Homer TLC, Inc. v. Pavol Icik / Poste restante
Claim Number: FA1404001556047
Complainant is Homer TLC, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Pavol Icik / Poste restante (“Respondent”), Slovakia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bluehomedepot.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 25, 2014; the National Arbitration Forum received payment on April 25, 2014. The Complaint was submitted in both Slovak and English.
On April 29, 2014, Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com confirmed by e-mail to the National Arbitration Forum that the <bluehomedepot.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com 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 April 30, 2014, the Forum served the Slovak language Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of May 20, 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@bluehomedepot.com. Also on April 30, 2014, the Slovak language 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 May 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Language of the Proceedings
The Registration Agreement is written in Slovak, thereby making the language of the proceedings in Slovak. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Slovak language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant, Homer TLC, Inc., is the world’s largest home improvement specialty retailer and the fourth largest retailer in the US with annual worldwide sales of more than $66 billion. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HOME DEPOT mark (e.g., Reg. No. 2,314,081, registered February 1, 2000). Respondent’s <bluehomedepot.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has never been commonly known by the <bluehomedepot.com> domain name. The website at the disputed domain name contains only sponsored, click-through advertisements redirecting Internet users to third-party websites, including the websites of some of Complainant’s competitors.
Respondent registered and used the disputed domain name in bad faith. Respondent is using the disputed domain name to direct Internet users to third-party commercial websites, including the websites of some of Complainant’s competitors. Respondent had constructive knowledge of Complainant’s trademark rights at the time Respondent registered and began using the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Homer TLC, Inc., is the world’s largest home improvement specialty retailer and the fourth largest retailer in the US with annual worldwide sales of more than $66 billion. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HOME DEPOT mark (e.g., Reg. No. 2,314,081, registered February 1, 2000).
Respondent, Pavol Icik / Poste restante, registered the <bluehomedepot.com> domain name on November 27, 2013. Respondent is using the disputed domain name to direct Internet users to third-party commercial websites, including the websites of some of Complainant’s competitors.
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 owns rights in the HOME DEPOT mark under Policy ¶ 4(a)(i) through registration with the USPTO. 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 <bluehomedepot.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark under Policy ¶ 4(a)(i). The addition of the common or generic term “blue” to Complainant’s HOME DEPOT mark does not differentiate the domain name from the mark. Respondent’s addition of a gTLD to Complainant’s mark and removal of a space in Complainant’s mark does not prevent a finding of confusing similarity.
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. See 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.
Respondent is not commonly known by the <bluehomedepot.com> domain name under Policy ¶ 4(c)(ii). Respondent has no relationship, affiliation, connection, endorsement, or association with Complainant. Complainant has not given Respondent permission to use the HOME DEPOT mark. The WHOIS information lists the registrant of the disputed domain name as “Pavol Icik / Poste restante.” See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006)(respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as respondent was not authorized to register domain names featuring complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Respondent’s website at the <bluehomedepot.com> domain name contains only sponsored, click-through advertisements redirecting Internet users to third-party websites, including the websites of some of Complainant’s competitors. Respondent’s disputed domain name is used to provide links titled “Home Depot Coupon,” “Air Conditioner Problems?,” “Central Heat & A/C- Sears,” and others. Respondent presumably receives compensation every time one of the links displayed on the disputed domain name is clicked by an Internet user. The Panel finds that Respondent is not using the <bluehomedepot.com> domain name in connection with 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). 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).”).
Respondent is using the <bluehomedepot.com> domain name to provide click-through links redirecting Internet users to third-party websites, including the websites of some of Complainant’s competitors. In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the panel found that respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names. Accordingly, the Panel finds that Respondent’s use of the <bluehomedepot.com> domain name is disruptive to Complainant’s business, showing bad faith under Policy ¶ 4(b)(iii).
Respondent uses the <bluehomedepot.com> domain name to operate a website featuring links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. The Panel finds that Respondent has registered and is using the <bluehomedepot.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Respondent had actual knowledge of Complainant's HOME DEPOT mark when registering the disputed domain name. Therefore, Respondent registered the <bluehomedepot.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bluehomedepot.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 4, 2014
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