national arbitration forum

 

DECISION

 

Homer TLC, Inc. v. Dragon Domains Limited

Claim Number: FA1306001505101

 

PARTIES

Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Dragon Domains Limited (“Respondent”), Argentina. Complainant is a publicly traded corporation doing business as Home Depot.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <homesepot.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDRAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically June 17, 2013; the National Arbitration Forum received payment June 17, 2013.

 

On June 17, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <homesepot.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On June 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 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@homesepot.com.  Also on June 19, 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 July 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

 

  1. Complainant makes the following allegations in this proceeding:

 

Complainant owns the HOME DEPOT mark, which it uses in connection with its business selling home improvement tools and accessories, lawn care items, power tools, building materials, home furnishings, electrical equipment, and other similar goods. Complainant registered its HOME DEPOT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No 2,314,081 registered February 1, 2000). Complainant also registered its THE HOME DEPOT mark with the USPTO (Reg. No. 1,431,636 registered March 10, 1987). See Complainant’s Exhibit E. Complainant was founded in 1978, and currently operates over two thousand locations across North America and China. Complainant hosts its company website at the <homedepot.com> domain name, at which it makes sales to contractors, companies, and individual shoppers. Complainant has been a leader in the construction and home improvement industry for some twenty years, and is involved in the communities where it operates by making charitable contributions to various nonprofit organizations.

 

Respondent registered the <homesepot.com> domain name, which it uses to host a website that redirects users to Complainant’s own website, which violates the affiliate agreement Respondent has with Complainant. Respondent registered the <homesepot.com> domain name February 27, 2004. The <homesepot.com> domain name is confusingly similar to Complainant’s THE HOME DEPOT mark. Respondent does not have rights or legitimate interests in the disputed domain name, as demonstrated by the fact that Respondent is neither commonly known by the domain name, nor does it make a noncommercial or fair use of the domain name. Respondent registered and uses the <homesepot.com> domain name in bad faith, as shown by numerous prior adverse UDRP decisions with regard to infringing domain names, as well as Respondent’s use of the domain name to resolve directly to Complainant’s home page in violation of an affiliate agreement. Further, Respondent capitalizes on a common misspelling of Complainant’s mark by registering a typosquatted version of Complainant’s mark, demonstrating bad faith. Finally, Respondent was aware of Complainant’s rights in the THE HOME DEPOT mark when it registered the disputed domain name.

 

  1. Respondent did not submit a Response.

 

The Panel notes that Respondent registered the disputed domain name February 27, 2004, more than thirty years after Complainant’s first use in commerce of its mark.

 

 

FINDINGS

 

Complainant established that it has rights to and legitimate interests in the mark contained within the disputed domain name.

 

The domain name is confusingly similar to Complainant’s protected mark.

 

Respondent has not rights to or legitimate interests in the disputed domain name.

 

Respondent registered and used the disputed domain name in bad faith.

 

DISCUSSION

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 Complainant to 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.

 

Given 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 will draw such inferences as the Panel 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.”).

 

Identical to or Confusingly Similar

 

Complainant makes the claim that it owns rights in the THE HOME DEPOT mark as a result of its trademark registration with the USPTO (Reg. No. 1,431,636 registered March 10, 1987). The Panel notes that although Respondent resides in Argentina, Complainant has rights in its THE HOME DEPOT mark as a result of its USPTO registration under a Policy ¶ 4(a)(i) analysis irrespective of Respondent’s country of residence. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

Complainant alleges that the <homesepot.com> domain name is confusingly similar to Complainant’s THE HOME DEPOT mark, because the domain name includes the mark in its entirety, removing the word “the,” and the space within the mark, replacing the “d” in “depot” with an “s,” and including the generic top-level domain (“gTLD”) “.com.” The Panel determines that the changes made to Complainant’s mark in the domain name do not foreclose a finding of confusing similarity under Policy ¶ 4(a)(i) because the overall impression of the disputed domain name is still an association with the THE HOME DEPOT mark. See Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK); see also 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).”).

 

Respondent makes no contentions relative to Policy ¶ 4(a)(i). 

 

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i). 

 

 

Rights to or Legitimate Interests

 

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 of proof shifts to Respondent to show it does have such 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.”).

