Homer TLC, Inc. v. Seed of Abraham Christian School
Claim Number: FA1011001358569
Complainant is Homer TLC, Inc. (“Complainant”), represented by Richard J. Groos of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Seed of Abraham Christian School (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thehomedepotgardenclub.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 15, 2010; the National Arbitration Forum received payment on November 24, 2010.
On November 16, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <thehomedepotgardenclub.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 November 30, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 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@thehomedepotgardenclub.com. Also on November 30, 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 December 21, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <thehomedepotgardenclub.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 <thehomedepotgardenclub.com> domain name.
3. Respondent registered and used the <thehomedepotgardenclub.com> domain name 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. Complainant has used the mark at least since 1979 in connection with its home improvement retail goods and services and related gardening supplies and services. Complainant holds numerous trademark registrations for its THE HOME DEPOT mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,152,625 issued April 28, 1981).
Respondent, Seed of Abraham Christian School, registered the <thehomedepotgardenclub.com> domain name on June 13, 2008. The disputed domain names resolves to a website which gives the appearance of being associated with Complainant and purports to offer gardening advice and offers in exchange for personal information.
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 contends that it has established its rights in THE HOME DEPOT mark. Previous panels have found that a complainant establishes its rights in a mark through federal trademark registration. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations. Here, Complainant holds trademark registrations for its THE HOME DEPOT mark with the USPTO (e.g. Reg. No. 1,152,625 issued April 28, 1981). Therefore, the Panel concludes that Complainant has established rights in its THE HOME DEPOT mark through trademark registration under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <thehomedepotgardenclub.com> domain name is confusingly similar to its THE HOME DEPOT mark. The disputed domain name incorporates Complainant’s mark in its entirety and only differs by the deletion of spaces between the words of the mark, the addition of the descriptive words “garden” and “club” which have an obvious relationship to Complainant’s gardening sector of business, and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that the elimination of spaces and the addition of a gTLD fails to properly distinguish the disputed domain name from Complainant’s mark. See Bond & Co. Jewelers, Inc. v. Tex. 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 also determines that the addition of descriptive words is insufficient to distinguish the disputed domain name from Compalinant’s mark. See 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). The Panel finds that Respondent’s <thehomedepotgardenclub.com> domain name is confusingly similar to Complainant’s THE HOME DEPOT mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that the element of Policy ¶ 4(a)(i) have been satisfied.
Complainant argues that Respondents lacks rights and legitimate interest in the <thehomedepotgardenclub.com> domain name. In Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006), the panel determined that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name. Here, Complainant has established a prima facie case in support of its claims. Respondent failed to respond to the Complaint, therefore the Panel may assume that Respondent has no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel will look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <thehomedepotgardenclub.com> domain name. The WHOIS information identifies Respondent as “Seed of Abraham Christian School,” which is not similar to the disputed domain name. Complainant asserts that Respondent has no relationship or connection with Complainant and has not been authorized or licensed to register Complainant’s THE HOME DEPOT mark within the disputed domain name. The Panel finds no additional information in the record that would support a determination that Respondent is commonly known by the disputed domain name. The Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also 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).
Respondent uses the disputed domain name to resolve to a website which gives the appearance of being associated with Complainant and incorporates Complainant’s mark. The website purports to offer gardening advice and information in exchange for Internet users’ personal information. The Panel finds that Respondent’s use of the disputed domain name to host a website imitating Complainant’s site in order to obtain personal information from Internet users 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 Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also 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).”).
Complainant argues that Respondent’s resolving website is a “phishing” site which claims to offer Internet users opportunities for gardening advice and discounts in exchange for personal information. The Panel infers that Respondent likely benefits from the receipt of this personal information. The Panel finds that Respondent’s use of the <thehomedepotgardenclub.com> domain name demonstrates a lack of rights or legitimates interests under Policy ¶ 4(a)(ii). See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use) (Response).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
The disputed domain name redirects Internet users to Respondent’s website which imitates Complainant’s own website through the use of Complainant’s marks. Internet users searching for Complainant’s gardening services may instead find Respondent’s website as a result of the confusingly similar disputed domain name. Users might become confused as the Complainant’s sponsorship of, or affiliation with, the disputed domain name, resolving website, and solicitations for personal information. Respondent attempts to profit from this confusion through the collection of personal information. The Panel concludes that Respondent’s use of the <thehomedepotgardenclub.com> 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 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).
Complainant maintains that Respondent uses the disputed domain name to operate a “phishing” website which purports to offers gardening advice and savings in exchange for Internet users’ personal information. The Panel finds Respondent’s use of the <thehomedepotgardenclub.com> domain name to operate a “phishing” scheme is evidence of bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thehomedepotgardenclub.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: January 3, 2011
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