national arbitration forum

 

DECISION

 

Homer TLC, Inc. v. Arpagron Torsuwun

Claim Number: FA1111001416608

 

PARTIES

Complainant is Homer TLC, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA.  Respondent is Arpagron Torsuwun (“Respondent”), Thailand.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <homedepotlightingfixtures.com>, registered with Tucows, 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 November 21, 2011; the National Arbitration Forum received payment on November 21, 2011.

 

On November 22, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <homedepotlightingfixtures.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 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@homedepotlightingfixtures.com.  Also on November 23, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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, 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 <homedepotlightingfixtures.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark.

 

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

 

3.    Respondent registered and used the <homedepotlightingfixtures.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Homer TLC, Inc., began using its HOME DEPOT mark in connection with its home improvement retail stores and services in 1979.  Complainant owns a trademark registration for its HOME DEPOT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,314,081 registered February 1, 2000) and the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA511200 registered April 28, 1999).

 

Respondent, Arpagron Torsuwun, registered the <homedepotlightingfixtures.com> domain name on November 29, 2010.  The disputed domain name resolves to a website that advertises and provides hyperlinks to websites that sell lighting fixtures that directly compete with the lighting fixtures Complainant sells in its home improvement retail stores.

 

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 claims rights in its HOME DEPOT mark under Policy ¶ 4(a)(i).  In support of this claim, Complainant provides evidence of its trademark registrations for its HOME DEPOT mark with the USPTO (Reg. No. 2,314,081 registered February 1, 2000) and CIPO (Reg. No. TMA511200 registered April 28, 1999).  While Respondent resides or operates in Thailand and Complainant does not provide evidence of a trademark in Thailand, the Panel determines that Complainant need only demonstrate a trademark registration with a national trademark authority in order to prove rights in its mark.  See 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); 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).  Therefore, the Panel concludes that Complainant has established its rights in the HOME DEPOT mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO and CIPO.  See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO); see also Irwin Fin. Corp. v. Belize Domain WHOIS Service Lt, FA 1028759 (Nat. Arb. Forum Aug. 23, 2007) (“The Panel finds that Complainant’s registration of the IRWIN mark with the USPTO and the CIPO sufficiently establish its rights in the mark pursuant to Policy ¶ 4(a)(i).”).

 

Complainant argues that Respondent’s <homedepotlightingfixtures.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark.  Complainant contends that the addition of the descriptive terms “lighting” and “fixtures” to Complainant’s mark does not negate the confusing similarity between the disputed domain name and Complainant’s mark.  Complainant further claims that the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis.  The Panel notes that the disputed domain name also does not contain the space found separating the terms of Complainant’s mark.  The Panel agrees with Complainant’s arguments and determines that the addition of descriptive terms and the gTLD “.com” and the removal of a space all fail to remove the <homedepotlightingfixtures.com> domain name from the realm of confusing similarity pursuant to Policy ¶ 4(a)(i).  See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also 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)); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).

 

The Panel finds Complainant satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have any rights or legitimate interests in the <homedepotlightingfixtures.com> domain name.  The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).  The Panel finds Complainant has made a sufficient prima facie case.  Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <homedepotlightingfixtures.com> domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 

 

Complainant asserts that Respondent is not commonly known by the <homedepotlightingfixtures.com> domain name.  Complainant alleges that Respondent “has no relationship, affiliation, connection, endorsement or association with [Complainant].”  Moreover, Complainant claims that Respondent “never requested or received any authorization, permission or license from [Complainant] to use the HOME DEPOT Marks in any way.”  Complainant presents the WHOIS information, which identifies “Arpagron Torsuwun” as the registrant of the disputed domain name.  As Respondent did not respond to this case, Respondent presents no evidence to contradict Complainant’s arguments.  Therefore, the Panel concludes that Respondent is not commonly known by the <homedepotlightingfixtures.com> domain name under Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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).

 

Complainant contends that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <homedepotlightingfixtures.com> domain name.  Complainant asserts that Respondent’s disputed domain name resolves to a website that advertises lighting fixtures and provides hyperlinks to websites where Internet users may purchase the lighting fixtures.  As Complainant sells similar lighting fixtures at its home improvement retail stores, Complainant argues that such a use directly competes with Complainant’s business.  Based on this evidence, the Panel finds that Respondent’s use of the <homedepotlightingfixtures.com> domain name is  neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).  See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. 

 

The Panel finds Complainant satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent’s registered and uses the <homedepotlightingfixtures.com> domain name in bad faith under Policy ¶ 4(b)(iii).  Complainant contends that Respondent’s disputed domain name resolves to a website that hosts advertisements for lighting fixtures and that Respondent provides hyperlinks to websites that sell the lighting fixtures.  Complainant asserts that it sells the same lighting fixtures and that Respondent’s use of the disputed domain name competes with Complainant’s business.  The Panel agrees with Complainant’s analysis and holds that Respondent registered and uses the <homedepotlightingfixtures.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).  See 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); see also 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).”).

 

Complainant further asserts that Respondent commercially benefits from the advertisements and hyperlinks.  As the evidence in the record shows that Respondent registered a confusingly similar domain name and used the domain name to offer competing hyperlinks from which Respondent profited, the Panel determines that Respondent attempts to create confusion as to Complainant’s affiliation with Respondent’s <homedepotlightingfixtures.com> domain name and attempts to profit from that confusion.  Therefore, the Panel finds that Respondent registered and uses the <homedepotlightingfixtures.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 Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).

 

The Panel finds Complainant satisfied Policy ¶ 4(a)(iii).

 

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

 

 

Bruce E. Meyerson, Panelist

Dated:  December 27, 2011

 

 

 

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