Homer TLC, Inc. v. Tomas Santos Rodrigues
Claim Number: FA1308001515519
Complainant is Homer TLC, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Tomas Santos Rodrigues (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aircompressorhusky.com>, registered with OnlineNIC, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Mr. Maninder Singh as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 19, 2013; the National Arbitration Forum received payment on August 19, 2013.
On August 26, 2013, OnlineNIC, Inc. confirmed by e-mail to the National Arbitration Forum that the <aircompressorhusky.com> domain name is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, 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 September 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 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@aircompressorhusky.com. Also on September 4, 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.
A Response was received after the deadline to file a response, and therefore was determined by the Forum to be not in compliance with ICANN Rule 5(a) and/or the Annex to the Supplemental Rules. The Panel, for reasons recorded hereinbelow, decided to consider the submissions made by Respondent in his response.
An Additional Submission was received from Complainant on September 29, 2013. The Additional Submission was compliant with Supplemental Rule 7.
Respondent has not filed any additional submissions.
On September 30,2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Maninder Singh 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant in its Complaint has made the following contentions :
· Homer TLC, Inc. is stated to be the owner of the distinctive and well-known trademark HUSKY. Complainant, through its predecessors-in-interest and licensees have collectively filed the present Complaint. It is contended by the Complainant that through its predecessors-in-interest and licensees, it has commenced use of the mark HUSKY in connection with hand tools, air power tools, and other home improvement products at least as early as 1924. Since that time, Complainant has continuously used the HUSKY Mark in commerce in the United States and abroad.
· Complainant claims that it owns numerous registrations for the HUSKY mark with the United States Patent and Trademark Office (“USPTO”), including :
(i) Reg. No. 3,951,607 registered on April 26, 2011
(ii) Reg. No. 3,357,651 registered on December 18, 2007
(iii) Reg. No. 2,860,955 registered on July 6, 2004
(iv) Reg. No. 2,669,698 registered on December 31, 2002
(v) Reg. No. 1,881,043 registered on February 28, 1995
(vi) Reg. No. 882,793 registered on December 23, 1969
(vii) Reg. No. 186,808 registered on July 22, 1924
· The Complainant claims that, through its licensee-Home Depot USA, Inc., it has enormous sales under the HUSKY Mark and it offers goods under the HUSKY Mark in each of its over 2,100 retail stores as well as via its websites, in the United States, Canada and Mexico.
· Complainant claims that over the years, it has prominently used and promoted the HUSKY Mark in advertising, sales, and various other ways. Complainant’s sales and advertising expenses under the HUSKY Mark have been extensive each year. As a result, the HUSKY Mark serves to identify and indicate the source of Complainant’s goods to the consuming public, and to distinguish its goods from those of others. As a result of Complainant’s long usage and promotion of the HUSKY Mark, it has become well-known to and widely recognized by consumers. In addition to its common law rights, Complainant owns seven United States federal registrations for trademarks incorporating “HUSKY” mark and also owns numerous registrations and pending applications for HUSKY trademarks worldwide. With a view to substantiate this, Complainant has attached as Exhibit B, a copy of United States trademark registrations, including its Registration No.2,860,955, which covers “air compressors” and other goods.
· The Complainant contends that the mark HUSKY has been used in commerce in connection with, among other things, tools since at least as early as 1924, and specifically with air compressors since at least as early as 1999. Complainant further contends that its licencee-Home Depot has registered and uses the domain name huskytools.com in connection with the advertising of its goods on the Internet. Home Depot first registered the huskytools.com domain name in 1999 and has continuously maintained the registration for huskytools.com since that time. Complainant in this regard has also attached as Exhibit C, a copy of WHOIS record for huskytools.com and printouts from Home Depot’s websites at homedepot.com and huskytools.com.
· The Complainant claims that the mark HUSKY has become a highly valuable asset of Home Depot (its licensee), representing substantial goodwill. The value of this asset has been cultivated as a result of Home Depot’s continuous and exclusive use of the mark for many years, and because of Home Depot’s efforts to promote the mark through the expenditure of substantial sums and careful control of the public perception of both the nature and quality of the goods and services provided in connection with the mark.
