Homer TLC, Inc. v. Sveinung Skoglund / SveinungSkoglund.com
Claim Number: FA1202001429022
Complainant is Homer TLC, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Sveinung Skoglund / SveinungSkoglund.com (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotcoupon.org>, registered with eNom.com.
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, eNom.com confirmed by e-mail to the National Arbitration Forum that the <homedepotcoupon.org> domain name is registered with eNom.com and that Respondent is the current registrant of the name. eNom.com has verified that Respondent is bound by the eNom.com 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@homedepotcoupon.org. 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 makes the following contentions:
a) Complainant has rights in the HOME DEPOT mark;
b) The HOME DEPOT mark is used in connection with home improvement retail store services and related goods and services;
c) The HOME DEPOT mark (Reg. No. 2,314,081 registered February 1, 2000) is registered with the United States Patent and Trademark Office (“USPTO”);
d) The <homedepotcoupon.org> domain name is confusingly similar to the HOME DEPOT mark;
e) Respondent has no right or legitimate interest in the disputed domain name as it is not commonly known by the <homedepotcoupon.org> domain name and there is no other ground giving rise to such a right or legitimate interest;
f) Respondent registered the disputed domain name on March 5, 2010;
g) The <homedepotcoupon.org> domain name resolves to a website which purports to be an informational website but which contains numerous sponsored linking advertisements which relate to Complainant’s competitors;
h) Respondent receives compensation for the hosting of these advertisement links;
i) Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use;
j) Respondent is seeking to divert Internet users from Complainant’s website to its own;
k) Respondent intended to cause confusion as to the source of the <homedepotcoupon.org> domain name and to take commercial advantage of Internet users’ mistakes regarding that confusion;
l) Respondent had constructive knowledge of Complainant’s rights in the HOME DEPOT mark prior to the registration and use of the <homedepotcoupon.org> domain name; and
m) For these and other reasons the Panel should conclude that Respondent registered and has used 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, including trademark registered No. 2,314,081 registered on February 1, 2000 with the United States Patent and Trademark Office (“USPTO”) for HOME DEPOT (“the HOME DEPOT mark”).
3. Respondent registered the disputed domain name on March 5, 2010. It resolves to a website with links to goods and services promoted by competitors of Complainant.
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 argues that it has rights in the HOME DEPOT mark which it uses in connection with home improvement retail stores and products. Complainant contends that it registered the HOME DEPOT mark with the USPTO (Reg. No. 2,314,081 registered February 1, 2000). Panels have found that registration of a mark with a trademark authority, regardless of the location of the parties, is sufficient ground on which to claim rights in a mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a) (i)); see also 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). The Panel thus finds that Complainant has rights in the HOME DEPOT mark under Policy ¶ 4(a) (i).
Complainant then contends that <homedepotcoupon.org> domain name is confusingly similar to the HOME DEPOT mark. 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 term such as “coupon” fails to distinguish the disputed domain name from the mark, especially where 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 was referring to the trademark being used in conjunction with the generic item. In the present case, Complainant is one of the most well-known retail companies and internet users would naturally assume that it used retail coupons in its business. Internet users would therefore assume that the domain name <homedepotcoupon.org> referred to an official domain name of Complainant relating to the use of coupons in its business. 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).
Additionally, the Panel finds that Respondent’s deletion of the space between words and the addition of the generic top-level domain (“gTLD”) “.org” is irrelevant in determining 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 therefore finds that Respondent’s <homedepotcoupon.org> domain name is confusingly similar to the HOME DEPOT mark pursuant to Policy ¶ 4(a) (i) and that Complainant has established the first of the three elements that it must prove.
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 “coupon” which describes a standard feature of the operations of large retail enterprises such as Complainant , thus enhancing the notion that the domain name is an official domain name of Complainant;
(c) Respondent has, according to the evidence, linked the domain name to a website which in turn resolves to other sites that advertise the goods and services of Complainant’s competitors;
(d) 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, 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 “Sveinung Skoglund / SveinungSkoglund.com” as the domain name registrant. Thus, Respondent is not commonly known by the <homedepotcoupon.org> 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).
Moreover, as Complainant contends and the Panel finds, 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. Complainant asserts that the <homedepotcoupon.org> domain name resolves to a website which purports to be an informational website but which displays numerous link advertisements to Complainant’s competitors. 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.
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 right or legitimate interest 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 asserts that Respondent’s registration and use of the <homedepotcoupon.org> domain name is meant to divert Internet users seeking Complainant to its own website by displaying links advertising Complainant’s competitors and that this constitutes bad faith. Panels have found that the display of competing links disrupts a complainant’s business and hence constitutes bad faith. See 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)); see also 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). As the Panel finds that Respondent’s registration and use of the <homedepotcoupon.org> domain name is disruptive, the Panel accordingly finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b) (iii).
Complainant contends that Respondent’s bad faith is also demonstrated by its intent to take commercial advantage of Internet users’ mistakes as to the source of the disputed domain name. Complainant argues that Respondent’s <homedepotcoupon.org> domain name resolves to a website purporting to be an informational site but which is filled with advertising links to Complainant’s competitors for which Respondent receives compensation. Complainant alleges that there is an obvious link between the contents of the <homedepotcoupon.org> domain name’s resolving website and Complainant’s HOME DEPOT mark. The Panel finds on the balance of probabilities that Respondent receives compensation for hosting these competing links on the disputed domain name. The Panel therefore finds for all of those reasons that Respondent intended to take commercial advantage of Internet users’ mistakes regarding the confusion about the source of the <homedepotcoupon.org> domain name and to trade on that confusion for its own commercial advantage. 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).”). The Panel; therefore finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b) (iv).
Complainant also asserts that its trademark registrations for the HOME DEPOT mark existed around the world prior to the registration of the disputed domain name. Complainant contends that Respondent had Complainant’s mark in mind when it registered the confusingly similar domain name with competing content and that such an inference must be drawn because of the fame of Complainant's mark over many years. The Panel agrees with that submission. The Panel therefore holds that Respondent knew of Complainant’s trademark at the time it registered the disputed domain name and that it did so in bad faith under Policy ¶ 4(a) (iii). See 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).
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 <homedepotcoupon.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC, Panelist
Dated: March 19, 2012
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