national arbitration forum

 

DECISION

 

Homer TLC, Inc. v. Homedepottrailers

Claim Number: FA1105001390405

 

PARTIES

Complainant is Homer TLC, Inc. (“Complainant”), represented by Richard J. Groos of Fulbright & Jaworski L.L.P., Texas, USA.  Respondent is Homedepottrailers (“Respondent”), New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <homedepottrailers.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 May 24, 2011; the National Arbitration Forum received payment on May 25, 2011.

 

On May 25, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <homedepottrailers.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 May 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 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@homedepottrailers.com.  Also on May 26, 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 June 17, 2011, 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 <homedepottrailers.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark.

 

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

 

3.    Respondent registered and used the <homedepottrailers.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 mark, which it uses in connection with its home improvement retail store services and related goods and services, including trailers and towing accessories. Complainant owns multiple federal registrations for its mark, including federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,152,625 issued April 28, 1981).

 

Respondent, Homedepottrailers, registered the disputed domain name on August 2, 2010. The disputed domain name resolves to a webpage that sells cargo trailers that compete with those sold by Complainant under its HOME DEPOT mark.

 

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 that it has established rights in the HOME DEPOT mark through registration with a federal trademark authority. Registration with a federal trademark authority such as the USPTO is sufficient to establish rights in a mark. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Complainant has provided evidence that it has registered the HOME DEPOT mark with the USPTO (e.g., Reg. No. 1,152,625 issued April 28, 1981). The Panel thus finds that Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i).

 

Complainant further contends that the <homedepottrailers.com> domain name is confusingly similar to Complainant’s mark. The disputed domain name incorporates the entire HOME DEPOT mark. The elimination of the space between the two words in the mark is not sufficient to make the disputed domain name distinctive. 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). Additionally, the descriptive term “trailers” is added to Complainant’s mark in the disputed domain name.  The addition of a descriptive term, particularly one related to a complainant’s buisness, is insufficient to distinguish a domain name. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business”). Finally, it is well-established that the addition of a generic top-level domain (gTLD”) is insufficient to distinguish a disputed domain name from a registered mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that Respondent’s <homedepottrailers.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks rights or legitimate interests in the <homedepottrailers.com> domain name. Once a complainant has made a prima facie case in support of its allegations the burden shifts to the respondent to provide evidence that it does have rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entertainment Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding 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); see also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names”). Respondent failed to respond to the Complaint. Therefore, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will review the record to determine if Respondent has rights or legitimate interests. See Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name”); see also American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name”).

 

Complainant argues that Respondent is not commonly known by the <homedepottrailers.com> domain name. Though Respondent’s WHOIS information lists the domain name registrant as “Homedepottrailers,” the Panel is not required to find that Respondent is commonly known by the domain name absent further supporting evidence. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii)”). Additionally, Complainant claims to have never authorized Respondent to use any derivation of the HOME DEPOT mark and that no affiliation exists between Complainant and Respondent. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Respondent uses the <homedepottrailers.com> to sell cargo trailers in competition with sales of cargo trailers by Complainant. Presumably, Respondent profits from the sale of said cargo trailers. The commercial use of a complainant’s mark in a confusingly similar domain name is neither 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 Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”). Respondent’s use of a confusingly similar domain name to attract Internet users to a website which directly competes which Complainant’s is not 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).

 

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

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent’s registration and use of the <homedepottrailers.com> domain name disrupts its business by diverting Internet users away from Complainant’s website. Because Respondent and Complainant sell similar products, they are in direct competition with each other. The Panel finds that Respondent’s registration and use of the disputed domain name to sell products in competition with Complainant disrupts Complainant’s business and constitutes bad faith under Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).

 

Complainant contends that Respondent’s registration and use of the disputed domain name demonstrates an intentional attempt to create confusion regarding Complainant’s association with the disputed domain name in order to commercially gain and is evidence of bad faith under Policy ¶ 4(b)(iv).  Respondent undoubtedly profits from the sales made on the disputed domain name.  Registration and use of an confusingly similar domain name for commercial gain constitutes bad faith 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 DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv)”). The Panel finds that Respondent’s registration and use of the <homedepottrailers.com> domain name to be in bad faith pursuant to Policy ¶ 4(b)(iv).

 

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

 

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 <homedepottrailers.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  June 21, 2011

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page