· Complainant contends that it is well established under the Policy that Home Depot’s registration of a mark with federal authority establishes a prima facie case of Home Depot’s rights. In this regard, Complainant has also relied upon the decisions of this Forum in the following cases :
i) Delta Corporate Identity, Inc. and Delta Air Lines, Inc. v. dltaairlines.com and deltaaairlines.com c/o Hanna El Hinn, FA548217 (Nat. Arb. Forum Oct. 12, 2005), citing Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.”, and
ii) Innomed Techs., Inc. v. DRP Servs., FA221171 (Nat. Arb. Forum Feb. 18, 2004) holding that “Registration of the NASAL-AIRE mark with the USPTO establishes complainant's rights in the mark”.
· The Complainant argues that the disputed domain name <aircompressorhusky.com> is identical to the HUSKY Mark. Home Depot (Complainant’s licencee) has used Complainant’s HUSKY Mark in commerce since at least 1924. It contends that such long-standing and continuous use gives Home Depot exclusive rights in the HUSKY Mark. Complainant contends that various earlier ICANN panels have found that, where, as in the present case, a domain name incorporates a distinctive mark in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar. In order to substantiate its contention, Complainant has relied upon the following decisions :
i) Lowen Corp. v. Henry Chan, D2004-4030 (WIPO August 5, 2004) - holding that the domain name <lowensigns.com> is confusingly similar to LOWEN.
Complainant argues that in the present case the addition of the common or generic term “air compressor” to Home Depot’s famous HUSKY trademark does not negate the confusing similarity between <aircompressorhusky.com> and the HUSKY Mark under Policy ¶ 4(a)(i).
ii) Exxon Mobil Corporation v. mga enterprises limited, FA0907001273445 (Nat. Arb. Forum Aug. 26, 2009) - holding that the addition of the terms “travel” and “club,” which have an obvious relationship to Complainant’s [Exxon’s] business, to Complainant’s mark in the disputed domain name <exxontravelclub.com> create a confusing similarity between the disputed domain name and the registered mark);
iii) Homer TLC, Inc. v. Whois Guard, FA619597 (Nat. Arb. Forum Feb. 14, 2006) - holding that the addition of common words to Complainant’s registered mark did not negate the confusing similarity).
Complainant argues that in the present case the addition of a generic top-level domain, such as “.com,” is irrelevant in determining similarity of Respondent’s <aircompressorhusky.com> domain to Home Depot’s HUSKY Marks.
iv) Delta Corporate Identity, Inc. and Delta Air Lines, Inc, citing Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) holding that “[t]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”;
v) Thomas B. Hudson v. Ted Machi & Associates, FA133759 (Nat. Arb. Forum Jan. 21, 2003).
· Complainant contends that in the present case, the disputed domain name <aircompressorhusky.com> is identical to and incorporates in its entirety the Complainant’s trademark HUSKY. The disputed domain name differs from the HUSKY Mark only by the addition of the generic term “air compressor” and the top-level domain, “.com”. These minor differences are insufficient to distinguish the <aircompressorhusky.com> domain name from the HUSKY Mark, particularly where Complainant has offered HUSKY brand air compressors for sale since at least as early as 1999.
· Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name. It further contends that since the Complainant has made a prima facie case in support of its allegations, the burden shifts on the Respondent to show that it has rights or legitimate interests in the disputed domain name. In this regard, it has relied upon the following decision :
i) Tejon Ranchcorp and Tejon Ranch Co. v. J & L Enterprises, FA524749 (Nat. Arb. Forum September 20, 2005), citing Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) – (where complainant has asserted that respondent has no rights or legitimate interests with respect to domain name, respondent must come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent.”), and G.D. Searle v. Martin Mktg., FA118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent”).
· Complainant further contends that the Respondent must show it has rights or legitimate interest in respect of the disputed domain name at issue by “concrete evidence.” In this regard, Complainant has relied upon the decision of WIPO in :
i) Kate Spade, LLC v. Darmstadter Designs, No. D2001-1384 (WIPO Jan. 3, 2002) citing UDRP Policy 4(c). “Concrete evidence” requires more than personal assertions; it requires documents or third party declarations in support of such assertions. Id. A failure to produce such concrete evidence entitles a panel to conclude that the respondent has no such rights or legitimate interest. Id. From the evidence discussed below, it is clear that Respondent has no rights or legitimate interest in the <aircompressorhusky.com> domain name.
· Complainant contends that the Respondent has no relationship, affiliation, connection, endorsement or association with the Complainant. Complainant further contends that the Respondent has never requested or received any authorization, permission or license from Complainant to use the HUSKY Mark in any way.
