Homer TLC, Inc. v. Thanart Chamnanyantarakij
Claim Number: FA1112001418887
Complainant is Homer TLC, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Thanart Chamnanyantarakij (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotcorporateoffice.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 7, 2011; the National Arbitration Forum received payment on December 7, 2011.
On December 7, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <homedepotcorporateoffice.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 December 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 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@homedepotcorp-orateoffice.com. Also on December 8, 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 January 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant uses the HOME DEPOT mark in connection with the marketing of home improvement retail store services and related goods and services.
Complainant holds registrations for the HOME DEPOT service mark, on file with the United States Patent and Trademark Office (“USPTO”), including Reg. No. 1,152,625, registered April 28, 1981.
Respondent registered the disputed domain name on June 17, 2009.
The disputed domain name resolves to a blog regarding Complainant’s services, which blog also contains pay-per-click links to the websites of Complainant’s business competitors.
Respondent’s <homedepotcorporateoffice.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark.
Respondent does not have any rights to or legitimate interests in the domain name <homedepotcorporateoffice.com>.
Respondent registered and uses the <homedepotcorporateoffice.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in its HOME DEPOT service mark pursuant to Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. 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 Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
It is irrelevant for this purpose that Complainant has registered its mark in the United States while Respondent operates in Thailand. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that in order to confer rights upon a complainant under the Policy, it is not required that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction).
The disputed <homedepotcorporateoffice.com> domain name is confusingly similar to complainant’s HOME DEPOT service mark under Policy ¶ 4(a)(i). The domain name wholly includes Complainant’s mark, while deleting the space between the terms of the mark and adding the generic terms “corporate” and “office,” and the generic top-level domain (“gTLD”) “.com.” To begin with, affixation of a gTLD to the mark of another in forming a domain name is not relevant to a confusing similarity analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name, such as “.net” or “.com,” does not affect the domain name for purposes of determining whether it is identical or confusingly similar to a competing mark).
Similarly, the addition of generic terms to a complainant’s mark, such as “corporate” and “office,” in creating a domain name is also insufficient to distinguish the domain name under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contained the identical mark of a complainant combined with a generic word or term).
Finally, because spaces are impermissible in a domain name, the elimination of the spaces between the terms of a mark in creating a domain name cannot distinguish the domain name from the mark from which it was derived. 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 of the mark of another and the addition of a gTLD to form a domain name do not establish distinctiveness from the mark under Policy ¶ 4(a)(i)).
The Panel therefore finds that the <homedepotcorporateoffice.com> domain name is confusingly similar to Complainant’s HOME DEPOT service mark under Policy ¶ 4(a)(i).
Complainant carries the initial burden of presenting a prima facie case on the point of Respondent’s lack of rights to or legitimate interests in the contested <homedepotcorporateoffice.com> domain name under Policy ¶ 4(a)(ii). Once Complainant satisfies this obligation, the burden shifts to Respondent to demonstrate that it has such rights or interests. See, for example, Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):
It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
Complainant has made out the requisite prima facie case under this head of the Policy. Therefore, and because Respondent has failed to respond to the allegations of the Complaint filed in this proceeding, we may presume that Respondent lacks both rights to and legitimate interests in the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for a panel to draw adverse inferences from a respondent’s failure to reply to the allegations of a UDRP complaint).
Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has such rights or interests.
We begin by noting that Complainant asserts, and Respondent does not deny, that Complainant has never granted Respondent permission to use its HOME DEPOT service mark in a domain name, and that Respondent is not commonly known by the <homedepotcorporateoffice.com> domain name. Moreover, the WHOIS information for the disputed domain name identifies the registrant only as “Thanart Chamnanyantarakij,” which does not resemble the domain name. On this record, we conclude that Respondent is not commonly known by the disputed domain name so as to have rights to or legitimate interests in the domain pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so had no rights to or legitimate interests in them under Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name, and so was without rights to or legitimate interests in that domain under Policy ¶ 4(c)(ii), based on the pertinent WHOIS information and other evidence in the record).
We next observe that Complainant contends, without objection from Respondent, that Respondent’s use of the disputed domain name to resolve to a blog regarding Complainant’s services, which blog also contains links to the websites of Complainant’s business competitors, does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain pursuant to Policy ¶ 4(c)(iii). We concur. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that a 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 business of a 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 a respondent’s use of domain names confusingly similar to a complainant’s WAL-MART mark to divert Internet users seeking that complainant’s website instead to websites competing with that complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain under Policy ¶ 4(c)(iii)).
The Panel thus concludes that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s website resolving from the disputed domain name contains “pay-per-click” links to the websites of Complainant’s competitors. Respondent’s operation of such a website via a domain name that is confusingly similar to Complainant’s mark will likely confuse Internet users intending to visit Complainant’s website. The registration and use of the disputed domain name for this purpose constitutes disruption of Complainant’s business and therefore evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where a respondent’s website featured hyperlinks to websites competing with the business of a complainant, that respondent’s use of the domain constituted disruption of that complainant’s business, and, therefore, evidence of bad faith registration and use of the domain 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 a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because that respondent used the domain to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business).
Respondent’s registration and use of the <homedepotcorporateoffice.com> domain name as alleged in the Complaint also demonstrates bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name by using one that was confusingly similar to a complainant’s mark to offer links to third-party websites featuring services similar to those offered by that complainant); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website offering links to third-party websites featuring services similar to a complainant’s).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <homedepotcorporateoffice.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 18, 2012
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