 

Complainant contends that Respondent has not been commonly known by the <homesepot.com> domain name, and that it has given no intellectual property rights in the name to Respondent. Further, Complainant notes that it has not given Respondent any permission to use the THE HOME DEPOT mark in a domain name. Complainant also alleges that the WHOIS record reflects that an entity by an entirely different name registered the <homesepot.com> domain name, providing additional evidence that Respondent is not commonly known by the domain name. The Panel notes that the WHOIS evidence identifies “Dragon Domains Limited” as the registrant, and finds that absent Complainant’s permission, and given the disparity between the registrant’s name and the domain name, the Panel finds that Respondent is not commonly known by the <homesepot.com> domain name under a Policy ¶ 4(c)(ii) analysis. See 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).

 

Complainant asserts in its Policy ¶ 4(a)(iii) section that Respondent causes the disputed domain name to reroute users to Complainant’s own website, which is in violation of the affiliate agreement between Complainant and Respondent. Complainant claims that Respondent attempts to benefit from the registration and use of the <homesepot.com> domain name at Complainant’s expense. The panel in Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002), held that because the disputed domain name rerouted Internet users to the complainant’s own website in violation of the affiliation agreement between the complainant and the respondent, the respondent had no rights or legitimate interests in the domain name. The Panel finds that Respondent’s violation of the affiliate agreement with Complainant by directing Internet traffic to the resolving website is evidence that Respondent does not make a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name.

 

Respondent makes no contentions relative to Policy ¶ 4(a)(ii). 

 

The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent is a “serial cybersquatter,” and provides evidence revealing that Respondent has engaged in a pattern of bad faith registration and use, as demonstrated by the multiple UDRP decisions finding bad faith as to Respondent’s registrations and use of domain names outside the present dispute. See Bare Escentuals Beauty, Inc. v. Dragon Domains Ltd., FA 1465763 (Nat. Arb. Forum Dec, 8, 2012); see also The Finish Line, Inc. v. Dragon Domains Ltd., FA 1322634 (Nat. Arb. Forum June 14, 2010). The Panel finds that evidence of numerous prior UDRP decisions finding Respondent to have registered and used domain names in bad faith lend weight to a finding of Respondent’s bad faith registration and use under Policy ¶ 4(b)(ii) in the current dispute. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).

 

Complainant makes the claim that Respondent benefits from having registered and used the <homesepot.com> domain name at Complainant’s expense. The Panel notes that Complainant does not specify precisely how Respondent benefits, but the Panel infers that Respondent receives a commission from Complainant by redirecting users to Complainant’s website. As the panel held in Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), diverting Internet users by registering a confusingly similar domain name to the complainant’s mark demonstrates an attempt to profit from the goodwill associated with the mark and constitutes bad faith registration and use under Policy ¶ 4(b)(iv). Therefore,  the Panel finds that Respondent registered and uses the <homesepot.com> domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to confusing Internet consumers and making a commercial profit as a result of such confusion.

 

Complainant makes the allegation that Respondent registered and uses the <homesepot.com> domain name in bad faith, as demonstrated by its use of the domain name to route users to Complainant’s own website in direct violation of the affiliate agreement that governs Respondent’s relationship with Complainant. In Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007), the panel stated that the respondent registered domain names using the complainant’s mark after enrolling in the complainant’s affiliate program, demonstrating bad faith registration and use. The Panel similarly concludes that Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii)  is found as well in Respondent’s violation of the affiliate agreement by directing consumers to Complainant’s website in this manner.

 

Complainant argues that Respondent intentionally chose the <homesepot.com> domain name because it reflects a common misspelling of Complainant’s THE HOME DEPOT mark and is likely to be mistyped by consumers searching for Complainant’s website. Complainant asserts that Respondent’s registration of the disputed domain name amounts to typosquatting, which Complainant contends is evidence of bad faith registration and use. The Panel finds that Respondent registered the <homesepot.com> domain name in bad faith under Policy ¶ 4(a)(iii), by typosquatting a common misspelling of Complainant’s registered mark. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).

Complainant further asserts that Respondent had actual knowledge of Complainant’s rights in the THE HOME DEPOT mark, as made evident by both Respondent’s intentional selection of a misspelled version of Complainant’s mark, as well as the existence of the affiliate agreement between Complainant and Respondent. The Panel finds that Respondent was well aware of Complainant’s rights in the THE HOME DEPOT mark when it registered the <homesepot.com> domain name, and the Panel finds that Respondent’s actual knowledge provides evidence of its bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").

Respondent makes no contentions relative to Policy ¶ 4(a)(iii). 

 

The Panel finds that Respondent registered and used the disputed domain name in bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.  

 

Accordingly, it is Ordered that the <homesepot.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Hon. Carolyn Marks Johnson, Panelist

Dated:  July 29, 2013.

 

 

 

 

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