national arbitration forum

 

DECISION

 

Homer TLC, Inc. v. G Design

Claim Number: FA1307001508951

 

PARTIES

Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is G Design (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <homeedepot.com>, registered with Wild West Domains, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electron-ically on July 10, 2013; the National Arbitration Forum received payment on July 10, 2013.

 

On July 11, 2013, Wild West Domains, Llc confirmed by e-mail to the National Arbitration Forum that the <homeedepot.com> domain name is registered with Wild West Domains, Llc and that Respondent is the current registrant of the name.  Wild West Domains, Llc has verified that Respondent is bound by the Wild West Domains, 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 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 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@homeedepot.com.  Also on July 16, 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 14, 2013, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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 Not-ices, 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

A. Complainant

 

Complainant has rights in the HOME DEPOT mark, used in connection with the operation and marketing of home improvement retail stores.

 

Complainant holds registrations for the HOME DEPOT service mark, which are on file with the United States Patent and Trademark Office (“USPTO”) (including Registry No. 2,314,081, registered February 1, 2000).

 

Respondent’s registered the disputed <homeedepot.com> disputed domain name on October 12, 2004.

 

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

 

Respondent does not own any rights to or legitimate interest in the contested domain name.

 

Respondent has not been commonly known by the disputed domain name.

 

Complainant has not authorized Respondent to use its HOME DEPOT mark in any way.

Respondent obtains click-through revenue by misleading and attracting Internet users by employing the domain name to resolve to a website displaying links to other websites operating in competition with the business of Complainant.

 

Respondent has neither any rights to nor any legitimate interests in the contested domain name.

 

Respondent is a serial cyber-squatter that has engaged in a pattern of this type of conduct, and Respondent has been a party in several UDRP proceedings.

 

Respondent disrupts Complainant’s business by diverting its potential customers to competing third-party websites via links on the website resolving from the <homeedepot.com> domain name.

 

Respondent was a member of Complainant’s affiliate program.

 

Respondent knew of Complainant’s rights in its HOME DEPOT mark at the time of its registration of the disputed domain name.

 

By using the contested domain name as described, Respondent has engaged in typo-squatting.

 

Respondent registered and is using the disputed domain name in bad faith.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)  the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and

(2)  Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)  the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be can-celled or transferred:

 

i.      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.     Respondent has no rights or legitimate interests in respect of the domain name; and

iii.    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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 and/or Confusingly Similar

 

Complainant has rights in the HOME DEPOT service mark for purposes of Policy ¶ 4(a)(i) by reason of registration of the mark with a national trademark authority, the USPTO.  See Victoria's Secret Stores Brand Mgmt., Inc. v. Machuszek, FA 945052 (Nat. Arb. Forum May 7, 2007), finding that:

 

Complainant has established rights in the … mark through registrations [with the USPTO] under Policy ¶ 4(a)(i).

 

This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China).  See, for example, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (find-ing that it is irrelevant whether a UDRP complainant has registered its trademark in the country of a respondent’s residence).

 

Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record Respondent’s <homeedepot.com> domain name is con-fusingly similar to Complainant’s HOME DEPOT service mark.  The domain name contains the mark in its entirety, adding the letter “e” between the terms “home” and “depot,” and the generic Top Level Domain (“gTLD”) “.com.”  These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy.  See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (finding the <zamazon.com> domain name confusingly similar to a UDRP com-plainant’s AMAZON.COM mark).

 

Likewise, because every domain name requires a gTLD, the addition of a gTLD to the mark of another in creating a domain name is irrelevant for purposes of a Policy ¶ 4(a)(i) analysis.  See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003):

 

It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests);  see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):

 

Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy.  Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence).  Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.

 

We begin by noting that Complainant asserts, and Respondent does not deny,

that Respondent has not been commonly known by the <homeedepot.com>  domain name, and that Complainant has not authorized Respondent to use its HOME DEPOT mark in any way.  Moreover, the pertinent WHOIS information identifies the domain name registrant only as “G Design,” which does not re-semble the domain name.  On this record we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so had failed to show that it had rights to or legitimate interests in them as contemplated in Policy ¶ 4(c)(ii), where the relevant WHOIS information and other evidence in the record gave no indication that that respondent was commonly known by the domain names, and where a UDRP complainant had not authorized that re-spondent to register a domain name containing its mark). 

We next observe that Complainant asserts, without objection from Respondent,

that Respondent uses the disputed domain name to generate click-through revenue by misleading and attracting Internet users via the domain name to a website displaying links to other websites operating in competition with the business of Complainant.  This use of the domain name is neither a bona fide  offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncom-mercial or fair use under Policy ¶ 4(c)(iii).  See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (finding that the operation of a pay-per-click website resolving from a domain name confusingly similar to the mark of another was 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)).

 

The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

There is evidence in the record indicating that Respondent is a serial cyber-squatter, in that it has been a party to three other UDRP proceedings in which contested domain names were found to have been registered and used by it in bad faith.  See:  Frederick’s of Hollywood v. G Design / G Glue, Bin, FA 1470980 (Nat. Arb. Forum Jan 2, 2013); Enterprise Holdings, Inc. v. G Design, FA 1345903 (Nat. Arb. Forum Oct. 30, 2010);  and Columbia Insurance Company v. G Design, D2006-1617 (WIPO March 6, 2007).  Under Policy ¶ 4(b)(ii), this is evidence that the instant domain name was likewise registered and is being used by Respondent in bad faith.  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith regis-tration and use under Policy ¶ 4(b)(ii) where a respondent had been subject to several UDRP proceedings in which panels had ordered the transfer of disputed domain names containing the trademarks of various complainants).

We are also persuaded by the evidence that, as alleged in the Complaint, Re-spondent’s employment of the <homeedepot.com> domain name, which is confusingly similar to Complainant’s HOME DEPOT service mark, disrupts Complainant’s business by diverting its potential customers to third-party web-sites competing with the business of Complainant.  This is evidence of bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iii).  See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith as described in Policy ¶ 4(b)(iii) where that respondent used the domain name to advertise goods and services of a UDRP complainant’s competitors, thereby disrupting that complainant’s business). 

 

And, because it is evident that Respondent gains commercially by obtaining click-through revenue from the operation of the website resolving from the con-tested domain name, we are convinced that it has registered and uses the do-main name in bad faith as described in 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).

 

For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶4(a)(iii).

 

 

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby GRANTED.

 

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

 

 

Terry F. Peppard, Panelist

Dated:  August 27, 2013

 

 

 

 

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