Homer TLC, Inc. v. Domain Admin / Taranga Services Pty Ltd
Claim Number: FA1303001488541
Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Taranga Services Pty Ltd / Domain Admin (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hpmedepot.com>, registered with Moniker.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on March 5, 2013; the National Arbitration Forum received payment on March 5, 2013.
On March 6, 2013, Moniker confirmed by e-mail to the National Arbitration Forum that the <hpmedepot.com> domain name is registered with Moniker and that Re-spondent is the current registrant of the names. Moniker has verified that Re-spondent is bound by the Moniker 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 March 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 2013 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@hpmedepot.com. Also on March 18, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail address-es 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 April 11, 2013, pursuant to Complainant's request to have the dispute decid-ed by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 serves the home improvement industry, operating under the HOME DEPOT mark.
Complainant holds registrations, on file with the United States Patent and Trade-mark Office (“USPTO”) for the HOME DEPOT servicemark (Reg. No. 2,314,081, registered February 1, 2000).
Respondent registered the disputed <hpmedepot.com> domain name no earlier than December 24, 2004.
Respondent’s domain name is confusingly similar to Complainant’s HOME DEPOT mark.
Respondent has not been commonly known by the disputed domain name.
Complainant has not given Respondent permission to use Complainant’s HOME DEPOT service mark in a domain name.
Respondent uses the disputed domain name to redirect Internet users to Com-plainant’s official website through Complainant’s affiliate program, which violates the agreement governing Respondent’s status as an affiliate of Complainant.
Respondent has no rights to or legitimate interests in respect of the disputed domain name.
Respondent’s domain name illustrates typo-squatting.
The domain name has been registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the HOME DEPOT service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark author-ity, the USPTO. See, for example, Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).
Turning to the core question posed by Policy ¶ 4(a)(i), we are persuaded from a review of the record that Respondent’s <hpmedepot.com> domain name is con-fusingly similar to Complainant’s HOME DEPOT service mark. The domain name differs from the mark by only a single character and the addition of the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of con-fusing similarity under the standards of the Policy. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to a complainant's BELKIN mark because the domain name merely replaced the letter “i” in that mark with the letter “e”).
See also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that under Policy ¶ 4(a)(i) the attachment of a gTLD to the mark of another in creating a domain name is “unable to create a distinction capable of overcoming a finding of confusing similarity”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this branch of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both finding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain name, and that Complainant has not given Respondent permission to use Complain-ant’s HOME DEPOT service mark in a domain name. Moreover, the WHOIS record for the disputed domain name identifies the registrant only as “Domain Admin / Taranga Services Pty Ltd,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See M. Shanken Comm. v. WORLD-TRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> do-main name, and so failed to show that it had rights to or legitimate interests in it as described in Policy ¶ 4(c)(ii), in light of the relevant WHOIS information and other evidence in the record).
We next observe that Complainant asserts, without objection from Respondent, that
Respondent uses the disputed domain name to redirect Internet users to
Complainant’s own website through Complainant’s affiliate program, which vio-lates
the agreement that governs Respondent’s relationship as an “affiliate” of
Complainant. On the facts before us, this is neither a bona fide
offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial
or fair use of the domain name under Policy ¶ 4(c)(iii). See Deluxe Corp.
v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding that
a respondent had no rights or legitimate interests within the contemplation of Policy
¶ 4(a)(ii) where it used the <deluxeform.com> domain name to redirect Internet
users to a UDRP com-plainant’s <deluxeforms.com> domain name, thus to
receive commissions from that complainant through its affiliate program).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are convinced from the evidence that Respondent is a serial cyber-squatter. See Alaska Airlines v. Taranga Services Pty Ltd / Domain Admin, FA 1444417 (Nat. Arb. Forum June 21, 2012); Bed Bath & Beyond Procurement CO. Inc. v. Domain Admin / Taranga Services Pty Ltd, FA 1434599 (Nat. Arb. Forum April 27, 2012; and Metropolitan Life Insurance Company v. Domain Admin / Taranga Services Pty Ltd, FA 1403559 (Nat. Arb. Forum September 19, 2011), in each of which a domain name employed by Respondent was ordered transferred to a UDRP complainant on evidence of bad faith on the part of Respondent in the registration of a domain name. Under Policy ¶ 4(b)(ii), this pattern of bad faith registration and use of domain names stands as evidence of bad faith in the registration and use of the domain name here in issue. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Further, that Respondent employs the disputed domain name, for its profit, to redirect Internet users to Complainant’s website through Complainant’s affiliate program, in violation of the agreement that governs Respondent’s relationship as an affiliate of Complainant, is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding that a respondent registered and used the <deluxeform.com> domain name in bad faith under Policy ¶ 4(b)(iv) by redirecting Internet users to a UDRP complainant’s <deluxeforms.com> website in order to receive income in the form of commissions from that complainant through its “affiliate program”).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <hpmedepot.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 25, 2013
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