Homer TLC, Inc. v. PT. Jasa Manajemen Progresip
Claim Number: FA1102001370544
Complainant is Homer TLC, Inc. (“Complainant”), represented by Karla S. Lambert of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is PT. Jasa Manajemen Progresip (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <shop-at-homedepot.com>, registered with NamesDirect.
The domain names at issue are <depotopinions.com> and <depot-opinion.com>, registered with Wild West Domains, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2011; the National Arbitration Forum received payment on February 2, 2011.
On February 1, 2011, NamesDirect confirmed by e-mail to the National Arbitration Forum that the <shop-at-homedepot.com> domain name is registered with NamesDirect and that Respondent is the current registrant of the name. NamesDirect has verified that Respondent is bound by the NamesDirect registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution.
Also on February 1, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <depotopinions.com> and <depot-opinion.com> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreements 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 February 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2011 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@shop-at-homedepot.com, postmaster@depotopinions.com, and postmaster@depot-opinion.com. Also on February 11, 2011, 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 March 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <shop-at-homedepot.com>, <depotopinions.com>, and <depot-opinion.com> domain names are confusingly similar to Complainant’s HOME DEPOT mark.
2. Respondent does not have any rights or legitimate interests in the <shop-at-homedepot.com>, <depotopinions.com>, and <depot-opinion.com> domain names.
3. Respondent registered and used the <shop-at-homedepot.com>, <depotopinions.com>, <depot-opinion.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 HOME DEPOT mark. Complainant has used the mark through its predecessor in interest and licensees in connection with home improvement retail store goods and services, including carpet and carpet installation services. Complainant owns a trademark registration for the HOME DEPOT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,314,081 issued February 1, 2000).
Respondent, PT. Jasa Manajemen Progresip, registered the <depot-opinion.com> domain name on September 21, 2009, the <depotopinions.com> domain name on November 5, 2009, and the <shop-at-homedepot.com> domain name on May 12, 2009. The disputed domain names resolve to a blog entitled “Free Shopping at Home Depots,” which Respondent uses to offer information on in-store promotions and coupons and through which it also operates a phishing scheme to collect 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.
The Panel finds that Complainant’s ownership of a trademark registration with the USPTO conclusively proves its rights in the HOME DEPOT mark for the purposes of Policy ¶ 4(a)(i), despite that Respondent lives or operates outside the U.S. See 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); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <shop-at-homedepot.com>, <depotopinions.com>, and <depot-opinion.com> domain names are confusingly similar to Complainant’s HOME DEPOT mark. The <shop-at-homedepot.com> domain name includes Complainant’s mark without the space, combined with the generic terms “shop” and “at,” two hyphens, and the generic top-level domain (“gTLD”) “.com.” The <depotopinions.com> and <depot-opinion.com> domain names both include Complainant’s mark, omitting the term “home,” and add one or more of the following elements: the generic term “opinion” or “opinions,” a hyphen, and the gTLD “.com.” The Panel finds that adding generic terms to Complainant’s mark does not differentiate the disputed domain names from Complainant’s mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). The Panel also finds that omitting a term from Complainant’s mark does not negate confusing similarity. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK). Finally, the Panel determines that adding hyphens, removing spaces between terms, and appending the gTLD are inconsequential changes that do not affect a Policy ¶ 4(a)(i) analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Albertson’s, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (“[T]he absence of a space and the hyphen between the words of the mark are not changes that are capable of overcoming a Policy ¶ 4(a)(i) identical analysis.”); 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.”). The Panel thus finds that Respondent’s <shop-at-homedepot.com>, <depot-opinion.com> and <depotopinions.com> domain names are confusingly similar to Complainant’s HOME DEPOT mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant has the burden of alleging a sufficient prima facie case against Respondent in order to transfer the obligation to show rights and legitimate interests to Respondent. The Panel deems Complainant’s presented arguments and evidence sufficient to meet its burden. Accordingly, Respondent now bears the burden of proving its rights and legitimate interests. Respondent has presented no evidence showing rights and legitimate interests. The Panel thus infers that Complainant’s allegations may be taken as true and that Respondent lacks rights and legitimate interests in the disputed domain names. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant); 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). The Panel will consider the evidence according to the Policy ¶ 4(c) factors to reach its own conclusion on Respondent’s rights and legitimate interests.
Complainant asserts that Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. Complainant argues that Respondent has never requested or received any authorization, permission or license from Complainant to use the HOME DEPOT mark in any way. The WHOIS information for the disputed domain names identifies the registrant as “PT. Jasa Manajemen Progresip,” which doesn’t appear to have any relationship with the disputed domain names. The Panel concludes that Respondent is not commonly known by the disputed domain names and consequently lacks rights and legitimate interests according to Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Complainant contends that Respondent uses the <shop-at-homedepot.com>, <depot-opinion.com> and <depotopinions.com> domain names to divert Internet users to Respondent’s blog entitled “Free Shopping at Home Depots,” which Respondent uses to offer in-store promotions and coupons. Complainant alleges that the websites resolving from the disputed domain names are also phishing websites because there are embedded links and advertisements in the blog that purport to offer Internet users the opportunity to win a Home Depot gift card in exchange for providing personal contact information in a “Home Depot Survey.” The Panel finds that Respondent’s efforts to collect personal information from Internet users under Complainant’s mark is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 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 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).
Complainant alleges that Respondent also uses the disputed domain names in an effort to pass itself off as Complainant because of the use of the HOME DEPOT mark in the disputed domain names, the display of the mark on the resolving websites, and the links to Complainant’s actual websites at the <homedepot.com> and <homedepotopinion.com> domain names. The Panel finds that Respondent’s attempt to pass itself off as Complainant indicates its lack of rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s registration of three disputed domain names containing Complainant’s HOME DEPOT mark is evidence that Respondent has a pattern of registering infringing domain names in order to prevent Complainant from adequately reflecting its mark. The Panel finds that Respondent’s multiple registrations of these disputed domain names that misappropriate Complainant’s mark indicates Respondent’s bad faith registration and use for the purposes of Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).
Respondent registered the disputed domain names with the purpose of redirecting Complainant’s intending customers to Respondent’s own website. Complainant states that Respondent uses the resolving websites to maintain a blog relating to coupons and in-store promotions for Complainant and as part of a phishing scheme. Complainant contends that embedded links and advertisements throughout the blog postings offer consumers the chance the win a Home Depot gift card in exchange for their participation in a survey that asks for their personal information. The Panel finds that registering the disputed domain names in conjunction with a scheme to acquire Internet users personal information is evidence of bad faith registration and use according to Policy ¶ 4(a)(iii). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name); 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).
Finally, Respondent endeavors to pass itself off as Complainant at the disputed domain names by using Complainant’s mark in the disputed domain names, displaying the mark on the resolving websites, offering links to Complainant’s authentic websites, and offering a survey similar to one offered by Complainant. The Panel finds that Respondent’s attempts to pass itself off as Complainant serve as evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shop-at-homedepot.com>, <depotopinions.com>, and <depot-opinion.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 15, 2011
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