Homer TLC, Inc. v. Aphinan Sopantragul
Claim Number: FA1111001417188
Complainant is Homer TLC, Inc. (“Complainant”), represented by Richard J. Groos of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Aphinan Sopantragul (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myhomedepotaccountinfo.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he 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 November 23, 2011; the National Arbitration Forum received payment on November 23, 2011.
On November 28, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <myhomedepotaccountinfo.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 November 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 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@myhomedepotaccountinfo.com. Also on November 28, 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 December 28, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <myhomedepotaccountinfo.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark.
2. Respondent does not have any rights or legitimate interests in the <myhomedepotaccountinfo.com> domain name.
3. Respondent registered and used the <myhomedepotaccountinfo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Homer TLC, Inc., uses the HOME DEPOT mark in connection with its home improvement retail stores and related goods and services, including tools and tool rental. Complainant owns a trademark registration for the HOME DEPOT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,314,081 registered February 1, 2000).
Respondent, Aphinan Sopantragul, registered the <myhomedepotaccountinfo.com> domain name on June 17, 2011. The disputed domain name resolves to a directory website providing a listing of hyperlinks to websites providing financial services similar to those provided by Complainant at its website at the <myhomedepotaccount.com> domain name.
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 owns a trademark registration for the HOME DEPOT mark with the USPTO (Reg. No. 2,314,081 registered February 1, 2000). In previous cases, panels have determined that registering a mark with the USPTO sufficiently establishes a complainant’s rights in a mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO). Previous cases have also determined that a complainant can establish rights in its mark under Policy ¶ 4(a)(i) even if the mark is not registered in the country of Respondent. 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). The Panel thus concludes that Complainant has proven it has rights in the HOME DEPOT mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <myhomedepotaccountinfo.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark because the addition of the generic terms “my,” “account,” and “info,” as well as the addition of the generic top-level domain (“gTLD”) “.com,” does not negate the confusing similarity between the disputed domain name and Complainant’s mark. The Panel also notes that the space between the terms of Complainant’s mark has been removed in the disputed domain name. Past panels have found that adding generic terms to a complainant’s mark is insignificant when analyzing confusing similarity. See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark). In previous UDRP cases, panels have also held that removing a space between terms and adding a gTLD is irrelevant to a confusingly similar analysis. 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)). The Panel accordingly determines that Respondent’s <myhomedepotaccountinfo.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is proven.
Policy ¶ 4(a)(ii) requires Complainant to first establish a prima facie case against Respondent before shifting the burden to Respondent to demonstrate its rights and legitimate interests in the disputed domain name. Complainant’s presentation of a prima facie case in these proceedings and Respondent’s subsequent failure to respond are sufficient for the Panel to conclude that Complainant’s allegations are true and that Respondent lacks rights and legitimate interests in the disputed domain name. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent’s failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel elects, however, to consider the evidence in record to determine whether Complainant has any rights and legitimate interests in the disputed domain name.
Complainant asserts that Respondent has no relationship, affiliation, connection, endorsement or association with Complainant and that Respondent has never received any authorization, permission or license from Complainant to use the HOME DEPOT mark in any way. Complainant also alleges that there is no evidence in the WHOIS information, which identifies the registrant as “Aphinan Sopantragul,” to suggest that Respondent is commonly known by the disputed domain name. Based on Complainant’s arguments and the lack of a response by Respondent, the Panel concludes that Respondent is not commonly known by the disputed domain name and consequently lacks rights and legitimate interests pursuant to 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent’s <myhomedepotaccountinfo.com> domain name resolves to a directory website providing a listing of hyperlinks to websites providing financial information services similar to those provided by Complainant at its <myhomedepotaccount.com> domain name. The screenshots provided by Complainant show links with titles such as “online banking,” “online merchant account,” “credit report,” “payment online,” “credit card processing,” etc. Complainant argues that Respondent receives compensation each time an Internet user clicks on one of the search links. The Panel finds that hosting these links at the disputed domain name does not constitute a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)).
The Panel finds Policy ¶ 4(a)(ii) is proven.
Complainant makes no allegations regarding Respondent’s <myhomedepotaccountinfo.com> domain name under Policy ¶ 4(b)(iii). Complainant does argue, however, that Respondent’s disputed domain name resolves to a website featuring a variety of pay-per-click advertising competing financial services similar to those offered by Complainant. The Panel finds that these pay-per-click link advertisements facilitate competition with Complainant by diverting consumers away from Complainant and toward competitors. The Panel finds that this use demonstrates bad faith registration and use according to Policy ¶ 4(b)(iii). See 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)(iii) 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); see also 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)).
Complainant also makes no allegations under Policy ¶ 4(b)(iv). As the screenshot shows the resolving website displaying a variety of third-party pay-per-click links, however, the Panel infers that Respondent uses the disputed domain names and these pay-per-click links generate revenue for Respondent. The Panel further determines that Respondent uses the HOME DEPOT mark in the disputed domain name to attract consumers and create a likelihood of confusion as to Respondent’s affiliation or association with Complainant, all for the purpose of increasing Respondent’s potential for profit. The Panel accordingly concludes that Respondent’s actions in connection with the disputed domain name demonstrate bad faith registration and use under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Complainant asserts that Respondent registered and uses the <myhomedepotaccountinfo.com> domain name in bad faith because Respondent had knowledge of Complainant’s rights in the HOME DEPOT mark prior to registering the disputed domain name. Complainant argues that Respondent’s use of the mark in the domain name, the references to Complainant’s stores and products on the resolving website, and Complainant’s registration of its mark with the USPTO all serve as evidence that Respondent has actual and/or constructive notice of Complainant’s rights at the time it registered the disputed domain name. While prior panels have found that constructive knowledge is insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual knowledge prior to registering the disputed domain name, which indicates bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel finds Policy ¶ 4(a)(iii) is proven.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myhomedepotaccountinfo.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 5, 2012
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