Homer TLC, Inc. v. Domain Mgr Trs Service
Claim Number: FA1307001508921
Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Mgr Trs Service (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <homedepiot.com>, <homredepot.com>, and <homwedepot.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2013; the National Arbitration Forum received payment on July 10, 2013.
On July 17, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <homedepiot.com>, <homredepot.com>, <homwedepot.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 July 25, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 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@homedepiot.com, postmaster@homredepot.com, and postmaster@homwedepot.com. Also on July 25, 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 August 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
i. Respondent has not been commonly known by the disputed domain names.
ii. Respondent is using 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 also listed all of the disputed domain names for sale.
ii. Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant.
iii. Respondent has registered and used the disputed domain names to attract and mislead consumers for its own profit.
iv. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.
B. Respondent has not submitted a Response to this case.
1. Respondent’s <homedepiot.com>, <homredepot.com> and <homwedepot.com> domain names are confusingly similar to Complainant’s HOME DEPOT mark.
2. Respondent does not have any rights or legitimate interests in the <homedepiot.com>, <homredepot.com> and <homwedepot.com> domain names.
3. Respondent registered or used the <homedepiot.com>, <homredepot.com> and <homwedepot.com> domain names.
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.”).
Complainant alleges that it employs more than 330,000 employees in the United States and operates retail stores out of warehouse-style buildings, offering products such as home appliances, tools, hardware and lumber, building materials, paint, plumbing, flooring, garden supplies, and plants. Complainant argues that it owns trademark registrations with the USPTO for the HOME DEPOT mark (Reg. No. 2,314,081, registered February 1, 2000); and for the THE HOME DEPOT mark (e.g., Reg. No. 1,188,191, registered January 26, 1982). See Exhibit E. The Panel finds that because Respondent appears to reside within the United States, Complainant’s registration of the HOME DEPOT and THE HOME DEPOT marks with the USPTO sufficiently evidences its rights in the marks pursuant to 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)).
Complainant contends that Respondent’s <homedepiot.com>, <homredepot.com>, and <homwedepot.com> domain names are confusingly similar to Complainant’s HOME DEPOT mark because they differ by only a single character from Complainant’s mark. The Panel notes that Respondent adds an additional letter “i,” “r,” or “w” to Complainant’s HOME DEPOT mark in its disputed domain names. The Panel finds that Respondent’s inclusion of an additional letter to Complainant’s mark in its domain names does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)). The Panel observes that Respondent eliminates the space in Complainant’s HOME DEPOT mark and adds the generic top-level domain (“gTLD”) “.com” to its disputed domain names. The Panel holds that Respondent’s omission of spaces and inclusion of a gTLD to its domain names is irrelevant to a Policy ¶ 4(a)(i) determination. 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).”). Accordingly, the Panel concludes that Respondent’s <homedepiot.com>, <homredepot.com>, and <homwedepot.com> domain names are confusingly similar to Complainant’s HOME DEPOT mark pursuant to Policy ¶ 4(a)(i).
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.”).
Complainant asserts that Respondent has not been commonly known by the disputed domain names. Complainant argues that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant alleges that it has not given Respondent permission to use Complainant’s mark in a domain name. The Panel observes that the WHOIS information for the <homedepiot.com>, <homredepot.com>, and <homwedepot.com> domain names identifies “Domain Mgr Trs Service” as the registrant of the domain names. See Exhibit I. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that 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 respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. Therefore, the Panel determines that absent any permission from Complainant to use the HOME DEPOT mark, it is likely that Respondent is not commonly known by the <homedepiot.com>, <homredepot.com>, and <homwedepot.com> domain names under Policy ¶ 4(c)(ii).
Complainant claims that Respondent is using 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 observes that Respondent’s <homedepiot.com>, <homredepot.com>, and <homwedepot.com> domain names lead to homepages containing third-party links to “Home Depot Official Site,” “Lowe’s Official Site,” “Fireplaces at Lowe’s,” and others. See Exhibit H. Complainant contends that Respondent presumably receives pay-per-click fees through these linked websites. The Panel finds Respondent is using the disputed domain names to provide competing hyperlinks, and finds that Respondent is not using the <homedepiot.com>, <homredepot.com>, and <homwedepot.com> domain names in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008) (“Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant argues that Respondent has also listed all of the disputed domain names for sale. The Panel notes that Respondent’s <homedepiot.com>, <homredepot.com>, and <homwedepot.com> domain names are listed for sale through a banner at the top of the webpage stating “The domain is listed for sale. Click here to inquire about this domain name.” See Exhibit H. Prior panels have held that a respondent’s general offer to sale of a domain name evidences bad faith use and registration under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Thus, the Panel likewise concludes in the case at issue that Respondent’s use of a banner at each of the resolving websites to advertise the respective domain name for sale is evidence that Respondent registered and uses the <homedepiot.com>, <homredepot.com>, and <homwedepot.com> domain names in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant alleges that Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant. The Panel notes that Respondent’s <homedepiot.com>, <homredepot.com>, and <homwedepot.com> domain names resolve to websites containing competing links titled “Home Depot Official Site,” “Lowe’s Official Site,” “Fireplaces at Lowe’s,” and others. See Exhibit H. Complainant argues that these links divert potential customers away from Complainant to third-party websites, which Complainant argues disrupts Complainant’s legitimate business. In Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008), the panel found 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). Therefore, the Panel holds that Respondent registered and uses the disputed domain names with the intent to disrupt Complainant’s business, demonstrating bad faith use and registration pursuant to Policy ¶ 4(b)(iii).
Complainant asserts that Respondent has registered and used the disputed domain names to attract and mislead consumers for its own profit. The Panel observes that Respondent’s <homedepiot.com>, <homredepot.com>, and <homwedepot.com> domain names resolve to webpages which present competing hyperlinks to each misdirected Internet user that arrives at the resolving website. See Exhibit H. Complainant asserts that by setting up a click-through website for which Respondent likely receives revenue each time a misdirected Internet user clicks on a displayed link, Respondent registered and uses the disputed domain names in bad faith. The Panel agrees, and determines that Respondent has registered and uses the <homedepiot.com>, <homredepot.com>, and <homwedepot.com> domain names in bad faith 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.’”).
Complainant claims that Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. The Panel notes that Respondent adds letter to Complainant’s mark in its <homedepiot.com>, <homredepot.com>, and <homwedepot.com> domain names to make typographical errors. In Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003), the panel held that the practice of typosquatting “diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).” Consequently, the Panel finds that Respondent has registered and is using the <homedepiot.com>, <homredepot.com>, and <homwedepot.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homedepiot.com>, <homredepot.com>, and <homwedepot.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 4, 2013
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