Homer TLC, Inc. v. Mongol Post / MogolPost
Claim Number: FA1310001526369
Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Mongol Post / MogolPost (“Respondent”), Mongolia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hoedepot.com>, registered with MONIKER.
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 October 24, 2013; the National Arbitration Forum received payment on October 24, 2013.
On October 24, 2013, MONIKER confirmed by e-mail to the National Arbitration Forum that the <hoedepot.com> domain name is registered with MONIKER and that Respondent is the current registrant of the name. MONIKER has verified that Respondent is bound by the MONIKER 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 October 25, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 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@hoedepot.com. Also on October 25, 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 November 19, 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 was founded in 1978, and the first stores were opened on June 22, 1979. Complainant offers products including home appliances, tools, hardware and lumber, building materials, paint, plumbing, flooring, garden supplies and plants. Complainant’s official website is <homedepot.com>.
Complainant is the owner of the trademark registration for the words THE HOME DEPOT and HOME DEPOT with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <hoedepot.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark. Respondent’s <hoedepot.com> domain name is a classic example of typosquatting.
Respondent has no rights or legitimate interests in the <hoedepot.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent is not licensed or authorized to use Complainant’s registered mark. Respondent is not legitimately affiliated with Complainant. Complainant has not given Respondent permission to use Complainant’s HOME DEPOT mark. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Respondent uses the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
Respondent registered the disputed domain name on November 19, 2004. Respondent registered and is using the <hoedepot.com> disputed domain name in bad faith. Respondent uses the disputed domain name to compete with and disrupt Complainant’s business. Respondent uses the disputed domain name to generate click-through revenue by providing links to services and products offered by Complainant. Respondent’s typosquatting behavior is evidence of bad faith.
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 direct Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business
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).
Respondent’s <hoedepot.com> domain name is simply a misspelled variation of Complainant’s HOME DEPOT mark. In forming the <hoedepot.com> domain name Respondent eliminated the “m” in “home” and then appends the generic top-level domain “.com.” These variations are insufficient to differentiate the at-issue domain name from Complainant’s registered trademark. Therefore, the Panel finds that Respondent’s <hoedepot.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also 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).
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 “Mongol Post / MogolPost” and the record before the Panel contains no evidence that tends to prove that Respondent is otherwise commonly known by the <hoedepot.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <hoedepot.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 disputed domain name to direct Internet users to a website featuring generic links to third-party websites some of which directly compete with Complainant’s business. These links include: “Home Depot Official Site,” “Absolute Plumbing & Rooter,” “Copper Repipe, Plumbing,” “AB Plumbing Services,” and “Used Oak Flooring.” Respondent is likely collecting click-through revenue via the featured links. Using a confusingly similar domain name to address a website displaying competing pay-per-click links is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
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).
As mentioned above, Respondent uses the at-issue domain name to direct Internet users to a website that offers links to Complainant’s competitors. As also mentioned above, the <hoedepot.com> website features links for products and services that are similar to Complainant’s products and services, including: “Absolute Plumbing & Rooter,” “Copper Repipe, Plumbing,” “Home Depot Home Improvement,” “Appliance Warehouse,” and “Homedepot.” Using the domain name in this manner is likely to disrupt Complainant’s business by diverting business away from Complainant and thereby demonstrates bad faith under Policy ¶ 4(b)(iii).. See 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).”).
Furthermore, Respondent uses the confusingly similar domain name to confuse Internet users who seek Complainant’s legitimate business that the website addressed by the at-issue domain name is somehow affiliated with, or sponsored by, Complainant. Respondent intends to benefit from the confusion by receiving a referral fee each time a wayward visitor clicks on one of the links displayed on Respondent’s <hoedepot.com> website. Therefore, Respondent’s use of the domain name further demonstrates bad faith under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Finally and importantly, Respondent is typosquatting. Typosquatting is a form of cybersquatting that relies on typographical errors made when Internet users mistype or misspell an Internet destination encompassing a trademark in which the typosquatter has no rights into a browser’s address bar or a search engine’s input field. The typosquatter anticipates that a significant number of mistyped addresses will match the form of mistake the typosquatter registered as a domain name and that thereby wayward visitors will end up on a website controlled by the typosquatter where they may be exploited via pay-per-click links and/or otherwise. In the instant case, the at-issue second level domain name only lacks the letter “m” and the space found in Complainant’s HOME DEPOT mark. Therefore, there is no doubt that Respondent’s purpose in registering and using the <hoedepot.com> domain name was to typosquat on Complainant’s HOME DEPOT trademark. Typosquatting, in and of itself, shows bad faith under Policy ¶4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hoedepot.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 20, 2013
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