· Complainant contends that the Respondent has never been commonly known by the disputed domain name <aircompressorhusky.com> or by the HUSKY Mark and has never acquired any trademark rights in the same. There is no evidence in the WHOIS information to suggest that Respondent is known by the disputed domain name <aircompressorhusky.com> . Indeed, given Complainant’s long-time and extensive world-wide rights in the HUSKY Mark in connection with hand tools, air power tools and other home improvement products, Respondent could not have rights in the HUSKY Mark unless Complainant has granted them to Respondent. However, that has not occurred.
· Complainant contends that the Respondent has not used the disputed domain name in good faith and in connection with a bona fide offering of goods or services. Complainant further contends that the Respondent’s use for commercial gain of a disputed domain name which is identical to the HUSKY Mark, in order to direct internet users interested in Complainant’s goods and services to a purported informational site containing numerous sponsored advertisements is not a legitimate noncommercial or fair use of the disputed domain name. In this regard, it relies upon the following decisions of this Forum :
i) Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA96577 (Nat. Arb. Forum Feb. 27, 2001) – holding that respondent's commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name.;
ii) State Farm Mut. Auto. Ins. Co. v. LaFaive, FA95407 (Nat. Arb. Forum Sept. 27, 2000) – holding that “[U]nauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”
· Complainant contends that in the present case, the disputed domain name <aircompressorhusky.com> directs internet users to Respondent’s website, which Respondent uses to offer information about Complainant’s licencee-Home Depot’s HUSKY tools and other related goods, as well as numerous sponsored advertisements. In order to substantiate its argument, the Complainant has attached as Exhibit D a partial hard copy of Respondent’s website on August 19, 2013.
· Complainant contends that when an internet searcher reaches the disputed domain name’s website <aircompressorhusky.com>and it clicks on the links and sponsored ads, he or she is connected immediately to the website of one of Complainant’s licencee-Home Depot’s competitors or is immediately provided with another list of links which lead to websites on which competing goods are sold. Upon information and belief, Respondent receives compensation each time a searcher clicks on one of these links, which constitutes use of the domain for commercial gain.
· Complainant further contends that the Respondent’s use of the disputed domain name <aircompressorhusky.com> is also commercial because the various companies linked to the website through these directory listings and sponsored ads benefit from subsequent interest and purchases. Complainant contends that various ICANN panels have held that there only needs to be commercial gain sought by some party. In this regard it relies upon the following decisions :
i) Focus Do It All Group v. Athanasios Sermbizis, D2000-0923 (WIPO October 6, 2000) - holding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial). Respondent’s use cannot be characterized as fair use. See id. (finding that Respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainants until they found that instead they were in a directory which would do the Complainants potential harm”). Respondent’s use of the domain name is not legitimate because it diverts Home Depot’s customers and potential customers to Respondent’s website and then to the websites of Home Depot’s competitors. See id. (finding that Respondent’s domain name which linked visitors to a directory of regional competitors was not a legitimate use).
ii) Homer, TLC Inc. v. Kang, FA573872 (Nat. Arb. Forum Nov. 22, 2005) – holding that the “Respondent’s use of ‘a’ domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering . . . or a legitimate noncommercial or fair use . . . .”). Such use of Home Depot’s trademark is clearly confusing and deceptive to consumers. As such, Respondent’s website <aircompressorhusky.com> is not used or maintained in good faith and in connection with a bona fide offering of goods or services.
· Complainant contends that the Respondent has Registered and used the disputed domain name in bad faith. There are two pieces of evidence that show Respondent had knowledge of Complainant’s (its licencee Home Depot’s) trademark rights, yet proceeded to register and use the disputed domain name <aircompressorhusky.com> in bad faith. Respondent has used Complainant’s (Home Depot’s) trademark in the disputed domain name to divert visitors to competitors; and is deemed to have constructive knowledge of Complainant’s (Home Depot’s) trademark rights at the time when Respondent had registered and began using the disputed domain name <aircompressorhusky.com> in light of Complainant’s (Home Depot’s) numerous US and international trademark applications and registrations for the HUSKY Mark.
