Homer TLC, Inc. v. GlobalMedCom
Claim Number: FA1307001510560
Complainant is Homer TLC, Inc., (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is GlobalMedCom (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedpot.com>, which is registered with DNC HOLDINGS, INC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on July 19, 2013; the National Arbitration Forum received payment on July 19, 2013.
On July 19, 2013, DNC HOLDINGS, INC. confirmed by e-mail to the National Arbitration Forum that the <homedpot.com> domain name is registered with DNC HOLDINGS, INC. and that Respondent is the current registrant of the name. DNC HOLDINGS, INC. has verified that Respondent is bound by the DNC HOLDINGS, INC. 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@homedpot.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 techni-cal, 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 15, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates more than 2,000 home improvement stores in the United States, Puerto Rico, Canada, Mexico and China under the mark HOME DEPOT.
Complainant holds registrations for the HOME DEPOT service mark, on file with the United States Patent and Trademark Office (“USPTO”), (including Registry No. 2,314,081, registered February 1, 2000).
Respondent registered the <homedpot.com> domain name on April 12, 2000.
The <homedpot.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark.
Respondent has never been commonly known by the <homedpot.com> domain name.
Respondent is not sponsored by or affiliated with Complainant in any way.
Complainant has not given Respondent permission to use Complainant's HOME DEPOT mark in a domain name.
Respondent is not using the <homedpot.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent uses the disputed domain name to redirect unsuspecting Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant's business.
Respondent presumably receives pay-per-click fees from the operation of these linked websites.
Respondent has neither any rights to nor any legitimate interests in the contested domain name.
Respondent’s use of the <homedpot.com> domain name disrupts Complainant’s business.
Respondent’s creation and use of the disputed domain name is an instance of typo-squatting.
Respondent registered and uses the <homedpot.com> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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.”
Complainant has rights in the HOME DEPOT service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark auth-ority, the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that a UDRP complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <homedpot.com> domain name is con-fusingly similar to Complainant’s HOME DEPOT mark. The domain name contains the entire mark, save for the elimination of a single letter “e” and the space between the terms of the mark, while adding the generic Top Level Do-main (“gTLD”) “.com.” These alterations of the mark, made in forming the do-main name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (finding that a respondent’s <hacrs.com> domain name was confusingly similar to a complainant’s HACRES mark because it merely omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding the <westjets.com> domain name confusingly similar to a complainant’s WEST JET AIR CENTER mark).
Finally see Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between the terms of the mark of another and the addition of a gTLD in forming a domain name do not establish distinctiveness of the domain name from a complainant’s mark under Policy ¶ 4(a)(i)).
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 <homedpot.com> do-main name, that Respondent is not sponsored by or affiliated with Complainant in any way, and that Complainant has not given Respondent permission to use Complainant's HOME DEPOT mark. Moreover the pertinent WHOIS information identifies the registrant of the domain name only as “GlobalMedCom,” which does not resemble the domain name. On this record we conclude that Respond-ent has not been commonly known by the <homedpot.com> domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (con-cluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record, including the relevant WHOIS information, showing that that respondent was commonly known by that domain name, and where a complainant asserted that it did not license or otherwise authorize that respondent’s use of its mark in a domain name).
We next observe that Complainant contends, without objection from Respondent, that Respondent is not using the <homedpot.com> domain name to provide a bona fide offering of goods or services as provided in Policy ¶ 4(c)(i) or a legit-imate noncommercial or fair use as provided in Policy ¶ 4(c)(iii), in that Respond-ent uses the domain name to redirect unsuspecting Internet users to a website featuring links to third-party websites, some of which directly compete with Com-plainant's business. In the circumstances here presented, we may comfortably presume that Respondent profits in the form of receipt of click-through fees from the operation of the website resolving from the domain name. Respondent’s use of the domain name in this manner 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). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (finding that a re-spondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use where “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the con-tested <homedpot.com> domain name as alleged in the Complaint disrupts Com-plainant’s business. This stands as proof of bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iii). See, for example, H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008):
The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent has registered and used the <homedpot.com> domain name, which is confusingly similar to Com-plainant’s HOME DEPOT service mark, to attempt to profit from confusion among Internet users as to the possibility of Complainant’s affiliation with the domain name and its resolving website. This is evidence of bad faith in the registration and use of the domain name under 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).
Finally under this head of the Policy, the evidence demonstrates that, in forming the domain name Respondent has engaged in typo-squatting, i.e.: the deliberate misspelling of the mark of another in a domain name in order to capture Internet traffic owing to the inadvertent typo-graphical errors made by users in entering the mark from which the domain name was derived in a web browser. Typo-squatting is independent evidence of bad faith in the registration and use of the domain name under Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005):
Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.
See also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the domain name <microssoft.com> because it misspelled a UDRP complainant’s MICROSOFT mark).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
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 <homedpot.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 30, 2013
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