national arbitration forum

 

DECISION

 

Homer TLC, Inc. v. Nigel Fooks

Claim Number: FA1010001353721

 

PARTIES

 

Complainant is Homer TLC, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA.  Respondent is Nigel Fooks (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <homedepot-center.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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 21, 2010; the National Arbitration Forum received payment on October 22, 2010.

 

On October 21, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <homedepot-center.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 25, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 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-center.com.  Also on October 25, 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 November 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <homedepot-center.com> domain name is confusingly similar to Complainant’s HOME DEPOT CENTER mark.

 

2.      Respondent does not have any rights or legitimate interests in the <homedepot-center.com> domain name.

 

3.      Respondent registered and used the <homedepot-center.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 HOME DEPOT family of marks, including the HOME DEPOT CENTER mark.  Complainant has used the HOME DEPOT marks since 1979 in connection with its home improvement retail stores and related goods and services.  Complainant holds numerous trademark registrations for its HOME DEPOT CENTER mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,960,908 issued June 7, 2005).

 

Respondent, Nigel Fooks, registered the <homedepot-center.com> domain name on April 26, 2010.  The disputed domain name resolves to a website featuring links and sponsored advertisements for websites in direct competition with Complainant’s home improvement goods and services.

 

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

 

Complainant asserts it has established rights in the HOME DEPOT CENTER mark.  Previous panels have found established rights when complainant registers its mark through a federal trademark authority.  See Metropolitan  Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).  It is not necessary for a complainant to register its mark within the country of respondent.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has established rights in its HOME DEPOT CENTER mark through its trademark registration with the USPTO (e.g. Reg. No. 2,960,908 issued June 7, 2005) pursuant to Policy ¶ 4(a)(i). 

 

Complainant contends that Respondent’s <homedepot-center.com> domain name is confusingly similar to Complainant’s HOME DEPOT CENTER mark.  The disputed domain name differs from Complainant’s mark only by the deletion of the space between terms of the mark, the addition of a hyphen between terms of the mark, and the addition of a generic top-level domain (“gTLD”) “.com.”  The Panel finds that the addition of a hyphen fails to distinguish the disputed domain name from Complainant’s mark.  See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”).  The Panel also finds that the deletion of a space and the addition of a gTLD fail to sufficiently differentiate the disputed domain name from Complainant’s mark.  See Bond & Co. Jewelers, Inc. v. Texas Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).  The Panel concludes that Respondent’s <homedepot-center.com> domain name is confusingly similar to Complainant’s HOME DEPOT CENTER mark under Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant argues that Respondent lacks rights and legitimate interests in the <homedepot-center.com> domain name.  In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel found that once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”  Here, Complainant has made a prima facie case in support of its allegations.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent has no rights or legitimate interests under Policy ¶4(a)(ii).  See America Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).  However, the Panel will look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Complainant alleges that Respondent is not commonly known by the <homedepot-center.com> disputed domain name.  The WHOIS information identifies Respondent as “Nigel Fooks,” which is not similar to the disputed domain name.  Complainant alleges it has not authorized or licensed Respondent to register or use its HOME DEPOT CENTER mark in the disputed domain name.  The Panel finds no additional evidence within the record that indicates Respondent is commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent is not commonly known by the <homedepot-center.com> domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).

 

Respondent uses the <homedepot-center.com> domain name to resolve to a website featuring links and advertisements to websites competing with Complainant’s home improvement goods and services.  Respondent likely receives click-through fees from these links.  The Panel finds that Respondent’s use of the disputed domain name to host a website redirecting Internet users to websites of Complainant’s competitors is not 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Metropolitan  Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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 met.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s use of the <homedepot-center.com> domain name disrupts its business.  Respondent’s disputed domain name resolves to a website featuring third-party links and advertisements, some of which are in direct competition with Complainant’s home improvement goods and services.  Internet users intending to purchase Complainant’s goods and services may instead find Respondent’s website and purchase similar goods and services from a competitor due to Respondent’s use of the disputed domain name.  The Panel finds that Respondent’s use of the <homedepot-center.com> domain name does disrupt Complainant’s business, which is evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(iii).  See 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)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).

 

The Panel infers that Respondent receives click-through fees from the previously mentioned links.  Respondent uses the confusingly similar <homedepot-center.com> domain name to redirect Internet users to a website featuring links to third-party websites which directly compete with Complainant’s home improvement business.  Internet users may then become confused as to Complainant’s sponsorship of, and affiliation with, the disputed domain name, resolving website, and goods and services offered by the featured links.  Respondent attempts to capitalize off this confusion through the receipt of click-through fees.  The Panel finds that Respondent’s use of the confusingly similar disputed domain name constitutes bad faith use and registration under Policy  ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); 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 met.

 

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 <homedepot-center.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated: December 1, 2010

 

 

 

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