Homer TLC, Inc. v. Above.com Legal
Claim Number: FA1307001509006
Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Legal (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <homddepot.com>, <homeddpot.com>, <homedepotl.com> , and <homedepott.com>, registered with ABOVE.COM PTY LTD.
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 A. Carmody, Esq., 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 15, 2013, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <homddepot.com>, <homeddpot.com>, <homedepotl.com>, and <homedepott.com> domain names are registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the names. ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.COM PTY LTD. 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 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 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@homddepot.com, postmaster@homeddpot.com, postmaster@homedepotl.com, postmaster@homedepott.com. Also on July 22, 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 21, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
A. Complainant makes the following assertions:
1. Respondent’s <homddepot.com>, <homeddpot.com>, <homedepotl.com> , and <homedepott.com> domain names, the domain names at issue, are confusingly similar to Complainant’s HOME DEPOT mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns and uses the HOME DEPOT mark in its business operating home improvement and construction material retail stores. Complainant was founded in 1978, and has grown to operate more than 2,000 stores throughout North and Central America. Complainant owns several trademark registrations for its HOME DEPOT family of marks with the United States Patent and Trademark Office (“USPTO”), including the HOME DEPOT mark (e.g., Reg. No. 2,314,081 registered February 1, 2000) and has expended substantial resources in promoting its mark, such that the HOME DEPOT mark is widely recognized among consumers.
Respondent registered the <homddepot.com> domain name on June 29, 2011, the <homeddpot.com> domain name on September 29, 2008, the <homedepotl.com> domain name on November 3, 2012, and the <homedepott.com> domain name on July 9, 2004. Each of the disputed domain names is confusingly similar to Complainant’s HOME DEPOT mark, and each is a typosquatted version of Complainant’s mark. Respondent is not commonly known by any of the disputed domain names, and cannot demonstrate rights or legitimate interests in the domain names. Respondent registered and uses the disputed domain names in bad faith, as shown by its violation of an agreement between Complainant and Respondent concerning an affiliate program; Respondent’s disruptive use of the disputed domain names; and Respondent’s receipt of revenue by hosting pay-per-click links at the resolving website. Further, Respondent has demonstrated a pattern of bad faith registration and use by registering other domain names that are examples of typosquatting.
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 names registered by Respondent are 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 names; and
(3) the domain names have 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 owns rights in the HOME DEPOT mark, based on its USPTO trademark registration (e.g., Reg. No. 2,314,081 registered February 1, 2000). A trademark registration sufficiently demonstrates rights in a mark in satisfaction of the Policy, regardless of the respondent’s country of residence. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has rights in the HOME DEPOT mark which satisfy Policy ¶ 4(a)(i).
The <homddepot.com>, <homeddpot.com>, <homedepotl.com>, and <homedepott.com> domain names are confusingly similar to Complainant’s HOME DEPOT mark. Each domain name consists of a variation of a misspelling of the mark, by either adding a letter, removing a letter, or replacing a letter with a different one. Moreover, each domain name includes the generic top-level domain (“gTLD”) “.com.” Each domain name is confusingly similar to Complainant’s mark as defined by Policy ¶ 4(a)(i), as each differs from the mark by merely one letter and a gTLD. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent has not been commonly known by any of the domain names at issue, based on the WHOIS information. The WHOIS records for the disputed domain names list “Above.com Legal” as the domain name registrant. Complainant has not licensed, authorized, or permitted Respondent to register domain names that incorporate the HOME DEPOT mark. The panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), maintained that the respondent could not have been commonly known by the disputed domain name, given the WHOIS information, as well as other information on the record, and the complainant did not authorize the respondent’s use of the mark.
The <homeddpot.com>, <homedepotl.com>, and <homedepott.com> domain names direct Internet users to a webpage displaying hyperlinked advertisements to entities that are in competition with Complainant’s business. Hosting a website that contains links to competing businesses does not constitute 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 concludes that Respondent does not have rights or legitimate interests in the <homeddpot.com>, <homedepotl.com>, and <homedepott.com> domain names. 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).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant submitted evidence of UDRP decisions against Respondent outside of the current dispute, and contends that previous adverse decisions contribute to a finding of Respondent’s pattern of bad faith registrations. See AutoZone Parts, Inc. v. Above.com Legal, FA 1497171 (Nat. Arb. Forum May 29, 2013); see also Zoological Soc’y of San Diego v. Above.com Legal, FA 1439828 (Nat. Arb. Forum May 14, 2012). The Panel concludes that the fact of previous adverse UDRP decisions, and the fact that Respondent holds four infringing domain name registrations in the current case, are sufficient to make a finding of Respondent’s pattern of bad faith registration pursuant to Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations); see also Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”).
Respondent uses the <homeddpot.com>, <homedepotl.com>, and <homedepott.com> domain names to host a click-through website, wherein the displayed links divert potential customers away from Complainant and to third-party websites, which disrupts Complainant’s business. The resolving websites disrupt Complainant’s business, by luring Internet consumers from Complainant’s website and to the competing websites, thereby disrupting Complainant’s business and demonstrating bad faith registration and use under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding 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)).
Respondent receives revenue by hosting the competing hyperlinks each time a misdirected Internet user clicks on one of the links. The panel in Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), held that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark, and hosting a website offering links to businesses with substantially similar services or products displayed at the resolving website. The Panel likewise determines that Respondent registered and uses the <homeddpot.com>, <homedepotl.com>, and <homedepott.com> domain names in bad faith by using confusingly similar domain names to attract Internet traffic to its websites and making a profit as a result of the displayed competing hyperlinks. Thus, the Panel finds that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Further, Respondent engages in typosquatting which is evidence of bad faith. Typosquatting has been found by previous panels to amount to bad faith registration, because it takes advantage of accidental mistyping of the complainant’s mark. See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’ . . . through Respondent’s persistent practice of ‘typosquatting’”).
Respondent had actual knowledge of Complainant’s HOME DEPOT mark at the time it registered the disputed domain names. Because Respondent was a member of Complainant’s affiliate program at the time, it must have known of Complainant and its trademarks before registering the disputed domain names. The Panel concludes that Respondent did indeed have actual knowledge of the HOME DEPOT marks when it registered the domain names, and therefore finds t bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homddepot.com>, <homeddpot.com>, <homedepotl.com> , and <homedepott.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 23, 2013
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