· Complainant also contends that the Respondent is using the disputed domain name <aircompressorhusky.com> , which is identical to the HUSKY Mark, to direct internet users to a website with links and sponsored ads that direct visitors to goods and services that compete with Complainant’s licencee-Home Depot. Such use is concrete evidence of bad faith registration and use. Complainant in this regard has relied upon the following decisions :
i) Homer TLC, Inc. v. Unitedeurope Consulting, FA 1110103 (Nat. Arb. Forum Feb. 8, 2008) – holding that “Respondent’s use of the disputed domain name to advertise links to third-party competitors is evidence of registration and use in bad faith under Policy ¶ 4(b)(iii)”, and
ii) S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) - holding that the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business). Furthermore, it is clear that Respondent had actual knowledge of Complainants’ rights in the HUSKY mark and registered the disputed domain name with the HUSKY Mark in mind in light of the obvious link between Home Depot and the goods and services advertised thereon.
iii) MIVA, Inc. v. WhoIs Privacy Inc., citing Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) holding that because link between complainant’s mark and content advertised on respondent’s website obvious, respondent “must have known about the complainant’s mark when it registered the subject domain name.”
· Complainant further contends that in addition to above, Respondent is deemed to have constructive knowledge of Complainant’s licencee-Home Depot’s rights in the HUSKY Mark pursuant to multiple federal U.S. trademark registrations for the HUSKY Mark. “There is a legal presumption of bad faith when [Respondent] reasonably should have been aware of Complainant’s trademarks, actually or constructively.” In this regard it has relied upon the following decisions :
i) Digi Int’l v. DDI Sys., FA124506 (Nat. Arb. Forum Oct. 24, 2002); see also Thomas B. Hudson v. Ted Machi & Associates, Claim No. FA133759 (NAF Jan., 2003) – holding that “Respondent must be held to be on constructive notice of Complainant’s service mark . . . .”);
ii) Assante Holdings, Inc. v. Kevin Baker, Claim No. FA109384 (Nat. Arb. Forum May 20, 2002) – holding that “Respondent was on notice as to Complainant’s rights in its PERSONAL CFO mark when it registered the disputed domain name because Complainant’s mark is on the Principal Register of the United States Patent and Trademark Office. Registration of the disputed domain name despite this notice is evidence of bad faith registration.”
· Complainant contends that any use by Respondent of the HUSKY Mark, even as a domain name, is an infringement of Home Depot’s long-held rights under trademark law. As the panelist in C-Line Products, Inc. v. Ralco Consulting c/o Robert Lebeaux pointedly noted, a potential domain name registrant - “would be well-advised to heed the oft-repeated admonition, such as that of Scott W. Pink, in his treatise, The Internet & E-Commerce Legal Handbook (2001), where at page 110, he states: ‘Once you have decided on the TLDs and ccTLDs, you will want to select the second level of the domain, the words that signify your unique address. In doing so, you should first conduct both a domain name search to make sure the particular domain is available as well as a trademark search to make sure your choice of a domain name does not potentially infringe on another person or entity’s trademark rights.” C-Line Products, Inc. v. Ralco Consulting c/o Robert Lebeaux, Claim No. FA187608 (Nat. Arb. Forum October 20, 2003) (Emphasis supplied).
· Complainant contends that the Respondent knew about Complainant’s licencee-Home Depot’s rights in the HUSKY Mark and that the Respondent’s registration and infringing use of the disputed domain name <aircompressorhusky.com>, despite having such knowledge, indicates its bad faith.
B. Respondent
The Respondent in its Response to the Complaint has made the following submissions :
· Respondent has contradicted that it has not registered or used the disputed domain name in bad faith as it has not demonstrated any of the Policy ¶ 4(b) factors. Respondent states that it is not a competitor of Complainant and it has not created a likelihood of confusion.
· Respondent has not registered the disputed domain name to prevent the Complainant from itself using the disputed domain name. Respondent contends that the disputed domain name has never been up and running and it is planning to use it in the near future.
· Respondent further states that the name “Huksy” is a name of well-known dog breed and besides the Complainant, 163 others have registered trademarks exist that uses this generic dog breed name in their trademark.
· Respondent argues that the Complaint does not make any claims that the disputed domain name has been registered by it to prevent Complainant from itself using the disputed domain name.
· Respondent states that it denies that the disputed domain name is intended to divert internet users looking for Complainants’ products to its website as the domain points to a website that does not exist and therefore, is not listed on search engines.
