Homer TLC, Inc. v. HOMEPEPOT.COM / Privacy--Protect.org
Claim Number: FA1104001385031
Complainant is Homer TLC, Inc. (“Complainant”), represented by Karla S. Lambert of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is HOMEPEPOT.COM / Privacy--Protect.org (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homepepot.com>, registered with HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 21, 2011; the National Arbitration Forum received payment on April 21, 2011. The Complaint was submitted in both Slovak and English.
On April 26, 2011, HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM confirmed by e-mail to the National Arbitration Forum that the <homepepot.com> domain name is registered with HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM and that Respondent is the current registrant of the name. HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM has verified that Respondent is bound by the HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM 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 April 27, 2011, the Forum served the Slovak language Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of May 17, 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@homepepot.com. Also on April 27, 2011, the Slovak language 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 May 19, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Slovak language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <homepepot.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark.
2. Respondent does not have any rights or legitimate interests in the <homepepot.com> domain name.
3. Respondent registered and used the <homepepot.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Homer TLC, Inc, operates retail stores specializing in hardware, home project, building, and gardening supplies. Complainant operates its business under the HOME DEPOT mark which is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,314,081 registered February 1, 2000).
Respondent registered the <homepepot.com> domain name on November 19, 2005. The disputed domain name resolves Internet users to a website displaying hyperlinks to third-party websites selling products that compete with Complainant. Additionally, Respondent uses the disputed domain name to “phish” for personal information from unsuspecting Internet users.
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 the HOME DEPOT based on its holding of a trademark registration with the USPTO (e.g., Reg. No. 2,314,081 registered 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 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 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).
Complainant alleges that Respondent’s <homepepot.com> domain name is confusingly similar to the HOME DEPOT mark. Respondent simply removed the spaces between the terms of Complainant’s mark and changed the “d” letter in “depot” to a “p” letter. Furthermore, Respondent added the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel finds that Respondent has failed to create a unique domain name as these actions warrant a finding that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See 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 Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”).
The Panel finds Policy ¶ 4(a)(i) has been established.
Complainant contends that Respondent lacks rights and legitimate interests in the <homepepot.com> domain name. Previous panels have found that a complainant making a prima facie showing in support of its allegations, shifts the burden to the respondent to prove it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has made a prima facie showing and, because Respondent failed to make a timely response, the Panel may assume that Respondent does not have rights or legitimate interests in the <homepepot.com> domain name. However, the Panel will examine whether the record shows Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 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)); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant alleges that Respondent is not commonly known by the <homepepot.com> domain name. Respondent has not alleged any evidence supporting a finding that it is known by that name and the Panel finds no evidence in the record that would provide a basis for finding that Respondent is commonly known by the disputed domain name. The WHOIS information does not put forth any valid evidence that Respondent is commonly known by the disputed domain name. Further, Complainant alleges that it has not authorized or licensed Respondent to use the HOME DEPOT mark. Thus, the Panel finds that Respondent is not commonly known by the <homepepot.com> domain name 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 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).
Complainant argues that Respondent’s disputed domain name resolves Internet users to a directory website containing hyperlinks to Complainant's competitors in the home improvement industry. The Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(a)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors 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 disputed domain name resolves to a website that Respondent uses to phish for personal details from Internet users. Specifically, when an Internet user arrives at the resolving website, an audio recording congratulates the user for being a winner, directs the user to answer a few questions, select a prize, and then enter personal information in order to obtain the prize. The Panel finds that Respondent’s use of a confusingly similar domain name in an attempt to acquire personal information from unsuspecting Internet users is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also 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)).
The Panel finds Policy ¶ 4(a)(ii) has been established.
Complainant alleges that Respondent’s use of the disputed domain name disrupts its business. The disputed domain name resolves Internet users to a website featuring links to Complainant’s competitors. The Panel finds that redirecting unsuspecting Internet users to competing websites is evidence that Respondent ahs engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Complainant contends that Respondent benefits financially from the links posted on the website resolving from the disputed domain name. Internet users that reach Respondent’s website are likely to be confused as to Complainant’s sponsorship of, and affiliation with the disputed domain name, resolving website and posted hyperlinks. In response to this confusion, Internet users will click on the posted hyperlinks in order to locate Complainant’s home improvement business. The Panel presumes that Respondent benefits from this confusion through the receipt of click-through fees which the Panel finds to be evidence of bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See 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); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant further alleges Respondent uses the disputed domain name in a phishing venture. Complainant contends that Respondent attempts to mislead Internet users into divulging personal information in order to obtain a prize. The Panel finds that phishing qualifies as bad faith registration and use 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 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).
The Panel finds Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homepepot.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 23, 2011
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