national arbitration forum

 

DECISION

 

Homer TLC, Inc. v. Heather Durr

Claim Number: FA1008001341221

 

PARTIES

Complainant is Homer TLC, Inc. (“Complainant”), represented by Renee S. Kraft, of Fulbright & Jaworski L.L.P., Texas, USA.  Respondent is Heather Durr (“Respondent”), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <homedepotcarpet.com>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 16, 2010.

 

On August 16, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <homedepotcarpet.com> 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 August 18, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 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@homedepotcarpet.com by e-mail.  Also on August 18, 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 September 20, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 (the "Rules") "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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <homedepotcarpet.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 <homedepotcarpet.com> domain name.

 

3.      Respondent registered and used the <homedepotcarpet.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Homer TLC, Inc., is the owner of the THE HOME DEPOT trademarks that it has licensed for use in connection with home improvement retail store services and related goods, such as carpet and carpet installation services since 1979.  Complainant owns numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") for its THE HOME DEPOT mark (e.g., Reg. No. 1,152,625 issued April 28, 1981).

 

Respondent, Heather Durr, registered the <homedepotcarpet.com> domain name on July 18, 2009.  Respondent’s disputed domain name resolves to a website that displays Respondent’s home improvement advice on such topics as carpet and carpet installation as well as third-party hyperlinks to carpet and carpet installation websites and businesses in competition with Complainant.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established rights in its THE HOME DEPOT mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 1,152,625 issued April 28, 1981).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).

 

Complainant alleges that the <homedepotcarpet.com> domain name is confusingly similar to Complainant’s THE HOME DEPOT mark.  Complainant contends that the disputed domain name contains Complainant’s entire mark, absent “the” from the mark and the spaces between the terms of the mark, and adds the descriptive term “carpet” that describes part of Complainant’s business.  Further, Complainant argues that the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant in determining similarity of Respondent’s domain name to Complainant’s mark.  The Panel agrees and finds that Respondent’s disputed domain name is confusingly similar to Complainant’s THE HOME DEPOT mark under Policy ¶ 4(a)(i), despite the above noted changes and additions to Complainant’s mark.  See Buffalo News v. Barry, FA 146919 (Nat. Arb. Forum Mar. 31, 2003) (finding the respondent's <bufalonews.com> domain name confusingly similar to Complainant's THE BUFFALO NEWS mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.           

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have any rights and legitimate interests in the <homedepotcarpet.com> domain name.  Complainant is required to make a prima facie case in support of these allegations.  Once Complainant has produced a prima facie case, the burden of proof shifts to Respondent to establish that it has rights or legitimate interests in the disputed domain name.  See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)).  The Panel finds that the Complainant has produced a prima facie case and that due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights and legitimate interests in the disputed domain name.  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”).  The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the <homedepotcarpet.com> domain name pursuant to Policy ¶ 4(c).

 

Complainant asserts that it has not granted Respondent permission to use its THE HOME DEPOT mark and that Respondent is not commonly known as the <homedepotcarpet.com> domain name.  The WHOIS information identifies the registrant of the domain name as “Heather Durr,” which is not indicative that Respondent is commonly known as the disputed domain name.  Further, Respondent has not produced any evidence to show that it is commonly known by the disputed domain name or to refute the claims made by Complainant.  Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain under 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).

 

Complainant further alleges that Respondent’s use of the disputed domain to offer home improvement advice on such topics as carpet and carpet installation procedures as well as to display third-party links to the competitors of Complainant in the home carpet sales and installation market are evidence that Respondent lacks rights and legitimate interests in the disputed domain name.  Complainant argues that Respondent’s use of the <homedepotcarpet.com> domain name to display both competing home improvement topics and services as well as misleading hyperlinks to the websites of Complainant’s competitors, presumably for financial gain, is not a use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.  The Panel finds that Respondent’s use of the disputed domain to advertise Respondent’s competing home improvement services and to advertise and display hyperlinks to the websites of Complainant’s competitors, presumably for financial gain, is not a use in connection with 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant 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)).    

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent is using the <homedepotcarpet.com> domain name to offer competing home improvement advice and services as well as to advertise carpet sale and installation businesses in competition with Complainant.  The Panel infers that Respondent’s diversion of Internet users seeking Complainant’s products and services to the competitors of Complainant results in a loss of business to Complainant and is evidence of bad faith registration and use under 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).

 

Complainant also contends that Respondent is misappropriating Complainant’s THE HOME DEPOT mark to profit commercially by offering Respondent’s competing services as well as third-party links to Complainant’s commercial competitors in the carpet sales and installation industry.  The Panel finds that such is use indicative of bad faith registration and use 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 the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.        

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <homedepotcarpet.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  September 27, 2010

 

 

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