Homer TLC, Inc. v. Kiryl Hil
Claim Number: FA1202001428984
Complainant is Homer TLC, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Kiryl Hil (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotlocations.net>, registered with Moniker Online Services, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 10, 2012; the National Arbitration Forum received payment on February 10, 2012.On February 10, 2012, Moniker Online Services, LLC confirmed by e-mail to the National Arbitration Forum that the <homedepotlocations.net> domain name is registered with Moniker Online Services, LLC and that Respondent is the current registrant of the name. Moniker Online Services, LLC has verified that Respondent is bound by the Moniker Online Services, LLC 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 February 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 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@homedepotlocations.net. Also on February 13, 2012, 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 March 15, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant alleges that it owns the HOME DEPOT and the THE HOME DEPOT marks, which it has been using since at least 1979 in connection with home improvement retail store services and related goods and services, including tools and tool rental. Complainant asserts that it has retail stores throughout the U.S. and in the District of Columbia, Puerto Rico, the U.S. Virgin Islands, ten Canadian provinces, Mexico, and China. Complainant argues that it has registered the following marks with the United States Patent and Trademark Office (“USPTO”):
THE HOME DEPOT Reg. No. 1,152,625 registered April 28, 1981;
THE HOME DEPOT Reg. No. 1,188,191 registered January 26, 1982;
THE HOME DEPOT Reg. No. 1,431,636 registered March 10, 1987;
HOME DEPOT Reg. No. 2,314,081 registered February 1, 2000;
THE HOME DEPOT Reg. No. 2,492,817 registered September 25, 2001;
THE HOME DEPOT Reg. No. 2,825,232 registered March 23, 2004.
Complainant further contends that it has registered the THE HOME DEPOT mark with the European Union Office for Harmonization in the Internal Market (“OHIM”):
Reg. No. 002416253 registered March 20, 2003;
Reg. No. 002416949 registered June 13, 2003;
Reg. No. 002920890 registered September 13, 2004;
Reg. No. 007434641 registered May 10, 2010; &
Reg. No. 007430283 registered May 17, 2010.
The foregoing trademarks are referred to collectively as “the Home Depot mark”.
Complainant argues that Respondent’s <homedepotlocations.net> domain name is confusingly similar to the HOME DEPOT mark and that this is so because the domain name consists of the whole of the trademark to which Respondent has added the word “locations” which is a generic word that does nothing to diminish the confusing similarity that otherwise exists between the domain name and the trademark.
Complainant then asserts that Respondent’s disputed domain name resolves to a website purporting to offer information relating to store locations, phone numbers, and interactive driving maps, as well as displaying sponsored advertisements for Complainant’s competitors. Complainant argues that Respondent receives pay-per-click revenue from these advertisements. Complainant also contends that Respondent registered the <homedepotlocations.net> domain name with knowledge of Complainant’s rights in the HOME DEPOT mark. Based on these allegations, Complainant argues that Respondent does not have rights and legitimate interests in the disputed domain name and that it registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a large commercial enterprise incorporated in the United State of America and operating in home improvement retail store services and related goods and services under the famous name Home Depot.
2. Complainant and its associated companies own many United States and international trademarks for HOME DEPOT and THE HOME DEPOT, referred to in more particularity above and including the trademark No. 2,314,081 registered on February 1, 2000 with the USPTO for HOME DEPOT.
3. Respondent registered the disputed domain name on April 18, 2009. It resolves to a website purporting to offer information relating to the location, phone numbers, and interactive driving maps for Complainant’s stores, but also displays sponsored advertisements for Complainant’s competitors.
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."
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.
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.”).
Complainant argues that it has registered the following marks with the USPTO:
THE HOME DEPOT Reg. No. 1,152,625 registered April 28, 1981;
THE HOME DEPOT Reg. No. 1,188,191 registered January 26, 1982;
THE HOME DEPOT Reg. No. 1,431,636 registered March 10, 1987;
HOME DEPOT Reg. No. 2,314,081 registered February 1, 2000;
THE HOME DEPOT Reg. No. 2,492,817 registered September 25, 2001;
THE HOME DEPOT Reg. No. 2,825,232 registered March 23, 2004.
Complainant further contends that it has registered the THE HOME DEPOT mark with OHIM:
Reg. No. 002416253 registered March 20, 2003;
Reg. No. 002416949 registered June 13, 2003;
Reg. No. 002920890 registered September 13, 2004;
Reg. No. 007434641 registered May 10, 2010; &
Reg. No. 007430283 registered May 17, 2010.
The Panel accepts Complainant’s evidence in that regard. As a result of these trademark registrations, the Panel finds that Respondent has rights in the HOME DEPOT mark pursuant to Policy ¶ 4(a) (i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a) (i)); see also Goldfish Card Servs. Ltd. v. M Connolly, FA 1000020 (Nat. Arb. Forum July 11, 2007) (determining that Complainant had rights in its GOLDFISH mark due to its registration of the mark with OHIM).
Complainant argues that Respondent’s <homedepotlocations.net> domain name is identical or confusingly similar to the HOME DEPOT mark because it incorporates the mark entirely and adds only the generic word “locations” and the top-level domain (“gTLD”) “.net.” The Panel finds that the disputed domain name is confusingly similar to the disputed domain name for the following reasons. Incorporating Complainant’s mark without the space between terms and adding only a generic word and gTLD does not produce a disputed domain name distinct from Complainant’s mark pursuant to Policy ¶ 4(a) (i). See 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).”); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark).
