Homer TLC, Inc. v. HomeDepo Inc
Claim Number: FA1109001408632
Complainant is Homer TLC, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is HomeDepo Inc (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepo.com>, registered with Inames Co., Ltd. d/b/a inames.co.kr.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2011; the National Arbitration Forum received payment on September 22, 2011.
On September 23, 2011, Inames Co., Ltd. d/b/a inames.co.kr confirmed by e-mail to the National Arbitration Forum that the <homedepo.com> domain name is registered with Inames Co., Ltd. d/b/a inames.co.kr and that Respondent is the current registrant of the name. Inames Co., Ltd. d/b/a inames.co.kr has verified that Respondent is bound by the Inames Co., Ltd. d/b/a inames.co.kr 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 September 28, 2011, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of October 18, 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@homedepo.com. Also on September 28, 2011, the Korean 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 October 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointedHonorable Paul A. Dorf (Ret.) 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 Korean 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 <homedepo.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 <homedepo.com> domain name.
3. Respondent registered and used the <homedepo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Homer TLC, Inc., owns the THE HOME DEPOT mark and began using the mark in 1979 in connection with its home improvement retail store and related goods and services. Complainant holds a number of trademark registrations for its THE HOME DEPOT mark around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,152,625 registered on January 26, 1982) and in the Republic of Korea (e.g., Reg. No. 4100226810000 registered December 20, 1993).
Respondent, HomeDepo Inc, registered the <homedepo.com> domain name on March 26, 1998. The disputed domain name resolves to a directory website, which lists hyperlinks to third-party websites for appliances and home improvements goods in direct competition with Complainant.
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 argues that it has demonstrated rights in the THE HOME DEPOT mark. In order to demonstrate rights in a mark, a complainant may register the mark with a trademark authority. 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); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). Here, Complainant holds a number of trademark registrations with the USPTO (e.g. Reg. No. 1,152,625 registered on January 26, 1982) and in the Republic of Korea (e.g., Reg. No. 4100226810000 registered December 20, 1993). Thus, the Panel determines that Complainant has established rights in its THE HOME DEPOT mark under Policy ¶ 4(a)(i) via its trademark registrations with trademark authorities around the world.
Additionally, Complainant claims that Respondent’s <homedepo.com> domain name is confusingly similar to its THE HOME DEPOT mark. The disputed domain names utilizes the entire THE HOME DEPOT mark and only deviates from the mark by deleting the generic word “the,” deleting the spaces between the words of the mark, deleting a single letter “t,” and adding the generic top-level domain (“gTLD”) “.com.” The Panel concludes that deleting spaces and adding a gTLD do not adequately 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). Moreover, the Panel finds that deleting a generic word and just one letter from Complainant’s mark do not serve to avoid a finding of confusing similarity. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). The Panel concludes that Respondent’s <homedepo.com> domain name is confusingly similar to Complainant’s THE HOME DEPOT mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. In Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006), the panel held 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. Complainant successfully made a prima facie showing in support of its allegations. Given Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent lacks rights and legitimate interests under 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 opts to look to the record to determine whether Respondent has rights or legitimate interests under Policy 4(c).
Although the WHOIS information identifies Respondent as “HomeDepo Inc,” which makes Respondent appear commonly known by the <homedepo.com> domain name, Respondent offers no additional affirmative evidence that it is actually commonly known by the name. Complainant also argues that it has never given Respondent any authorization, permission, or license to use its THE HOME DEPOT mark within the disputed domain name. Given these factors, the Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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”); AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Respondent’s disputed domain name resolves to a directory site providing a listing of hyperlinks to third-party sites offering appliances and home improvement goods in direct competition with Complainant’s business. Respondent likely receives click-through fees from these third-party links. The Panel finds that Respondent’s use of the disputed domain name to host a directory website leading Internet users to competing websites 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was 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)); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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.
Complainant claims that Respondent registered and is using the <homedepo.com> domain name for the purpose of disrupting Complainant’s business in the home improvement industry. Internet users intending to purchase Complainant’s home improvement goods and services may find Respondent’s website and purchase similar goods from one of the competing third-party sites instead. The Panel holds that this operation does disrupt Complainant’s business and is evidence of bad faith registration and use 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 David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Respondent uses a confusingly similar domain name to operate a directory website which reroutes Internet user to third-party websites advertising products in the same home improvement industry as Complainant. The Panel finds that this creates a likelihood of confusion for Internet users as to Complainant’s sponsorship of, or affiliation with, the disputed domain name and hyperlinks. Respondent uses this confusion in order to commercially gain through the receipt of click-through fees. The Panel concludes that Respondent registered and is using the <homedepo.com> domain name in bad faith 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 Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
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 <homedepo.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: October 28, 2011
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