Homer TLC, Inc. v. Andy Dorrani / HomeDept.com Inc.
Claim Number: FA1202001429319
Complainant is Homer TLC, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Andy Dorrani / HomeDept.com Inc. (“Respondent”), represented by Borghese Legal, Ltd., Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedept.com>, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 13, 2012; the National Arbitration Forum received payment on February 13, 2012.
On February 14, 2012, Moniker Online Services, LLC confirmed by e-mail to the National Arbitration Forum that the <homedept.com> 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 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 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@homedept.com. Also on February 22, 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.
A timely Response was received and determined to be complete on March 12, 2012.
Complainant submitted an Additional Submission that was timely received on March 16, 2012.
Respondent submitted an Additional Submission that was received on March 20, 2012.
All submissions were considered by the Panel.
On March 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is the owner of the HOME DEPOT and THE HOME DEPOT trademarks, which it uses in connection with home improvement retail store services and related goods and services.
2. Complainant owns United States Patent and Trademark Office registrations for the HOME DEPOT mark (Reg. No. 2,314,081 filed Dec. 7, 1998, registered Feb. 1, 2000) and the THE HOME DEPOT mark (e.g., Reg. No. 1,152,625 registered Apr. 28, 1981)
3. Respondent’s <homedept.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark.
4. Respondent has no relationship, affiliation, connection or association with Complainant.
5. There is no evidence in the WHOIS information to suggest that Respondent is known by the <homedept.com> domain name.
6. The website resolving from Respondent’s <homedept.com> domain name provides links to other third-party websites for home improvement goods and services that compete with Complainant, which generate profit for Respondent.
7. Respondent’s disputed domain name diverts consumers seeking Complainant’s products to competing businesses.
8. Respondent had constructive knowledge of Complainant’s rights in the THE HOME DEPOT and HOME DEPOT marks due to Complainant’s numerous USPTO trademark registrations.
B. Respondent
1. The <homedept.com> domain name is not identical or confusingly similar to Complainant’s HOME DEPOT mark because it represents shorthand for “Home Department,” which is not a mere misspelling of Complainant’s mark but an actual commonly used abbreviation.
2. The disputed domain name was purchased in December 1999 with the intent of building a website to replicate a home department store specializing in home furnishings, home décor, home audio and home theater systems.
3. After many years developing the idea, Respondent settled on offering products through Volusion, an all-in-one e-commerce solution, and later through <Dropship-Business.com>.
4. Respondent incorporated HomeDept.com Inc. in California and opened for business in 2007.
5. During a short break in 2011 in which Respondent was working on relaunching the website, the disputed domain name was temporarily parked with a parking service, and the current parking page shows only electronics.
6. In 2012, Respondent partnered with Doba, a drop shipping company, and began putting together a new website.
7. Respondent is commonly known by the <homedept.com> domain name and has made a bona fide offering of goods or services.
8. Complainant’s substantial delay in taking action against Respondent is a factor favoring Respondent, indicating that Respondent’s lengthy use of the disputed domain name has not caused problems for Complainant.
9. Respondent has not registered or used the disputed domain name in bad faith as it has not demonstrated any of the Policy ¶ 4(b) factors, is not a competitor of Complainant and has not created a likelihood of confusion.
C. Complainant alleges the following in its Additional Submission:
1. The <homedept.com> domain name is confusingly similar to the HOME DEPOT mark despite the fact that the “misspelling could imply a different meaning to some consumers.”
2. Respondent registered the disputed domain name on December 8, 1999.
3. The disputed domain name currently resolves to a parking website that displays sponsored links to competing home improvement companies and previously resolved to an e-commerce website also offering similar and competing home improvement products.
4. Respondent has failed to demonstrate a legitimate interest in the disputed domain name as it is unable to show that it operates a business commonly known by the name HomeDept.com.
5. Respondent’s incorporation of HomeDept.com Inc. in California occurred eight years after the disputed domain name’s registration.
6. Respondent did not add “HomeDept.com Inc.” to the WHOIS information until just a few months ago.
7. The registrant previously listed in the WHOIS, Andy Dorrani, operates VarietyDomains.com Inc. as his primary business, which advertises selling high profile domain names to clients.
