Homer TLC, Inc. v. Vettore / Sharfuddin Ahmed
Claim Number: FA1307001511207
Complainant is Homer TLC, Inc. (“Complainant”), represented by Richard J. Groos of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Vettore / Sharfuddin Ahmed (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thehomedepotbd.com>, registered with CLOUD GROUP LIMITED.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 23, 2013; the National Arbitration Forum received payment on July 23, 2013.
On July 24, 2013, CLOUD GROUP LIMITED confirmed by e-mail to the National Arbitration Forum that the <thehomedepotbd.com> domain name is registered with CLOUD GROUP LIMITED and that Respondent is the current registrant of the name. CLOUD GROUP LIMITED has verified that Respondent is bound by the CLOUD GROUP LIMITED 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 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 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@thehomedepotbd.com. Also on July 24, 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 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant’s business began in 1979, selling tools, building materials, and home improvement products. It is currently the fourth largest retailer in the United States, with over two thousand retail stores in North and Central America.
Complainant owns and uses the HOME DEPOT mark and the THE HOME DEPOT mark in its business as a home improvement retailer.
Complainant owns several trademark registrations for its HOME DEPOT-formative marks with the United States Patent and Trademark Office (“USPTO”) including registrations for the HOME DEPOT (e.g., Reg. No. 2,314,081 registered February 1, 2000), and the THE HOME DEPOT (e.g., Reg. No. 1,152,625 registered April 28, 1981). Complainant has maintained registrations for its <homedepot.com> since 1992 and for its <thehomedepot.com> domain name since 1999.
Respondent registered the <thehomedepotbd.com> domain name and uses it to host a website that purports to originate from Complainant and falsely associates itself with Home Depot’s Bangladesh retail store services. The resolving website contains sponsored advertisements and a copy of Complainant’s well-known logo. Respondent receives compensation each time a website visitor clicks on the displayed advertisements.
The <thehomedepotbd.com> domain name is confusingly similar to Complainant’s HOME DEPOT and THE HOME DEPOT marks, and Respondent is not commonly known by the domain name. Respondent fails to use the domain name in a way demonstrating a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent registered and uses the <thehomedepotbd.com> domain name in bad faith by passing itself off as Complainant’s business.
Further, Respondent is deemed to have had constructive knowledge of Complainant’s rights in the HOME DEPOT marks at the time the domain name was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO registered trademarks for HOME DEPOT and THE HOME DEPOT.
Respondent is not affiliated with Complainant and is not authorized to use Complainant’s trademarks mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in the relevant trademarks.
Respondent uses the at-issue domain name to host a website that purports to originate from Complainant and falsely associates itself with Home Depot’s Bangladesh retail store services. The <thehomedepotbd.com> website contains sponsored advertisements and a copy of Complainant’s well-known logo as well as links to Complainant’s competitors and other third parties.
Respondent receives compensation when a visitor to the <thehomedepotbd.com> website clicks one of the displayed advertisement links.
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, 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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of HOME DEPOT and/or THE HOME DEPOT with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). Complainant need not register its marks where Respondent operates to demonstrate such rights. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i)”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The at-issue domain name incorporates Complainant’s THE HOME DEPOT mark in its entirety, adding the term “bd” to the mark and appending the top level domain name “.com” thereto. The term “bd” is a country code abbreviation for Respondent’s country of residence, Bangladesh. If anything, the addition of the country code increases the similarity between the at-issue domain name and Complainant’s trademarks since Complainant historically and primarily operates a “brick and mortar” business having multiple geographic locations. Both the omission of a space between the terms in Complainant’s mark and the top level domain name are irrelevant to the Panel’s analysis under Policy ¶4(a)(i). Therefore the Panel finds that the <thehomedepotbd.com> domain name is confusingly similar to Complainant’s trademarks. See Expedia, Inc. v. Mandanice, FA 146598 (Nat. Arb. Forum Apr. 7, 2003) (finding that the <expedia-uk.com> domain name was confusingly similar to the complainant’s EXPEDIA mark); see also Newsmax Media, Inc. v. Waheed, FA 1405893 (Nat. Arb. Forum Oct. 20, 2011) (stating that adding only the generic term “the” is insufficient to distinguish a disputed domain name from the complainant’s mark); see also 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 terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
The WHOIS information for the at-issue domain names identifies the domain name registrant as “Vettore / Sharfuddin Ahmed” and the record before the Panel contains no evidence that tends to prove that Respondent is otherwise commonly known by the <thehomedepotbd.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <thehomedepotbd.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the <thehomedepotbd.com> domain name to address a website containing sponsored advertisements and displaying Complainant’s well-known graphic logo. Further, Respondent is likely compensated every time a visitor clicks on one of the advertising links. Using the domain name in this manner is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
Respondent registered and uses the <thehomedepotbd.com> domain name in bad faith, as demonstrated by the commercial gain Respondent derives as a result of hosting advertisements for competing entities on its <thehomedepotbd.com> website. As mentioned above, Respondent receives compensation each time an Internet user clicks on an advertising link. Moreover, Respondent registered the <thehomedepotbd.com> domain name with the intent of diverting Internet users interested in accessing Complainant’s website to Respondent’s exploitive website. Pursuant to Policy ¶ 4(b)(iv), this evidences demonstrates that Respondent registered and uses the <thehomedepotbd.com> domain name in bad faith. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Furthermore, Respondent uses its confusingly similar domain name to address a website designed to give the false impression that such website is sponsored or endorsed by Complainant. Therefore, Respondent’s domain name centric scheme to pass itself off as Complainant additionally demonstrates bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
Finally, Respondent had actual knowledge of Complainant’s rights in the HOME DEPOT trademarks before it registered the <thehomedepotbd.com> domain name. Respondent’s prior knowledge is evident from the fact that Respondent displays Complainant’s graphic logo on the <thehomedepotbd.com> website and presents other written material thereon designed to give the false impression that Complainant is somehow connected to the website. Registering and using a confusingly similar domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thehomedepotbd.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 22, 2013
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