· Respondent submits that it is also not a competitor of Complainant who seeks to disrupt Complainant’s business.
· Respondent states that the Complaints allegations that “When an Internet searcher reaches the <aircompressorhusky.com> website and clicks on the links and sponsored ads, he or she is connected immediately to the web site of one of Home Depot’s competitors or is immediately provided with another list of links which lead to websites on which competing goods are sold.” - are fabricated and not true for following reasons :
i) Our website is not listed in any search engine hence no search will end up on
our website.
ii) The description of the website is indeed of another domain which the Complainant deliberately removed from their original Annexure. (Exhibit II to Respondent’s Response)
Submissions of Respondent on Reverse Domain Name Hijacking
C. Additional Submissions
Complainant made the following additional submissions :
Additional Submissions relating to Disputed Domain Name
Confusingly Similar to Complainant’s HUSKY Mark
i) 3M Company v. ZengXianYun / XianYun Zeng, FA1207001452413 (Nat. Arb. Forum August 14, 2012) - holding that the addition of the terms “privacy” and “filter,” which have an obvious relationship to Complainant’s [3M Company’s] business, to Complainant’s mark in the disputed domain name <3mprivacyfilter.net> create a confusing similarity between the disputed domain name and the registered mark);
ii) Homer TLC, Inc. v. Whois Guard, FA619597 Nat. Arb. Forum Feb. 14, 2006) - holding that the addition of common words to Complainant’s registered mark did not negate the confusing similarity). Moreover, the addition of a generic top-level domain, such as “.com,” is irrelevant in determining similarity of Respondent’s <aircompressorhusky.com> domain to Home Depot’s HUSKY mark.
iii) Delta Corporate Identity, Inc. and Delta Air Lines, Inc, citing Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[t]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”);
iv) Thomas B. Hudson v. Ted Machi & Associates, FA133759 (Nat. Arb. Forum Jan. 21, 2003).
While placing reliance on this decision, it has been contended by the Complainant that it is apparent that the combination of the words “air compressor” and “husky” in the Domain is a reference to the Home Depot’s air tools products offered under its HUSKY mark.
v) Hewlett-Packard Dev. Co. L.P. v. Surya Tech., FA1059665 (Nat. Arb. Forum Oct. 2, 2007) - holding <hpsoftware.com> confusingly similar to HP and noting that “addition of a term that relates to the business in which Complainant engages and the addition of the gTLD are not sufficient to differentiate a domain name from a known mark”.) Respondent mentions that “husky” is also the name of a breed of dog, but it is difficult to imagine—and Respondent makes no attempt to explain—what connection air compressors might have with a breed of arctic canines or how this diminishes potential confusion with Complainant’s mark. The likelihood that Internet visitors will confuse the Domain with Complainant’s mark is not eliminated or diminished by the addition of the words “air compressor,” it is increased. Similarly the addition of .com does nothing to distinguish the disputed Domain name, which is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Additional Submissions contending Respondent to have not shown any
Legitimate Interest in the Disputed Domain Name
i) MB Fin. Bank, N.A. v. mbfinancialmortgage.com, FA 405073 (Nat. Arb. Forum Mar. 11, 2005) -holding that “Despite being listed in the WHOIS information as ‘mbfinancialmortgage.com,’ Respondent is not commonly known by this domain name nor is [it] authorized to register domain names featuring Complainant’s MB FINANCIAL mark.”
ii) Qwest Commc’ns Int’l, Inc. v. Qwest Networking, FA 238004 (Nat. Arb. Forum Apr. 8, 2004) - holding that “The Panel determines that, because of the fame of Complainant’s mark, Respondent does not have rights or legitimate interests in the <qwestcommunications.net> domain name, despite the presence of the word ‘qwest’ in the domain name registration WHOIS information.”
iii) Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) holding that no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question). When a respondent is not authorized by a complainant to use its mark, and it is not commonly known by the confusingly similar disputed domain name, it thus has no rights or interests in the disputed domain name.
iv) Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) - concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name.
i) Kate Spade, LLC v. Darmstadter Designs, No. D2001-1384 (WIPO Jan. 3, 2002) - citing UDRP Policy 4(c)). “Concrete evidence” requires documents or third party declarations in support of such assertions. Here, Respondent has not made any assertion of a legitimate interest in the disputed Domain and has shown no concrete evidence of having any right in Complainant’s HUSKY mark. Accordingly, Respondent has not shown any legitimate use to satisfy the requirements of Paragraph 4(c) of the Policy.