8. The chronology of Respondent’s use of the disputed domain name is as follows: a “coming soon” page from the registration date until December 2001, a DomainSystems.com page stating “This Domain is for Sale!” in 2002 until November 2003, a parking website with pay-per-click links to competitors from November 2003 until March 2009, a retail home improvement website offering competing products through 2010 and most of 2011, and a parking page again from the end of 2011 to the present.
9. The design and layout of the e-commerce site hosted during 2010 and 2011 largely replicated the design and layout of Complainant’s own retail site.
10. Respondent has a pattern of alleging that he intends to start a business that will justify registration of an infringing domain name.
11. Respondent owns over 3,000 domain names, many of which incorporate famous trademarks.
12. Respondent’s asserted defense of laches does not apply in UDRP proceedings.
D. Respondent alleges the following in its Additional Submission:
1. Complainant’s allegation that “HomeDept.com Inc.” was added to the WHOIS record only in October 2011 is unsubstantiated and inaccurate.
2. Complainant’s statement that Respondent owns 3,000 domain names, many of which incorporate famous trademarks, is false.
3. Complainant’s chronology of Respondent’s use of the disputed domain name is fabricated.
4. Complainant’s assertions that Respondent has not made a legitimate use of the domain name for twelve years are contradicted by substantial evidence from Respondent and Complainant’s own admissions of use.
For the reasons set forth below, the panel finds Complainant is not entitled to relief.
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."
Respondent alleges that its <homedept.com> domain name is not confusingly similar to Complainant’s HOME DEPOT mark. Respondent asserts that, in contrast with Complainant’s marks all consisting of the words “Home” and “Depot,” Respondent’s disputed domain name is shorthand for “Home Department.” Respondent further contends that changing a single letter in the disputed domain name is often enough to avoid confusing similarity, especially when the change results not in a simple misspelling of Complainant’s mark but in another word, such as an abbreviation for the common phrase “Home Department” in this case. See eCrush.com, Inc. v. Cox, Davis & Simpson, LLC, D2004-0552 (WIPO Sept. 11, 2004) (holding that the disputed domain name was not identical or confusingly similar to the complainant’s mark because “[t]he one-letter change is not a misspelling of Complainant’s mark that results in an otherwise nonsensical word or phrase” but instead results in an “everyday phrase[] incorporating the name of the parlor game”); see also iLeads.com LLC v. Elec. Mktg. Sys., Inc., FA 187636 (Nat. Arb. Forum Oct. 13, 2003) (finding that the <aleads.com> domain name was not confusingly similar to the complainant’s ILEADS.COM mark because the letters “a” and “i” are not close to each other on the keyboard, do not look alike, and are not commonly substituted for each other).
The addition or deletion of a single letter commonly creates a different word. Because of the difference in this case between Depot and Dept., the Panel finds the domain name is not identical or confusingly similar to Claimant’s mark.
Complainant has not proven this element.
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 notes that the WHOIS information identifies the registrant as “Andy Dorrani / HomeDept.com Inc.,” which indicates a relationship between Respondent and the disputed domain name.
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent states that the WHOIS information plainly states that the registrant is “HomeDept.com Inc.” Respondent also argues that it is an active California corporation registered under the name “HomeDept.com Inc.” for more than five years. Respondent argues in its Additional Submission that although it is unaware exactly when “HomeDept.com Inc.” was added to the WHOIS, it was long before October 2011. Respondent also contends in the Additional Submission that as Complainant filed its UDRP action without warning, the fact that the WHOIS record clearly showed Respondent’s company as owner prior to the filing of the action is evidence in favor of Respondent. Respondent therefore contends that it is commonly known by the disputed domain name under Policy ¶ 4(c)(ii) and the Panel agrees. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that as the respondent had registered its domain name as its business identity with the New York County Clerk a month after registering the domain name and then conducted his prop rental business under that name, it had demonstrated rights and legitimate interests in the domain name).
Complainant has not proven this element.
Since the Panel has concluded that Respondent has rights or legitimate interests in the <homedept.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Complainant has not proven this element.
Laches
Because Complainant has not established the required elements, the Panel has not considered Respondent’s laches argument.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is ORDERED that the <homedept.com> domain name REMAIN WITH Respondent.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 28, 2012
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