In particular, the addition of the generic word “locations” does not diminish the confusing similarity between the domain name and the trademark. The Panel notes first that it is well-established that if a trademark is used as part of a domain name, the addition to the trademark of a generic word such as “locations” fails to distinguish the disputed domain name from the mark, especially where, as in the present case, the generic word is one that is associated with the trademark owner and its business. Indeed, it probably enhances the notion that the domain name is related in some way to the trademark, as internet users would naturally assume that the domain name is referring to the trademark being used in conjunction with the generic item. In the present case, Complainant is one of the best-known retail companies in the world and internet users would naturally assume that as Complainant had included the word “locations” in a domain name based on its famous name, it wanted members of the public to be aware of the location of its stores and how to contact them. Internet users would therefore assume that the domain name <homedepotlocations.net> referred to an official domain name of Complainant relating to the location of its stores. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a) (i)); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).
The Panel therefore concludes that Respondent’s <homedepotlocations.net> domain name is confusingly similar to Complainant’s HOME DEPOT mark for the purposes of Policy ¶ 4(a) (i). Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii) and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has established such a prima facie case. The prima facie case is based on the following considerations:
(a) Respondent has chosen as the major component of its domain name the entirety of Complainant’s trademark, which is one of the most prominent business names in the world;
(b) Respondent has added to it the word “locations” which describes an important feature of the operations of large retail enterprises such as Complainant , namely that it is important for them that customers should be aware of the location of the retailer’s stores and have easy access to them and how to contact them; this enhances the notion that the domain name is an official domain name of Complainant; Respondent has, according to the evidence, linked the domain name to a website purporting to offer information relating to the location, phone numbers, and interactive driving maps for Complainant’s stores, but which also displays sponsored advertisements for Complainant’s competitors and their products, such as Lowe’s, Sears, Harbor Freight, Ace Tool and Conn’s and services such as those provided , for example, for shower conversions and plumbing which are services requested by Complainant’s customers. Using Complainant’s trademark without its permission to promote its competitors and the services provided by them cannot be bona fide or legitimate. Accordingly, Respondent is not using the disputed domain name for either a Policy ¶ 4(c) (i) bona fide offering of goods or services nor a Policy ¶ 4(c) (iii) legitimate noncommercial or fair use. The Panels in ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007), and Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007), held that the display of competing links on a disputed domain name is not a protected use of a disputed domain name. Accordingly, the Panel finds that Respondent is not using the disputed domain name for either a Policy ¶ 4(c) (i) bona fide offering of goods or services nor a Policy ¶ 4(c) (iii) legitimate noncommercial or fair use.
(c) Respondent did not have the approval or authority of Complainant to use its HOME DEPOT trademark in this or any other way.
Moreover, as Complainant establishes on the evidence, Respondent is not commonly known by the disputed domain name and Respondent has no relationship, affiliation, connection, endorsement, or association with Complainant. The WHOIS record lists “Kiryl Hil ” as the domain name registrant. Thus, Respondent is not commonly known by the <homedepotlocations.net> domain name under Policy ¶ 4(c) (ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c) (ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c) (ii) based on the WHOIS information and other evidence in the record).
For all of these reasons, Complainant has made out its prima facie case. As Respondent has not filed a Response and has not tried by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it was also used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
Complainant contends that Respondent uses the <homedepotlocations.net> domain name to advertise Complainant’s competitors in the form of pay-per-click advertisements and that this is an improper use of Complainant’s trademark. The Panel agrees with that submission and finds that Respondent’s use of the disputed domain name disrupts Complainant’s business, which establishes bad faith registration and use 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 also argues that Respondent uses the <homedepotlocations.net> domain name to attract Internet users interested in Complainant’s goods and services to a website which purports to offer information about Complainant’s store locations and phone numbers, but which in addition contains general sponsored links to Complainant’s competitors. The evidence shows that Respondent has linked the domain name to such a website that purports to offer information relating to the location, phone numbers, and interactive driving maps for Complainant’s stores, but it also displays sponsored advertisements for Complainant’s competitors and their products, such as Lowe’s, Sears, Harbor Freight, Ace Tool and Conn’s and services such as those provided in, for example, shower conversion and plumbing which are services requested by Complainant’s customers. Complainant also asserts that Respondent likely receives commercial gain from the operation of the resolving website which the Panel finds is probably the case. The Panel thus determines that Respondent registered the disputed domain name containing Complainant’s mark in order to attract Internet users and create a misleading impression that Respondent is somehow affiliated with Complainant and that this was done for Respondent’s own personal gain. The Panel holds that these activities demonstrate bad faith registration and use pursuant to Policy ¶ 4(b) (iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Complainant also alleges that Respondent had knowledge of Complainant’s rights in the HOME DEPOT mark when registering the disputed domain name because: 1) Respondent used the mark in the domain name to advertise services and goods in competition with Complainant; 2) the resolving website purported to provide information about Complainant’s retail stores; and 3) Complainant had extensively registered and used its HOME DEPOT many years prior to Respondent’s domain name registration. The Panel agrees that the evidence establishes those factual matters and infers as a result that Respondent knew of Complainant’s famous mark and thus registered the <homedepotlocations.net> domain name in bad faith under Policy ¶ 4(a)(iii) and within the generally accepted meaning of that expression. See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) (“That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant’s mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).”).
For all of those reasons, the Panel finds that Respondent registered and has used the disputed domain name in bad faith and that Complainant has made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homedepotlocations.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 19, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page