Homer TLC, Inc. v. Global365 / Barry Peterson
Claim Number: FA1202001429018
Complainant is Homer TLC, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Global365 / Barry Peterson (“Respondent”), New Mexico, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotlocations.biz>, registered with eNom, Inc.
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 Honorable Charles K. McCotter, Jr. (Ret.) 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 14, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <homedepotlocations.biz> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 February 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 7, 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.biz. Also on February 16, 2012, 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 March 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 contentions:
a) Complainant has rights in the HOME DEPOT mark;
b) Complainant uses its mark in connection with home improvement retail stores and products;
c) Respondent registered the <homedepotlocations.biz> domain name on July 3, 2011;
d) The <homedepotlocations.biz> domain name is confusingly similar to the HOME DEPOT mark;
e) Respondent is not commonly known by the <homedepotlocations.biz> domain name;
f) The <homedepotlocations.biz> domain name resolves to a website which purports to be a guide to Complainant’s store locations, phone, and maps;
g) The <homedepotlocations.biz> domain name is not used for a bona fide offering of goods or services nor a legitimate noncommercial or fair use;
h) The <homedepotlocations.biz> domain name was intended to divert Internet users from Complainant’s website to Respondent’s website;
i) Respondent meant to take commercial advantage of Internet users’ mistakes as to the source of the disputed domain name;
j) Respondent had actual and constructive knowledge of Complainant’s rights in the HOME DEPOT mark.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the HOME DEPOT mark in connection with home improvement retail stores and products.
Respondent registered the <homedepotlocations.biz> domain name on July 3, 2011. The <homedepotlocations.biz> domain name resolves to a website which purports to be a guide to Complainant’s store locations, phone, and maps; however, the website displays links to 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.
(4) 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 contends that it has rights in the HOME DEPOT mark, which it uses in connection with home improvement retail store services and related products. Complainant registered the HOME DEPOT mark (Reg. No. 2,314,081 registered February 1, 2000) through the United States Patent and Trademark Office (“USPTO”). The Panels in Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), and Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), found that the registration of a mark with a trademark authority is sufficient to demonstrate rights in a mark. Therefore, the Panel finds that Complainant has rights in the HOME DEPOT mark pursuant to Policy ¶ 4(a)(i).
Complainant next contends that the <homedepotlocations.biz> domain name is confusingly similar to Complainant’s HOME DEPOT mark. Respondent simply took Complainant’s mark, deleted the spaces between words, added the generic term “locations,” and added the generic top-level domain (“gTLD”) “.biz” in order to create the disputed domain name. The Panel finds that the addition of a generic term fails to make a disputed domain name distinct from a mark. See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). The Panel finds that the deletion of spaces and addition of a gTLD are irrelevant to a determination of confusing similarity. 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 [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); 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 thus finds that Respondent’s <homedepotlocations.biz> domain name is confusingly similar to Complainant’s HOME DEPOT mark under Policy ¶ 4(a)(i).
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.”).
Complainant argues that Respondent is not commonly known by the disputed domain name. Complainant contends that Respondent is not affiliated with Complainant and has not been granted permission to use the HOME DEPOT mark in the disputed domain name. Further, the WHOIS record lists “Global365 / Barry Peterson” as the domain name registrant for the <homedepotlocations.biz> domain name. The panels in Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), held that a determination of whether a respondent is commonly known by a disputed domain name is made by considering all relevant information on record including the complainant’s contentions and the WHOIS record for the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent is not using the disputed domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant asserts that the disputed domain name resolves to a website which purports to be a guide to Complainant’s store locations, phone, and maps while it actually is filled with links to Complainant’s competitors. Panels have found that the display of competing links on a disputed domain name is not a use which provides the respondent with rights or legitimate interests in the disputed domain name. See 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 that this use of the disputed domain name does not constitute 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 Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark). Therefore, 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 or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith. Complainant contends that Respondent registered and uses the disputed domain name to divert Internet users from Complainant’s website to its own website as evidenced by the confusing similarity of the domain name and the competing links on the disputed domain name’s resolving website. Panels have found that the display of competing links is a disruptive use of a disputed domain name. 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).”). The Panel therefore finds that Respondent’s use of the <homedepotlocations.biz> domain name to display links which compete with Complainant’s business is disruptive under Policy ¶ 4(b)(iii).
Complainant asserts that Respondent’s registration and use of the disputed domain name was meant to create confusion as to the source, sponsorship, or affiliation of the disputed domain name and to take commercial advantage of Internet users’ mistakes regarding this confusion. Complainant alleges that the <homedepotlocations.biz> domain name resolves to a website which purports to be a guide to Complainant’s store locations, phone, and maps. Complainant claims that the <homedepotlocations.biz> domain name is actually rife with links to Complainant’s competitors for which Respondent receives compensation for displaying. The Panel infers that Respondent is compensated for the display of the competing links. The Panel find that Respondent acted in bad faith under Policy ¶ 4(b)(iv) as Respondent registered and uses the <homedepotlocations.biz> domain name in order to take commercial advantage of Internet users’ mistakes regarding the source, sponsorship, or affiliation of the disputed domain name. See 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); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the HOME DEPOT mark. Complainant argues that Respondent’s use of the HOME DEPOT mark in the domain name and on the resolving website, the display of competitive content, and the long-standing rights of Complainant in the mark indicate that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights. Therefore Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
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.biz> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 30, 2012
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