national arbitration forum

 

DECISION

 

Homer TLC, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin

Claim Number: FA1307001508948

 

PARTIES

Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), Saint Vincent and the Grenadines.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <jomedepot.com>, <jhomedepot.com>, <homedupot.com>, <homedeptot.com>, <homedepoto.com>, and <homedepos.com>, registered with Pdr Ltd. d/b/a Publicdomainregistry.Com.

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

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 15, 2013 Pdr Ltd. d/b/a Publicdomainregistry.Com confirmed by e-mail to the National Arbitration Forum that the <jomedepot.com>, <jhomedepot.com>, <homedupot.com>, <homedeptot.com>, <homedepoto.com>, and <homedepos.com> domain names are registered with Pdr Ltd. d/b/a Publicdomainregistry.Com and that Respondent is the current registrant of the names.  Pdr Ltd. d/b/a Publicdomainregistry.Com has verified that Respondent is bound by the Pdr Ltd. d/b/aPublicdomainregistry.Com 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 August 2, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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@jomedepot.com, postmaster@jhomedepot.com, postmaster@homedupot.com, postmaster@homedeptot.com, postmaster@homedepoto.com, and postmaster@homedepos.com.  Also on August 2, 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 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant asserts trademark rights in HOME DEPOT and alleges that the disputed domain names are confusingly similar to its trademark. 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.

 

Complainant alleges that Respondent registered and used the disputed domain names in bad faith.

 

B. Respondent

Respondent did not reply to the Complaint.

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.    Complaint offers a wide array of home wares by reference to the trademark HOME DEPOT.

2.    Complainant owns, inter alia, United States Trademark Reg. No. 2,314,081 registered February 1, 2000 for the word mark HOME DEPOT.

3.    The disputed domain names were registered on the following dates:

<jomedepot.com> on December 13, 2003;

<homedeptot.com> on October 21, 2005;

<homedepoto.com> on November 1, 2005;

<jhomedepot.com> on December 27, 2005;

<homedepos.com> on January 21, 2006; and

<homedupot.com> on July 29, 2006.

4.    The domain names resolve to websites that feature links to third-parties, some offering goods in competition with Complainant.

5.    There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.

 

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 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, 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.  Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory (see, for example, 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).

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights.  It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.  Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration for HOME DEPOT, the Panel is satisfied that it has trademark rights in that name. See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”).

 

Panel is also satisfied that each of the disputed domain names is confusingly similar to Complainant’s trademark.  For the purposes of comparison, the gTLD, “.com”, can be disregarded.  The comparison reduces to the trademark HOME DEPOT with the terms -  jomedepot, homedeptot, homedepoto, jhomedepot,

homedepos and homedupot – all of which contain the elements of the trademark with some minor disfiguration insufficient to dispel confusing similarity (see, by analogy, 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 trademark).

 

Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in relation to each of the disputed domain names. 

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).

 

The publicly available WHOIS information identifies the registrant of the domain names as a proxy service provider and so there is no basis for finding that Respondent is commonly known by any of the domain names.

 

There is no evidence that Respondent has any trademark rights.  There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.

 

There is no evidence that the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute.  Complainant provides evidence that the domain names resolve to websites that carries links to goods, some of which are sold in direct competition with Complainant’s goods of interest.

 

Panel finds that such use does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the domain name <expediate.com> to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

 

Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain names.  In the absence of a Response, that case is not rebutted and so Panel finds that Respondent has no rights or interests in any of the domain names and so finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and that they are being used in bad faith. 

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.

 

The four specified circumstances are:

 

‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’

 

Complainant alleges that Respondent has in the past offered some or all of the disputed domain names for sale.  Whilst such conduct may be indicative of bad faith registration or bad faith use and registration pursuant to paragraph 4(b)(i) above (see, for example, Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”), Panel is in this case unwilling to draw any such adverse inferences given the inordinate period of time which has passed since the domain names were registered and offered for sale).  Complainant’s submissions based on paragraph 4(b)(i) of the Policy are uncompelling.

 

Complainant submits that Respondent has been subject to numerous adverse judgments in the past.  Given that Respondent is a privacy shield service provider Panel can make no such assumptions cased on the citations listed in the Complaint.   The argument based on paragraph 4(b)(ii) fails.

 

Complainant further contends that Respondent’s use of the disputed domain names also exhibits bad faith pursuant to Policy ¶ 4(b)(iii) by improperly disrupting Complainant’s business.  Since Respondent is in no meaningful way a competitor of Complainant this argument also fails.

 

Finally, Complainant submits that Respondent registered and is using the disputed domain names to attract and mislead consumers for Respondent’s own profit.  Here Panel agrees and finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above.  Panel has already found the disputed domain names to be confusingly similar to Complainant’s trademark.  Complainant submits evidence of screenshots of the web pages corresponding with the disputed domain names.  Panel notes hyperlinks to various commercial websites offering goods, some of which are competitive with Complainant’s services.  Panel accepts as more likely than not to be true Complainant’s allegation that Respondent receives revenue from this website associated with the disputed domain name by way of referral fees.   In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain names to attract, for commercial gain, internet users to Respondent’s websites by creating a likelihood of confusion with the Complainant’s trademark.

 

Accordingly, Panel finds bad faith use and registration in respect of each of the disputed domain names.

 

 

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 <jomedepot.com>, <jhomedepot.com>, <homedupot.com>, <homedeptot.com>, <homedepoto.com>, and <homedepos.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Debrett G. Lyons, Panelist

Dated:  September 8, 2013

 

 

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