Homer TLC, Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1303001491786
Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <himedepot.com>, <hmoedepot.com>, <hoemdepot.com>, <hohedepot.com>, <homebepot.com>, <hometdepot.com>, <hompdepot.com>, <honedepot.com>, <komedepot.com>, and <omedepot.com>, registered with Internet.Bs Corp.
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 Honorable Charles K. McCotter, Jr. (Ret.) 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 2, 2013, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <himedepot.com>, <hmoedepot.com>, <hoemdepot.com>, <hohedepot.com>, <homebepot.com>, <hometdepot.com>, <hompdepot.com>, <honedepot.com>, <komedepot.com>, and <omedepot.com> domain names are registered with Internet.Bs Corp. and that Respondent is the current registrant of the names. Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. 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 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 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@himedepot.com, postmaster@hmoedepot.com, postmaster@hoemdepot.com, postmaster@hohedepot.com, postmaster@homebepot.com, postmaster@hometdepot.com, postmaster@hompdepot.com, postmaster@honedepot.com, postmaster@komedepot.com, and postmaster@omedepot.com. Also on April 8, 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 3, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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. 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
owns a line of retail home improvement and building supply stores under the
name of HOME DEPOT, for which Complainant owns trademark registrations with the
United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No.
2,314,081 registered February 1, 2000). Complainant also owns trademark
registrations for its THE HOME DEPOT mark with the USPTO (Reg. No. 1,188,191
registered January 26, 1982). Complainant operates more than 2,000 locations
across North America, as well as China. Complainant was founded in 1978, and
launched its website at the <homedepot.com> domain name in 1992.
Complainant’s stores carry product lines from well-known brands, from paint and
cleaning products businesses to tool manufacturers. The HOME DEPOT name is
well-known to the public, and Complainant’s business prides itself in serving
its community by making sizeable charitable donations to various nonprofit
organizations.
Respondent registered the <himedepot.com>, <hmoedepot.com>,
<hoemdepot.com>, <hohedepot.com>, <homebepot.com>,
<hometdepot.com>, <hompdepot.com>, <honedepot.com>,
<komedepot.com>, and <omedepot.com> domain names
between 2002 and 2011, all of which are well after when Complainant registered
the HOME DEPOT and THE HOME DEPOT marks. Each of the disputed domain names is
confusingly similar to Complainant’s HOME DEPOT mark.
Respondent has no rights or legitimate interests in the disputed domain names, as it is not commonly known by any of the domain names, is not legitimately affiliated with Complainant, and uses the domain names to redirect Internet users to a website that features generic links to third-party websites that compete with Complainant’s business. Respondent’s use of the domain names generates income for Respondent via pay-per-click links. Respondent’s registration and use of the domain names demonstrates bad faith, because Respondent engages in typosquatting, redirects Internet users to Complainant’s own website in violation of an affiliate agreement, lists the disputed domain names for sale, and receives revenue from the click-through links displayed. Further, Respondent’s use of the domain names constitutes disruption to Complainant’s business. Respondent entices Internet users to submit personal information by using a pop-up window advertising a prize in exchange for the user’s information. Further, Respondent has demonstrated a history of bad faith registration and use by registering a multitude of domain names outside of this dispute that have been transferred to the holder of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Homer TLC, Inc., owns a line of retail home improvement and building supply stores under the name of HOME DEPOT, for which Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,314,081 registered February 1, 2000). Complainant also owns trademark registrations for its THE HOME DEPOT mark with the USPTO (Reg. No. 1,188,191 registered January 26, 1982).
Respondent, PPA Media Services / Ryan G Foo, registered the <himedepot.com>, <hmoedepot.com>, <hoemdepot.com>, <hohedepot.com>, <homebepot.com>, <hometdepot.com>, <hompdepot.com>, <honedepot.com>, <komedepot.com>, and <omedepot.com> domain names between 2002 and 2011. Respondent uses the domain names to redirect Internet users to a website that features generic links to third-party websites that compete with Complainant’s business. Respondent’s use of the domain names generates income for Respondent via pay-per-click links. Respondent entices Internet users to submit personal information by using a pop-up window advertising a prize in exchange for the user’s information. Further, Respondent has a history of bad faith registration and use by registering a multitude of domain names outside of this dispute that subsequently have been transferred to the holder of the mark.