Additional Submissions relating to Respondent Registered and Used
the Disputed Domain Name in Bad Faith
i) Digi Int’l v. DDI Sys., FA124506 (Nat. Arb. Forum Oct. 24, 2002). Circumstantial Evidence Strongly Suggests that the Domain Was Registered in Bad Faith. In addition to the foregoing, there is compelling circumstantial evidence that the disputed Domain was registered as part of a pattern of bad faith registrations combining well-known marks with descriptive or generic terms.
ii) Citigroup Inc. v. Whois Privacy Service, FA1103001377993 (Nat. Arb. Forum May 5, 2011) - relying on circumstantial evidence in determining bad faith registration;
iii) Ace Cash Express, Inc. v. Portfolio Brains,: FA0710001093846 (Nat. Arb. Forum Dec. 5, 2007) relying explicitly on circumstantial evidence in ordering transfer of disputed domain). The Complainant recently succeeded in an action seeking the transfer of another disputed domain, lightinghamptonbay.com, under circumstances very similar to those presented in this case.
iv) Homer TLC, Inc. v.Reza Alavi, FA1305001500166 (Nat. Arb. Forum June 26, 2013), the disputed domain combined one of the Complainant’s registered trademarks, HAMPTON BAY, with the descriptive term “lighting,” and a gTLD. Id. As part of investigating its claims against that respondent, Reza Alavi, the Complainant obtained an Internet search of other domains owned by Mr. Alavi. This internet search revealed that Mr. Alavi had used the same email address as used in the <lightinghamptonbay.com> WHOIS record for over 84 domain names. In this regard it sought to rely upon Reverse Whois Lookup Report Preview and Google search results, which have been annexed with the Additional Submissions of Complainant, as Exhibit B.
The Domain at issue in this case, <aircompressorhusky.com>, was among the domain names owned by Mr. Alavi at the time. See id. This fact is significant because Mr. Alavi was found in the <lightinghamptonbay.com> proceeding to have acted in bad faith for identical conduct—the registration of a domain that combines of one of Complainant’s registered trademarks with a descriptive word and a gTLD—which suggests a pattern of bad faith.
i) Countrywide Financial Corporation v. Texas International Property Associates, FA1075750 (Nat. Arb. Forum Nov. 2, 2007) - holding respondent’s pattern of registering domains incorporating well-known third party marks to be evidence of bad faith under the Policy).
ii) FA1305001500166 - ordering transfer of disputed domain.
· The Complainant contends that the Respondent has averred that the disputed domain name is not in use. This is incorrect. While relying upon Exhibit-A to the Additional Submissions, the Complainant contends that the disputed domain name <aircompressorhusky.com> redirects to the domain <aircompressorhusky.com> and resolves to the website. This website contains information about Complainant’s licencee-Home Depot’s HUSKY tools along with numerous sponsored advertisements, some of which link to sites of Complainant’s competitors. Regardless of the content of such sponsored links, which is evidence of the disputed domain name being used in bad faith.
· Respondent’s attempt to profit from the use of Complainant’s mark in a confusingly similar Domain provides sufficient grounds for a finding of bad faith. Complainant contends that previous panelists have found bad faith where a site stands to profit from click-through links as a result of the similarity between a complainant’s mark and the respondent’s disputed domain name. In this regard it relies upon the following decisions :
i) United Services Automobile Association v. Transure Enterprise Ltd., FA1005001326392 (Nat. Arb. Forum July 6, 2010); Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) - holding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Using a domain name confusingly similar to Complainant’s famous trademark, and making use of Complainant’s trademark on his website, Respondent creates the false impression of a site and business that originates with or is sponsored by Complainant and this is the sort of conduct that falls under Policy ¶ 4(b)(iv).
ii) Etsy, Inc. v. Elizabeth McKinstry, FA1109001407949 (Nat. Arb. Forum Nov. 1, 2011) - holding that registration and use of domain name to offer unrelated hyperlinks is evidence of bad faith.
i) Deere & Co. v. pro-mower snow equipment, FA1306001505613 (Nat. Arb. Forum July 29, 2013);
ii) Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) - holding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website). The fact that the Domain continues to redirect and resolve to a website that purports to offer information on Complainant’s Husky air compressor products—while at the same time profiting from links and sponsored ads that direct visitors to goods and services that compete with Complainant and the products sold under its HUSKY mark—is clear evidence of bad faith.
