punctuation and the space between the words of Complainant’s
mark, as well as the addition of a gTLD does not sufficiently distinguish the
disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum
July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is
irrelevant in the determination of confusing similarity pursuant to Policy ¶
4(a)(i).”); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696
(Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term
“collection” to Complainant’s HARRY POTTER mark failed to distinguish the
domain name from the mark). Therefore,
the Panel finds that Respondent’s <homedepot-survey.com> domain name is confusingly similar to
Complainant’s HOME DEPOT mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant is required to submit a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain name before the burden shifts to Respondent to prove that it does have rights or legitimate interests. The Panel finds that Complainant has submitted a prima facie case per the requirements of Policy ¶ 4(a)(ii) and Respondent had failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, in order to make a complete determination, the Panel will examine the record in its entirety to ascertain whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant alleges that Respondent has no relationship, affiliation, connection, endorsement, or association with Complainant and has never requested or received any authorization, permission, or license from Complainant to use the HOME DEPOT mark in any way. Complainant further alleges that there is no evidence in the WHOIS information to suggest that Respondent is known by the <homedepot-survey.com> domain name as it lists the registrant as “Linh Wang.” The Panel finds that Complainant’s allegations coupled with the WHOIS information are sufficient evidence to establish that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); 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).
Complainant argues that Respondent’s disputed domain name resolves to a survey website that purports to offer Internet users a $1,000 gift card in exchange for their filling out surveys regarding recent experiences shopping at Complainant’s retail stores. Complainant indicates that it has not been able to ascertain whether or not Respondent actually provides Internet users with these gift cards but finds it unlikely that Respondent is simply giving away thousands of dollars worth of Complainant’s gift cards without receiving any compensation. Complainant thus infers that Respondent either makes money from the completion of the customer surveys or that Respondent does not provide the gift cards as it promises. Complainant argues, and the Panel agrees, that in either case Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent is using the <homedepot-survey.com> domain name to direct Internet users to a commercial website that diverts Internet users who may have been seeking information on Complainant’s products or services. The Panel finds that Respondent’s registration and use of the disputed domain name to divert Complainant’s potential customers is evidence of Respondent’s 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).
Although Complainant does not argue bad faith under Policy ¶
4(b)(iv), the Panel finds that Respondent is
attempting to attract, for commercial gain, Internet users to its website by
creating a likelihood of confusion as to Complainant’s sponsorship of or
affiliation with the disputed domain name.
Respondent’s confusingly similar disputed domain name purports to offer
gift cards to Complainant’s retail stores in exchange for Internet users’
feedback about Complainant. The Panel
finds that Internet users are likely to believe that such activities are
sponsored by or affiliated with Complainant and is evidence of Respondent’s bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Perot Sys. Corp. v.
Perot.net, FA 95312 (Nat. Arb.
Forum Aug. 29, 2000) (finding bad faith where the domain name in question is
obviously connected with the complainant’s well-known marks, thus creating a
likelihood of confusion strictly for commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v.
Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the
respondent violated Policy ¶ 4(b)(iv) because the
respondent admittedly used the complainant’s well-known mark to attract users
to the respondent's website).
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 <homedepot-survey.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: August 23, 2010
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