Homer TLC, Inc. v. Domain Admin
Claim Number: FA1307001508937
Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Admin (“Respondent”), British Virgin Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedrpot.com>, registered with GODADDY.COM, LLC.
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.
James Bridgeman 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 10, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the disputed domain name <homedrpot.com> is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 10, 2013, the National Arbitration Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 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@homedrpot.com. Also on July 10, 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.
A timely Response was received and determined to be complete on July 29, 2013.
Additional Submissions which complied with Supplemental Rule 7 of the National Arbitration Forum’s Supplemental Rules for Uniform Dispute Resolution Policy were received from Complainant on August 6, 2013.
On July 29, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman as Panelist.
On July 29, 2013 and again on August 7, 2013 Respondent objected to Complainants right to make Additional Submissions. Said objections were sent to the National Arbitration Forum by email and Respondent did not give any reasons for his objections.
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.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
Preliminary Comment on Complainant’s Submissions
This Complaint relates to one domain name namely. <homedrpot.com>, unfortunately however the Complaint as submitted appears to be at least in part a generic document and certainly creates the impression that it was at least in part auto-generated as alleged by Respondent because it makes reference to multiple domain names. This makes the Complaint difficult to understand to some extent, but in order to expedite the proceedings this Panel has accepted Complainant’s submissions as though they referred only to the one domain name that is in dispute and has ignored the arguments insofar as they refer to multiple domain names.
A. Complainant
Complainant relies on its rights in THE HOME DEPOT and HOME DEPOT marks and in particular on its rights as registered owner of the United States registered trademarks listed in the finding of facts below.
Complainant is a publicly traded corporation with headquarters in Atlanta, Georgia, USA, It was founded in 1978 and opened its first two HOME DEPOT stores in 1979. It has since expanded its enterprise to become one of the best known and largest enterprises supplying home improvement goods and building materials business in the USA. Complainant has grown to have an annual net income of US$3.9 billons, with direct sales a amounting to US$ 70.4 billions in the year 2012 and employs 330,000 people in the USA.
In 1992, Complainant registered the <homedepot.com> domain name and has established a successful website for sale of goods and services to contractors, builders and individual shoppers.
Complainant is a well known business in the USA and has received public recognition and awards for its philanthropic activities and support of sports, environmental and community charities
Complainant submits that the disputed domain name is confusingly similar to THE HOME DEPOT and HOME DEPOT marks in which it has rights as there is only one letter in the difference between its HOME DEPOT mark and the disputed domain name <homedrpot.com>. Citing Rollerblade Inc. v McCrady WIPO Case D2000-0429; Gardine Surveys Ltd.. v. Domain Fin NAF Claim No. FA0304000153545.
Complainant submits that it is appropriate to ignore the <.com> gTLD extension when making the comparison of its marks and the disputed domain name for the purposes of the Policy.
Complainant submits that this single letter difference does not distinguish the disputed domain name and Complainant’s highly distinctive marks. Citing Reuters Ltd. v. Global Net 2000 Inc. WIPO Case D2000 0441 and Caterpillar Inc. v. Center for Ban on Drugs, NAF Claim No. FA0603000661437.
Complainant submits that this is a classic case of typosquatting and Respondent has registered the disputed domain name in order to confuse Internet users and divert Internet traffic intended for Complainant.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name, that Respondent is not commonly known by the disputed domain name, that upon information and belief Respondent has no trademark or other intellectual property rights in the disputed domain name, that Complainant has not licensed or permitted Respondent to use THE HOME DEPOT or HOME DEPOT trademarks or to register any domain name incorporating either of its trademarks. Citing Compagnie de Saint Gobain v. Com-Union Corp.WIPO Case D2000-0020.
Complainant refers to a copy of a cease and desist letter annexed to the Complaint which it claims was sent by its representative to Respondent. Said letter alleged that Respondent was infringing Complainant’s trademark rights. As of the date of the Complaint Respondent had not replied to said letter.
Complainant requests that this Panel consider that Complainant’s first use of THE HOME DEPOT and HOME DEPOT trademarks was February 15, 1979, that the earliest of its below-listed United States federal trademark registrations for said marks were dated January 26, 1982 and that Complainant first registered and used its <homedepot.com> domain name as its website address on August 4, 1992. Complainant submits that on the other hand the disputed domain name was not registered until June 30, 2010 long after Complainant had acquired its rights and reputation in THE HOME DEPOT and HOME DEPOT trademarks.
