Homer TLC, Inc. v. Kenny SEO Marketing
Claim Number: FA1204001438582
Complainant is Homer TLC, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Kenny SEO Marketing (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotpaintcolors.net>, registered with GoDaddy, 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 April 9, 2012; the National Arbitration Forum received payment on April 9, 2012.
On April 10, 2012, GoDaddy, LLC confirmed by e-mail to the National Arbitration Forum that the <homedepotpaintcolors.net> domain name is registered with GoDaddy, LLC and that Respondent is the current registrant of the name. GoDaddy, LLC has verified that Respondent is bound by the GoDaddy, 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 April 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 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@homedepotpaintcolors.net. Also on April 11, 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 May 8, 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 made the following contentions:
1. Complainant owns the HOME DEPOT mark, which it uses in connection with home improvement retail store products and services.
2. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its HOME DEPOT mark (e.g., Reg. 2,314,081 registered February 1, 2000).
3. Respondent’s <homedepotpaintcolors.net> domain name is identical and confusingly similar to Complainant’s HOME DEPOT mark.
4. Respondent is not commonly known by the disputed domain name and is not related to Complainant in any way.
5. Respondent’s <homedepotpaintcolors.net> domain name resolves to a directory website that provides sponsored advertisements for Complainant’s competitors, for which Respondent is compensated through click-through fees.
6. Respondent registered and uses the <homedepotpaintcolors.net> domain name in bad faith under Policy ¶ 4(b) (iii).
7. Respondent had actual and constructive knowledge of Complainant’s HOME DEPOT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a large and successful United States company engaged in the business of home improvement retail store services and related goods and services.
2. Complainant owns the HOME DEPOT mark and numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for that mark (e.g., Reg. 2,314,081 registered February 1, 2000).
3. Respondent registered the <homedepotpaintcolors.net> domain name on October 12, 2011. Respondent’s <homedepotpaintcolors.net> domain name resolves to a directory website that provides sponsored advertisements for Complainant’s competitors and other goods and services not provided by Complainant, for which Respondent is compensated through click-through fees.
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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims that it owns trademark registrations with the USPTO for its HOME DEPOT mark (e.g., Reg. 2,314,081 registered February 1, 2000). In support of this claim, Complainant provides the Panel with copies of its trademark registration certificates. See Complainant’s Annex B. Complainant argues that this evidence demonstrates Complainant’s rights in the HOME DEPOT mark. Based on the evidence and the applicable UDRP precedent, the Panel finds that Complainant owns rights in its HOME DEPOT mark pursuant to Policy ¶ 4(a) (i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The second question is whether the disputed domain name is identical or confusingly similar to the HOME DEPOT mark. Complainant argues that the <homedepotpaintcolors.net> domain name is identical and confusingly similar to the HOME DEPOT mark. Complainant alleges that the disputed domain name combines Complainant’s HOME DEPOT mark with the generic terms “paint” and “colors.” Complainant further notes the addition of a generic top-level domain (“gTLD”) “.net.” The Panel notes that the disputed domain name does not contain the space found in Complainant’s mark. As the Panel determines that the addition of generic terms and a gTLD and the removal of a space fail to distinguish the disputed domain name from Complainant’s mark adequately, the Panel concludes that Respondent’s <homedepotpaintcolors.net> domain name is confusingly similar to Complainant’s HOME DEPOT mark for the purposes of Policy ¶ 4(a)(i). In particular, the addition of the generic words would simply convey to the objective internet user that the domain name dealt with Complainant and one of its products and that it would lead to an official website of Complainant dealing with that product. 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 Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights.The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also 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 Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under 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 made out a prima facie case and that it arises from the following considerations:
(a) Respondent has chosen to take Complainant’s HOME DEPOT mark and to use it in its domain name, adding only the generic words “paint” and “colors”, thus retaining the confusing similarity that arises between the domain name and the trademark.
(b)Respondent has then decided to use the domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business and others of which are for goods and services not provided by Complainant and to do so presumably in exchange for pay-per-click fees.
(c) Respondent has engaged in these activities without the consent or approval of Complainant.
(d) Complainant also argues that Respondent has not been commonly known by the disputed domain name.Complainant argues that Respondent is not related to Complainant and is not authorized to use Complainant’s HOME DEPOT mark. Complainant contends that the WHOIS information, which lists “Kenny SEO Marketing” as the registrant of the disputed domain name, indicates that Respondent is not commonly known by the <homedepotpaintcolors.net> domain name. Complainant contends that Respondent is not commonly known by the disputed domain name based on the evidence in the record. The Panel agrees and holds that Respondent is not commonly known by the <homedepotpaintcolors.net> domain name under Policy ¶ 4(c) (ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
(e)Complainant also alleges that Respondent’s <homedepotpaintcolors.net> domain name resolves to a website that hosts sponsored advertisements for Complainant’s competitors. Complainant provides the Panel with a screenshot of the resolving website in support of its allegations. See Complainant’s Exhibit D. After examining the screenshot, the Panel notes that the resolving website contains information regarding paint colors in general and specifically mentioning Complainant’s paint colors at different points on the resolving website. The Panel further notes that the resolving website does contain some hyperlink advertisements for “Glidden Paints,” “Handyman Connection,” “Ace Hardware,” and “Home Painting Services,” which the Panel infers resolve to Complainant’s competitors. The Panel finds that the hyperlink advertisements demonstrate that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <homedepotpaintcolors.net> domain name pursuant to Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also 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).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted 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 names.
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 has been 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 in UDRP proceedings 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.
First, Complainant relies on Policy ¶ 4(b) (iii). Complainant argues that Respondent registered and uses the <homedepotpaintcolors.net> domain name in bad faith because Respondent hosts sponsored advertisements for Complainant’s competitors. As noted above, the Panel finds these sponsored advertisements in Complainant’s screenshots. See Complainant’s Exhibit D. As the Panel finds that Complainant’s business is disrupted by Respondent’s registration and use of the <homedepotpaintcolors.net> domain name, the Panel holds that Respondent registered and uses the <homedepotpaintcolors.net> domain name in bad faith 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).”).
Secondly, Complainant argues that Respondent had actual and constructive knowledge of Complainant's rights in the HOME DEPOT mark. Complainant argues that Respondent’s provision of competing hyperlinks indicates that Respondent had actual knowledge of Complainant's mark and rights. The Panel notes that the information found on the resolving website also discusses Complainant’s paint products. 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 and therefore determines that 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").
Thirdly, the facts also bring the case squarely within the provisions of Policy ¶ 4(b) (iv) as Respondent has created the likelihood of confusion with Complainant’s HOME DEPOSIT trademark as to the source of the goods and services promoted on the website to which the disputed domain name resolves.
Fourthly, as has been noted above, Policy ¶ 4(b) is not an exclusive list of examples of bad faith registration and use of a contested domain name, so that circumstances falling outside the explicit parameters of that provision of the Policy can provide persuasive evidence for a finding of bad faith registration and use to prove the element set out in Policy ¶ 4(a) (iii). See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “indicates that its listing of bad faith factors is without limitation”) (emphasis in original); see also Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)] of the Policy, is not conclusive that the domain name in issue was registered in and is being used in bad faith.”).
Applying that principle to the present case and having regard to the submissions of Complainant and the evidence submitted on its behalf, the Panel finds that in addition to the manner in which the disputed domain name falls within the provisions of Policy ¶ 4(b), Respondent has registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus 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 <homedepotpaintcolors.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 9, 2012
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