Homer TLC, Inc. v. Winsum Wong
Claim Number: FA1401001541694
Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Winsum Wong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homededot.com>, registered with Pheenix. Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2014; the National Arbitration Forum received payment on January 31, 2014.
On February 2, 2014, Pheenix. Inc. confirmed by e-mail to the National Arbitration Forum that the <homededot.com> domain name is registered with Pheenix. Inc. and that Respondent is the current registrant of the name. Pheenix. Inc. has verified that Respondent is bound by the Pheenix. 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 February 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2014 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@homededot.com. Also on February 11, 2014, 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 March 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
a. Complainant’s business was founded in 1978, and operates out of a warehouse-style building employing more than 330,000 employees in the United States. Complainant’s company sells products such as home appliances, tools, hardware, lumber, building materials, paint, plumbing, flooring, garden supplies and plants.
b. Complainant owns registrations for the HOME DEPOT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,314,081 registered February 1, 2000).
c. Respondent’s disputed domain name differs by only a single character from Complainant’s mark.
d. Respondent’s disputed domain name adds the generic top-level domain (“gTLD”) “.com” as well as removes the space in HOME DEPOT mark.
e. Respondent’s disputed domain name is a typosquatted version of Complainant’s HOME DEPOT mark.
f. Respondent is not commonly known by the <homededot.com> domain name. The WHOIS information for Respondent’s disputed domain name lists “Winsum Wong” as registrant. Complainant has also not authorized or licensed Respondent to use its mark in any way.
g. Respondent uses the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
h. Respondent’s use of the disputed domain name to divert consumers to a website promoting products that compete with complainant thereby disrupts Complainant’s business
i. Respondent uses the disputed domain name to resolve to a website displaying pay-per-click links for services and products offered by Complainant in order to commercially profit. Respondent uses a confusingly similar domain name to attract Internet users to its website for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the HOME DEPOT mark. Respondent’s domain name is confusingly similar to Complainant’s HOME DEPOT mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <homededot.com> domain name, and that Respondent registered and uses the domain name 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 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.”).
Complainant’s business was founded in 1978 and employs more than 330,000 employees in the United States. Complainant’s company sells products such as home appliances, tools, hardware, lumber, building materials, paint, plumbing, flooring, garden supplies and plants. Complainant argues that it has rights in the HOME DEPOT mark under Policy ¶ 4(a)(i). Complainant has provided evidence of its registrations for the HOME DEPOT mark with the USPTO (Reg. No. 2314081 registered February 1, 2000). Evidence of a registration for a mark with the USPTO is sufficient to establish rights in a given mark. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). It is irrelevant whether a complainant registered a disputed domain name in the location of respondent. 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 rights in the HOME DEPOT mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <homededot.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark under Policy ¶ 4(a)(i). Respondent’s domain name differs by only a single character from Complainant’s mark, specifically, replacing the “p” in “depot” with a “d.” Additionally, Complainant Respondent’s <homededot.com> domain name adds the gTLD “.com” as well as removes the space in HOME DEPOT mark. These variations do not differentiate a disputed domain name from a given mark. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant); 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)). The Panel therefore concludes that Respondent’s <homededot.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <homededot.com> domain name. Complainant asserts that Respondent is not commonly known by the <homededot.com> domain name under Policy ¶ 4(c)(ii) and that the WHOIS information for Respondent’s disputed domain name lists “Winsum Wong” as registrant. Complainant also argues that it has not authorized or licensed Respondent to use its mark in any way. Additionally, Complainant claims that Respondent registered the <homededot.com> domain name on June 10, 2010. Based on this uncontradicted evidence, the Panel concludes Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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).
Complainant further argues that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use, of the <homededot.com> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii). Respondent uses the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business, such as “Home Depot Official Site,” “Enter Your Zip Code,” “Still Need Property MGMT?” “Top 5 Water Heaters,” “Plumbing Contractors,” “Hot Water Heating Systems,” and “Home Depot Careers.” Using a confusingly similar domain name to resolve to a website featuring links, some of which relate to or compete with a complainant’s business, does not establish rights or legitimate interests for the respondent. See 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)). The Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and is using the <homededot.com> domain name in bad faith. Complainant contends that Respondent’s use of the disputed domain name to divert consumers to a website promoting products that compete with complainant thereby disrupts Complainant’s business in bad faith. Using a confusingly similar domain name to resolve to a website displaying links that compete with a complainant’s business disrupts complainant’s business by diverting Internet users to respondent’s website. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel concludes that Respondent registered and is using the <homededot.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Next, Complainant argues that Respondent registered and is using the <homededot.com> domain name in bad faith under Policy ¶ 4(b)(iv). Complainant has shown that Respondent uses the disputed domain name to resolve to a website displaying pay-per-click links for services and products offered by Complainant in order to generate commercial profit. Complainant contends that Respondent is therefore using the confusingly similar domain name to attract Internet users to its website for commercial gain. Bad faith may be found under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to attract Internet users to a website and thereby commercially profit from the Internet users’ confusion as to the trademark owner’s apparent affiliation with the disputed domain name. 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).”). The Panel concludes that Respondent registered and is using the <homededot.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant additionally asserts that Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. Typosquatting may be found where there is a disputed domain name representing a typographical error with respect to a complainant’s mark or correlation between an incorrect letter found in the disputed domain name and its placement on a computer keyboard near the correct letter as found in the complainant’s mark. 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).”). The Panel concludes that Respondent’s registration and use of the <homededot.com> domain name indicates bad faith use and registration under Policy ¶ 4(a)(iii) because the domain name is essentially a single-character misspelling of Complainant’s mark.
The Panel finds Complainant has satisfied 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 <homededot.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 17, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page