Homer TLC, Inc. v. Logan Cooper
Claim Number: FA1303001491783
Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Logan Cooper (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hkmedepot.com>, <hlmedepot.com>, <hojedepot.com>, <homedepof.com>, <homedspot.com>, <uomedepot.com>, and <yomedepot.com>, registered with 1&1 Internet AG.
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 March 26, 2013; the National Arbitration Forum received payment on March 26, 2013.
On April 5, 2013, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <hkmedepot.com>, <hlmedepot.com>, <hojedepot.com>, <homedepof.com>, <homedspot.com>, <uomedepot.com>, and <yomedepot.com> domain names are registered with 1&1 Internet AG and that Respondent is the current registrant of the names. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 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@hkmedepot.com, postmaster@hlmedepot.com, postmaster@hojedepot.com, postmaster@homedepof.com, postmaster@homedspot.com, postmaster@uomedepot.com, and postmaster@yomedepot.com. Also on April 5, 2013, 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 2, 2013, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
i. Respondent is not commonly known by the disputed domain names.
ii. Respondent is using some or all of the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
i. Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant.
ii. Respondent is using the disputed domain names to attract and mislead consumers for its own profit.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company in the retail industry, operating out of warehouse-style buildings selling products such as home appliances, tools, hardware, lumber, building materials, paint, plumbing, flooring, garden supplies, and plants.
2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the well-known THE HOME DEPOT mark (e.g., Reg. No. 1,188,191, registered January 26, 1982) and for the HOME DEPOT mark (Reg. No. 2,314,081, registered February 1, 2000).
3. Respondent registered the disputed domain names no earlier than September 2, 2012. They direct users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
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 a trademark or service mark on which it can rely. Complainant, Homer TLC, Inc., argues that it currently employs more than 330,000 employees in the United States and the retail stores operate out of warehouse-style buildings selling products such as home appliances, tools, hardware, lumber, building materials, paint, plumbing, flooring, garden supplies, and plants. Complainant argues that it is the owner of trademark registrations with the USPTO for the well-known THE HOME DEPOT mark (e.g., Reg. No. 1,188,191, registered January 26, 1982) and for the HOME DEPOT mark (Reg. No. 2,314,081, registered February 1, 2000). See Complainant’s Exhibit E. The Panel notes that although Respondent appears to reside in Great Britain, Complainant need not register its mark in the country in which Respondent operates in pursuant to Policy ¶ 4(a)(i). See 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Thus, the Panel finds that Complainant’s registration of its marks with the USPTO sufficiently demonstrates its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The second question that arises is whether the disputed domain names are identical or confusingly similar to the THE HOME DEPOT or the HOME DEPOT mark. Complainant asserts that Respondent’s <hkmedepot.com>, <hlmedepot.com>, <hojedepot.com>, <homedepof.com>, <homedspot.com>, <uomedepot.com>, and <yomedepot.com> domain names are confusingly similar to Complainant’s HOME DEPOT mark because they differ by the alteration of a single letter in that mark. The Panel notes that Respondent substitutes letters in Complainant’s mark for other letters. The Panel finds that the substitution of letters in a domain does not negate confusing similarity pursuant to Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). The Panel notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to the disputed domain names and removes the spaces in Complainant’s mark. The Panel determines that the addition of a gTLD and removal of spaces to a disputed domain name is irrelevant to a Policy ¶ 4(a)(i) confusingly similar analysis. See 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).”). Thus, the Panel concludes that Respondent’s <hkmedepot.com>, <hlmedepot.com>, <hojedepot.com>, <homedepof.com>, <homedspot.com>, <uomedepot.com>, and <yomedepot.com> domain names are confusingly similar to Complainant’s HOME DEPOT 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 names 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 that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s HOME DEPOT trademark and make minor spelling alterations to it, thus giving the false impression that the domain names are official domain names of Complainant and that they will lead to official websites of Complainant;
(b) Respondent has then used the domain names to resolve to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant argues that Respondent has not been commonly known by the disputed domain names. The Panel notes that the WHOIS information for the disputed domain names lists “Logan Cooper” as the domain name registrant. See Complainant’s Exhibit I. Complainant argues that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant asserts that it has not given Respondent permission to use Complainant’s mark in a domain name. Consequently, the Panel determines that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(e) Complainant contends that Respondent is using some or all of the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel notes that Respondent’s disputed domain names resolve to hyperlink directory web pages featuring links titled, “Home Depot Official Site,” “Tankless Water Heaters,” “Bright Painting Company,” and others. See Complainant’s Exhibit H. The Panel holds that Respondent’s use of the disputed domain names to host a hyperlink directory with competing links is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent’s advertised pay-per-click links displayed on the resolving websites promote products that compete with Complainant. The Panel notes that Respondent’s disputed domain names resolve to hyperlink directory web pages featuring links titled, “Home Depot Official Site,” “Maryland Solar Systems,” “Geothermal Heat Pump,” and others. See Complainant’s Exhibit H. The Panel finds that Respondent is using the disputed domain names to host hyperlink directories with the primary purpose of listing links to Complainant’s competitors, and therefore finds that Respondent’s disputed domain names disrupt Complainant’s business, showing bad faith use and registration under Policy 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Secondly, Complainant argues that Respondent is using the disputed domain names to attract and mislead consumers for its own profit. Complainant contends that Respondent has set up a “click-through” website for which it likely receives revenue for each misdirected Internet user. The Panel notes that Respondent’s disputed domain names resolve to hyperlink directory web pages featuring links to Complainant’s competitors. See Complainant’s Exhibit H. Therefore, the Panel finds that Respondent’s use of the disputed domain names to list competing hyperlinks demonstrates bad faith use and registration under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the HOME DEPOT mark and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names 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 <hkmedepot.com>, <hlmedepot.com>, <hojedepot.com>, <homedepof.com>, <homedspot.com>, <uomedepot.com>, and <yomedepot.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
May 3, 2013
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