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 Panel finds that Complainant’s trademark registrations establish its rights in the HOME DEPOT mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant argues that the <himedepot.com>, <hmoedepot.com>, <hoemdepot.com>, <hohedepot.com>, <homebepot.com>, <hometdepot.com>, <hompdepot.com>, <honedepot.com>, <komedepot.com>, and <omedepot.com> domain names are confusingly similar to its HOME DEPOT mark. Complainant claims that each of the domain names differ from the mark by a single character, whether by creating a spelling error by replacing one letter with another, adding a letter, juxtaposing letters, or removing letters. Complainant also contends that each of the domain names includes the generic top-level domain (“gTLD”) “.com,” which is irrelevant in making a determination on confusing similarity. Each of the domain names omits the space between the words of the mark. The Panel finds that each of the domain names is confusingly similar to Complainant’s HOME DEPOT mark under Policy ¶ 4(a)(i). See 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)); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).
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).
Complainant alleges that Respondent is not commonly known by any of the disputed domain names, as demonstrated by the WHOIS information associated with each of the domains. The WHOIS information identifies “PPA Media Services / Ryan G Foo” as the domain name registrant. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the domains pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant alleges that Respondent uses the disputed domain names to redirect Internet users to a website that contains links to third-party websites, some of which are in competition with Complainant’s business, and from which Respondent receives pay-per-click fees. The Panel concludes that by offering hyperlinks to businesses that compete with Complainant’s fails to demonstrate use of the domain name to make 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). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Complainant claims that the resolving website is also used to “phish” for personal details from Internet users by greeting them with a pop-up window offering a prize in exchange for the user’s e-mail address. In Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004), the panel stated that using a domain name in a fraudulent scheme to deceive Internet users into providing personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Panel concludes that “phishing” for personal information such as an Internet user’s e-mail address is not 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).
Complainant argues that Respondent is engaged in typosquatting the HOME DEPOT mark by registering multiple domain names that consist of misspellings of Complainant’s mark. Typosquatting a complainant’s mark in a domain name demonstrates a lack of rights or legitimate interests in the domain names pursuant to Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
Respondent listed the <hoemdepot.com>, <homebepot.com>, and <hompdepot.com> domain names for sale. The Panel finds that Respondent registered and uses the <hoemdepot.com>, <homebepot.com>, and <hompdepot.com> domain names in bad faith pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003).
Complainant argues that Respondent is a cybersquatter with a pattern of bad faith, and a history of adverse UDRP decisions against Respondent. See Fandango, LLC v. PPA Media Servs. / Foo, FA 1439412 (Nat. Arb. Forum June 4, 2012); see also Univision Comm’s Inc. v. PPA Media Servs. / Foo, FA 1429889 (Nat. Arb. Forum Apr. 11, 2012). Respondent has demonstrated a history of typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(b)(ii). 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).
Complainant claims that Respondent disrupts Complainant’s business, because Respondent’s advertised pay-per-click links lead consumers to websites that promote products in competition with Complainant. The Panel concludes that Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii) is shown by Respondent’s use of the resolving websites to post pay-per-click hyperlinks to Complainant’s competitors, thereby disrupting Complainant’s business. See
H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (disputed domain names that resolve to websites that list hyperlinks to the complainant’s competitors provide evidence of the respondent’s intent to disrupt the complainant’s business and were indicative of bad faith registration and use.)
Respondent likely receives revenue each time a misdirected Internet user clicks a hyperlink displayed at one of the webpages resolving from the disputed domain names. As such, the Panel finds that Respondent is engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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).”).
Respondent
uses the disputed domain names to host a website that welcomes Internet users
with a pop-up window indicating that the visitor is a winner, and redirects the
visitor to a site that offers a prize in exchange for an e-mail address. Such
use is considered “phishing,” which is evidence of bad faith registration and
use under Policy ¶ 4(a)(iii). See Hess Corp. v. GR, FA 770909 (Nat. Arb.
Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith
registration and use because it was attempting to acquire the personal and
financial information of Internet users through a confusingly similar domain
name).
Complainant contends that Respondent is a typosquatter, because the disputed
domain names consist of minutely misspelled variations of Complainant’s HOME
DEPOT mark, consisting of a one-letter change in each of the domain names. Typosquatting
is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (typosquatting shows bad faith registration and use under the Policy).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <himedepot.com>, <hmoedepot.com>, <hoemdepot.com>, <hohedepot.com>, <homebepot.com>, <hometdepot.com>, <hompdepot.com>, <honedepot.com>, <komedepot.com>, and <omedepot.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 17, 2013
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