Complainant also submits that Respondent had actual knowledge of Complainant and its rights in said THE HOME DEPOT and HOME DEPOT trademarks when the disputed domain name was registered. Respondent was a member of Complainant’s affiliate program and therefore must have been aware of Complainant and its rights.
Complainant submits that Respondent’s bad faith registration and use of the disputed domain name is shown by the fact that Respondent appears to be using the disputed domain name as the address of a website from which Respondent is generating pay per click revenue from links, including links to direct competitors of Complainant. Citing inter alia AIDA German Cruises Branch of Socieda di CrociereMercurio S. r.l. v. Carribean Online International Ltd./ BelgiumDomains WIPO Case D2008-1470. Complainant submits that such links to competing websites of third parties divert consumers away from Complainant’s business, confuse Internet users and constitute bad faith registration and use of the disputed domain name. Complainant further submits that Respondent’s typosquatting behaviour is in itself evidence of bad faith. Citing inter alia Nat’l Ass’n of Prof’l Baseball League v Zuccarini WIPO Case D2002-1011.
Finally Complainant alleges that Respondent has furnished incomplete or falsified information on the WhoIs.
B. Respondent
Respondent requests this Panel to make a finding of reverse domain name hijacking.
Respondent complains that on its website, Complainant’s representative states that it provides automated cease and desist letters and UDRP filings.
Respondent submits that he registered the disputed domain name which may refer to “Doctor Pot” or “Dr Pot” because he is a pot collector and planned to build a blog about “home dr pot”. He states that he chose the disputed domain name because the domain name <drpot.com> was already taken. He claims that he engaged in online blogging on the website to which the disputed domain name resolves for a couple of months but subsequently ceased bloggng because he was short of leisure time and used the website to which the disputed domain name resolved for pay-per-click links.
Respondent asserts that Complainant’s representative sent him emails time and again asking to buy the disputed domain name or acquire it for free. He states that he rejected these advances and has never offered to sell the disputed domain name to anybody.
Respondent denies that there is any evidence that he was aware of Complainant or its marks when the disputed domain name was registered and used.
C. Additional Submissions
In Additional Submissions, Complainant submits that Respondent has made mere unsupported assertions that he is a pot collector and that he blogged on the website to which the disputed domain name resolved for two months. Complainant has furnished and refers to historical screenshots of Respondent’s website in the period from July 11, 2010 to November 28, 2012 which indicate that there was no blogging activitiy but that the disputed domain name was used to generate pay-per-click revenue by misdirecting traffic away from Complainant’s website during that period.
Complainant submits that such use cannot be considered a bona fide offering of goods or services or a legitimate non-commercial use of the disputed domain name but is a wrongful and bad faith use of Complainant’s marks to gain a competitive advantage for commercial gain.
Complainant refers to copies of email correspondence which was not included in the original Complaint because Respondent continuously changed the WhoIs information and his email address. Complainant submits that said email correspondence clearly shows that Respondent did not refute Complainant’s claim to trademark rights or provide any details regarding any blog or make any denial that he was aware of Complainant or its rights in the trademarks relied upon. Respondent asked his representative Joe to contact Complainant and Joe was furnished with a copy of Complainant’s representative’s letter of authorization.
Complainant submits that the email correspondence shows that Respondent has agreed to transfer the disputed domain name and in the circumstances this Panel may deem it expedient to forego “the traditional UDRP analysis” and direct a transfer of the domain name to Complainant.
Complainant further submits that notwithstanding Respondent’s assertion otherwise, the historical screenshot dated November 28, 2012 shows that Respondent offered the disputed domain name for sale. Complainant submits that this is evidence of bad faith use and demonstrates Respondent’s real intention when registering the disputed domain name. Citing Trip.com Inc. v Daniel Deamone WIPO Case D2001-1066.
Complainant finally submits that Respondent has previously been a defendant in a complaint under the Policy in a case where he used an identical defense as in the present Response viz. Credit Industtiel et Commercial S.A. v. IT Administrator, WIPO Case D2013-0707.
This Panel finds that Complainant is the registered owner of the following United States federal trademark and service mark registrations:
US Federal service mark registration number 1188191, THE HOME DEPOT filed on September 17, 1979 and registered on January 26, 1982 for services in international class 42.
