national arbitration forum

 

DECISION

 

Homer TLC, Inc. v. Peter Srichan

Claim Number: FA1112001418984

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <myhomedepotaccountcom.org>, registered with 1 & 1 Internet, AG.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 7, 2011; the National Arbitration Forum received payment on December 8, 2011.

 

On December 9, 2011, 1 & 1 Internet, AG confirmed by e-mail to the National Arbitration Forum that the <myhomedepotaccountcom.org> domain name is registered with 1 & 1 Internet, AG and that Respondent is the current registrant of the name.  1 & 1 Internet, AG has verified that Respondent is bound by the 1 & 1 Internet, AG 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 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2012 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@myhomedepotaccountcom.org.  Also on December 13, 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 11, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant operates retail stores throughout the U.S. specializing in home improvement supplies and services.

 

Complainant owns registrations for the HOME DEPOT service mark, on file with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,314,081, registered February 1, 2000).

 

Respondent registered the <myhomedepotaccountcom.org> domain name on February 3, 2004.

 

The disputed domain name resolves to a website containing pay-per-click links to websites unrelated to Complainant’s business.

 

Respondent’s <myhomedepotaccountcom.org> domain name is confusingly similar to Complainant’s HOME DEPOT mark.

 

Respondent is not commonly known by the <myhomedepotaccountcom.org> domain name.  

Complainant has no relationship with Respondent and has not authorized Respondent to use the HOME DEPOT service mark in any way.

 

Respondent does not have any rights to or legitimate interests in the domain name <myhomedepotaccountcom.org>.

 

Respondent registered and uses the <myhomedepotaccountcom.org> domain name in bad faith.

 

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

 

FINDINGS

(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.

 

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 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.

 

Identical and/or Confusingly Similar

 

Complainant has rights in its HOME DEPOT service mark Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO.  See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where a complainant had submitted evidence of its registration of a mark with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).

 

To establish its rights in a mark under Policy 4(a)(i), Complainant need not register the mark in the country where Respondent is located. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish such rights in some jurisdiction). 

 

Respondent’s <myhomedepotaccountcom.org> domain name is confusingly similar to Complainant’s HOME DEPOT service mark because the disputed domain name merely combines the mark with the generic terms “my”, “account”, and “com,” removes the space between the terms of Complainant’s mark,  and adds the generic top-level domain (“gTLD”) “.org”.  These alterations of the mark in forming the domain name do not avoid a finding of confusingly similar under Policy ¶ 4(a)(i).  See, for example, Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the mark of a complainant combined with a generic word or term);  see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”);  further see Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), finding that:

 

spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the Panel finds that the disputed domain name is confusingly similar to the complainant’s mark.

 

The Panel therefore concludes that Respondent’s contested domain name <myhomedepotaccountcom.org> is confusingly similar to Complainant’s HOME DEPOT service mark pursuant to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must present a prima facie showing that Respondent lacks rights to and legitimate interests in the contested domain name, whereupon the burden shifts to Respondent to demonstrate that it has such rights or interests.   See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000):

 

Although Paragraph 4(a) of the policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on the factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.

 

Complainant has made out the requisite prima facie showing under this head of the Policy.  Therefore, and because Respondent has failed to submit a response to the allegations of the Complaint filed in this proceeding, we may presume that Complainant’s contentions are true and that Respondent lacks both rights to and legitimate interests in the contested domain name.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1298 (WIPO Dec. 21, 2000) (finding that failing to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence).  Nonetheless, we will examine the evidence 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 Respon-dent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.

 

We begin by observing that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the domain name <myhomedepotaccountcom.org>, and that Complainant has no relationship with Respondent and has not authorized Respondent to use the HOME DEPOT service mark in any way.  Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Homer TLC, Inc.,” which does not resemble the <myhomedepotaccountcom.org> domain name. On this record, we conclude that Respondent is not commonly known by the disputed domain name and consequently lacks rights to and legitimate interests in the domain under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent had failed to establish rights to or legitimate interests in the disputed <emitmortgage.com> domain name under Policy ¶ 4(c)(ii) where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name)

 

We also note that Complainant contends, without objection from Respondent, that Respondent’s <myhomedepotaccountcom.org> domain name resolves to a website displaying pay-per-click links to websites unrelated to Complainant’s business.  In the circumstances here presented, we may comfortably presume that Respondent profits from the visits of Internet users to the websites resolving from these pay-per-click links.  Respondent’s use of the disputed domain name in this manner 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website via a domain name confusingly similar to the mark of another 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)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb.  Forum June 8, 2007) (concluding that the operation of a pay-per-click website via a domain name that was confusingly similar to the mark of another does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether a respondent is profiting commercially from click-through fees).

 

The Panel thus concludes that Complainant has satisfied Policy ¶4(a)(ii).

Registration and Use in Bad Faith

 

Respondent has shown bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iv) by using Complainant’s HOME DEPOT service mark in a domain to resolve to a website featuring pay-per-click links to third-party websites unrelated to the business of Complainant.  See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); and see 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).

 

For this reason, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

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 <myhomedepotaccountcom.org> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  January 25, 2012

 

 

 

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