· Complainant contends it has rights in the HUSKY mark through its use and various registrations with the USPTO. Complainant claims that it has used the HUSKY mark in Home Depot’s 2,100 stores in the United States, Canada, and Mexico, as well as online continuously in connection with hand tools, air power tools, and other home improvement products since as early as 1924.
· Respondent contends that the disputed domain name <aircompressorhusky.com> is comprised of common and generic terms and thus cannot be deemed confusingly similar to Complainant’s mark. Registration and use of disputed domain name comprising such common terms cannot be said to be done in bad faith.
· The Panel finds that the use of the domain name <aircompressorhusky.com> by the Respondent is in bad faith and the Respondent has no rights or legitimate interests in relation to the domain name.
· The Panel also finds that the domain name <aircompressorhusky.com> deserves to be transferred to the Complainant and the Respondent is not entitled to use this domain name. The Complaint deserves to be allowed forthwith and the Panel decides accordingly. However, in terms of the ICANN Policy and the requirements thereunder, the formal observations / findings of the Panel are as under.
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.
Preliminary Issue : Deficient Response
· Respondent submitted a Response which was received on September 25, 2013. The Response was received after the deadline to file a response, is not in compliance with ICANN Rule 5. The attention of the Panel is drawn towards the decision of this Forum in Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) - deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”
· The Panel, therefore, is of the view that ends of justice would be met if the Response of the Respondent is considered on merits of the case.
· Complainant contends it has rights in the HUSKY mark through its use and registrations with the USPTO. Complainant claims that it has used the HUSKY mark continuously in connection with hand tools, air power tools, and other home improvement products since as early as 1924. Complainant claims that through its licensee, Home Depot, Inc., Complainant offers goods under the HUSKY mark in Home Depot’s 2,100 stores in the United States, Canada, and Mexico, as well as online. Complainant provides the Panel with evidence of its registrations with the USPTO for the HUSKY mark, which include the following registrations:
i) Reg. No. 3,951,607 registered April 26, 2011
ii) Reg. No. 3,357,651 registered December 18, 2007
iii) Reg. No. 2,860,955 registered July 6, 2004
iv) Reg. No. 2,669,698 registered December 31, 2002
v) Reg. No. 1,881,043 registered February 28, 1995
vi) Reg. No. 882,793 registered December 23, 1969
vii) Reg. No. 186,808 registered July 22, 1924.
· The Panel observes that previous panels in various decisions have found that evidence of a registration with the USPTO is sufficient to establish rights in a given mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) - concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO. The Panel also observes that previous panels have also found that a complainant need not own registrations in the location of respondent, as long as complainant can establish rights in some jurisdiction. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) - holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business. The Panel concludes that Complainant has established rights in the mark HUSKY for the purposes of Policy ¶ 4(a)(i).
· Complainant argues that the disputed domain name <aircompressorhusky.com> is identical to Complainant’s HUSKY mark under Policy ¶ 4(a)(i). Complainant further argues that Respondent adds the terms “air” and “compressor” to Complainant’s HUSKY mark. Complainant also claims that Respondent adds the gTLD “.com” to Complainant’s mark. Previous panels have found that these variations are insufficient to differentiate a disputed domain name from a given mark. The Panel finds that these variations indicate that the disputed domain name is confusingly similar to the registered mark, even though Complainant claims that the disputed domain name is identical. In this regard, the Panel relies upon the following decisions :
i) Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) – holding that “[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”
ii) Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) - holding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark.
· The Panel thus finds that Respondent’s <aircompressorhusky.com> domain name is confusingly similar to Complainant’s HUSKY mark under Policy ¶ 4(a)(i).
· The Panel observes that while Respondent contends that the disputed domain name <aircompressorhusky.com> comprises of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. In this regard the Panel relies upon the following decisions :
i) Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) – holding examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)
ii) Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) - holding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶ 4(a)(ii) and ¶ 4(a)(iii).
· The Panel is reminded that 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. In this regard, the attention of the Panel is drawn towards the following decisions :
i) 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;
ii) AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) – holding that “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.”
· Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by it under Policy ¶ 4(c)(ii). Complainant also argues that Respondent has no relationship or affiliation with Complainant or Home Depot. Complainant further argues that Respondent has never been commonly known by the disputed domain name. The Panel observes that the WHOIS information for the <aircompressorhusky.com> domain name lists “Tomas Santos Rodrigues Minas-Gerais” as the domain’s registrant.
· The Panel observes that various previous panels have typically found that a respondent is not commonly known by a disputed domain name where there is no evidence on the record showing that the respondent was commonly known by the disputed domain name. In this regard it relies upon the decision of WIPO in Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) - finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question). The Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) and thus has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
· The Panel observes that the Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because it is not making a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain name under Policy ¶¶ 4(c)(i) or (iii) respectively. Complainant also argues that the Respondent uses the disputed domain name to redirect Internet users to Respondent’s website, displaying information about HUSKY-brand tools and goods, as well as advertisements. Complainant further contends that clicking on the links present on the resolving website connects the Internet user to a website that competes with Complainant and its products. Complainant argues that Respondent presumably receives compensation when Internet users’ click on the links present on the resolving website. The Panel observes from Exhibit-D, displaying the website resolving from the disputed domain name <aircompressorhusky.com>. The Panel also observes that the website features the heading “Husky Air Compressors” and gives an explanation of the product. The Panel further that the right side of the website features sponsored links including, “Air Compressors Direct,” “Top 7 Air Compressors,” “Lumber Liquidators,” “Josco Showroom & Toto,” “A/C Compressors- On Sale,” “Storage Tank,” and “Enter Your Zip Code.”
· The Panel observes that previous panels have found that using a confusingly similar domain name to resolve to a website featuring pay-per-click links that redirect to competing companies is not a bona fide offering of goods or services or a legitimate non-commercial or fair use. In this regard it relies upon the decision of this Forum in - Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) - holding that the operation of a pay-per-click website at a confusingly similar domain name 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)). Hence, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) or (iii).
· The Panel observes that the Complainant argues that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). Complainant has alleged that Respondent uses the confusingly similar domain name to direct Internet users to a website displaying links and sponsored ads directing Internet users to goods and services that compete with Complainant and Home Depot.
· The Panel observes that previous panels have found that using a confusingly similar domain name to resolve to a website featuring competing links indicates a respondent’s intent to disrupt a complainant’s business, thus indicating bad faith. In this regard it relies upon the decision of this Forum in David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) - holding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business.
· The Panel notes that the Complainant argues in its Complaint that Respondent had actual and constructive knowledge of Complainant's rights in the HUSKY mark. Complainant also argues that Respondent's offering of Complainant's brand of products and competing products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Complainant has also argued that its USPTO registrations for the HUSKY mark put Respondent on constructive notice of Complainant’s rights. The Panel finds that in the facts and circumstances of the present case, it would be apparent that the Respondent had the actual knowledge about the domain name belonging to the Complainant, i.e. <huskytools.com> and the Panel holds that the registration of the disputed domain name is similar to the said domain name belonging to the Complainant.
· The Panel finds that Respondent’s disputed domain name resolves to the website depicted in Complainant’s Exhibit-D, and the Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Reverse Domain Name Hijacking
· The Panel observes that Complainant has satisfied all the elements of Policy ¶ 4(a)(i), ¶ 4(a)(ii) & ¶ 4(a)(iii). The Panel finds that Complainant has not engaged in reverse domain name hijacking. In this regard, the Panel finds strength from the following decisions : -
i) World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) – holding that “Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”);
ii) Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) - finding no reverse domain name hijacking where complainant prevailed on the “identical/ confusingly similar” prong of the Policy).
· In the additional submissions, the Complainant has suitably answered the allegations which have been made in the reply submitted by the respondent. With reference to the allegation that the respondent does not have any website, the complainant has correctly responded by stating that the moment the disputed domain name is typed on the google search, it straightaway takes you to a website with the domain name as <aircompressorstalk.com>. This website contains information about Complainant’s licencee-Home Depot’s HUSKY tools along with numerous sponsored advertisements, some of which link to sites of Complainant’s competitors. The Complainant has suitably controverted the allegations made by the Respondent. The Panel is therefore of the view that the Complainant has not indulged in reverse domain name hijacking.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in favour of the Complainant.
Accordingly, it is Ordered that the <aircompressorhusky.com> domain name be TRANSFERRED from Respondent to Complainant.
Maninder Singh, Panelist
Dated: 12.10.2013
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