U.S. Federal trademark registration number 1431636 THE HOME DEPOT filed on November 7, 1983 and registered on March 10, 1987 for goods in international classes 6, 7, 8, 9, 11, 17, 20, 21 and 27.
U.S. Federal service mark registration number 2314081 HOME DEPOT, filed on December 7, 1998 and registered on February 1, 2000 for services in international class 35.
U.S. Federal trademark registration number 2825232 THE HOME DEPOT filed on April 15, 2003 and registered on March 23, 2004 for goods in international class 2.
U.S. Federal trademark registration number 4185403 THE HOME DEPOT filed on September 22 2011 and registered on August 7, 2012 for services in international class 39
The disputed domain name was registered by Respondent on June 30, 2010.
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.
Complainant is the owner of and has rights in THE HOME DEPOT and HOME DEPOT trademarks and service marks through its above-listed registrations and at common law through the reputation and goodwill it has acquired by its extensive use of the marks in its successful retail and wholesale business.
This Panel finds that the disputed domain name is confusingly similar and almost identical to Complainant’s HOME DEPOT mark and confusingly similar to Complainant’s THE HOME DEPOT mark.
The definite article in THE HOME DEPOT is not a distinctive element of THE HOME DEPOT. There is only one letter in the difference between HOME DEPOT and the disputed domain name <homedrpot.com> and the substitution of the letter “r” for the letter “e” does not distinguish the disputed domain name from Complainant’s mark in any significant way.
Complainant has therefore succeeded in the first element of the test in Policy paragraph 4(a)(i).
Respondent claims to have legitimate interest in the disputed domain name because it signifies “Doctor Pot” or “Dr Pot” and he has an interest in pots. This explanation is not credible and in any event it has not been supported by any evidence whatsoever. His claim that he chose the disputed domain name because <drpot.com> was not available is highly improbable. He has not provided any evidence that he is known as “Doctor Pot” and in any event the idea that somebody has an interest in “pots” generally is also most improbable.
His claim to have used the website to which the disputed domain name resolves for blogging is not supported by any evidence either and on be balance of probabilities the evidence of use adduced by Complainant shows that Respondent has only used the disputed domain name to generate pay-per-click revenue.
This Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name, Respondent has failed to discharge the burden of proof that he has such rights. In the circumstances Respondent has succeeded in the second element of the test in Policy Paragraph 4(a)(ii) also.
Having considered the evidence, this Panel finds that on the balance of probabilities Respondent has registered and is using the disputed domain name in bad faith and is engaged in typosquatting.
This Panel finds that on the balance of probabilities Respondent was actually aware of Complainant and its well known THE HOME DEPOT brand and mark when he chose and registered the disputed domain name. At the time of registration of the disputed domain name, any Internet search would have disclosed Complainant and the well established website to which Complainant’s very similar <homedepot.com> domain name resolves.
Respondent has admitted that he is using the disputed domain name to generate pay-per-click income.
This Panel finds that on the balance of probabilities Respondent intentionally chose and registered the disputed domain name consisting of the mis-spelling of the Complainant’s HOME DEPOT brand name and trade mark in order to intercept, misdirect and siphon off Internet traffic intended for the Complainant’s website by preying on Intenet users who make common typing errors. Respondent is therefore using the disputed domain name in bad faith to take predatory advantage of the goodwill and reputation of Complainant’s trademarks.
Furthermore Respondent has failed to provide correct information in relation to his identity on the WhoIs.
In the circumstances, this Panel finds that the Respondent registered and is using the disputed domain name in bad faith and as Complainant has satisfied the third and final element of Policy Paragraph 4(a)(iii) it is entitled to succeed in this Complaint.
For completeness, this Panel finds that there is no evidence that Complainant has engaged in reverse domain name hi-jacking as alleged by Respondent. Complainant has correctly brought this Complaint to protect its lawful rights in its valuable trademarks and reputation and Respondent’s allegation of reverse domain name hi-jacking was unfounded and disingenuous.
Additionally Complainant’s claim that Respondent agreed to transfer the domain name is incorrect and unfounded. The claim was unnecessary and merely served to complicate the decision making process in this case.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homedrpot.com> domain name be TRANSFERRED from Respondent to Complainant.
___________________________
James Bridgeman, Panelist
Dated: August 12, 2013
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