Homer TLC, Inc. v. Zhichao Yang
Claim Number: FA1404001556058
Complainant is Homer TLC, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotestimater.com>, registered with Name.com, 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.
Sandra J. Franklin 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.
On April 28, 2014, Name.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <homedepotestimater.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 April 29, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 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@homedepotestimater.com. Also on April 29, 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 May 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <homedepotestimater.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark.
2. Respondent does not have any rights or legitimate interests in the <homedepotestimater.com> domain name.
3. Respondent registered and uses the <homedepotestimater.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Respondent registered the <homedepotestimater.com> domain name on October 17, 2013, and uses it to direct Internet users to a website featuring links to Complainants 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.”).
The Panel finds that Complainant has rights in the HOME DEPOT mark under Policy ¶ 4(a)(i) because Complainant owns registrations for the mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). The Panel notes that a complainant need not own a registration in a respondent’s country of operation. See 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <homedepotestimater.com> domain name incorporates Complainant’s mark in its entirety and adds the generic term “estimater,” a misspelling of the term “estimator,” and the gTLD “.com.” The disputed domain name also removes the space between the words in Complainant’s mark. The addition of a generic term in a domain name does not distinguish it from a mark. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark. Removing a space and adding a gTLD also do not distinguish a disputed domain name from a mark. See 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)). Therefore, the Panel finds that Respondent’s <homedepotestimater.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“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 claims Respondent does not have any rights or legitimate interests in the <homedepotestimater.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its HOME DEPOT mark in any way. The WHOIS record for the disputed domain name lists “Zhichao Yang” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Thus, the Panel finds that Respondent is not commonly known by the <homedepotestimater.com> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that the <homedepotestimater.com> domain name resolves to a website with a search entry field labeled “Search Ads,” along with several third-party links for Complainant’s competitors. The Panel notes that the links include “Roof Estimator,” “Electrical Estimator,” and “Project Estimator.” Past panels have found that using a confusingly similar domain name to compete with a mark holder is not a bona fide offering of goods and services or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent is not making 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) because the Respondent is using the <homedepotestimater.com> domain name to promote links to Complainant’s competitors.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and is using the <homedepotestimater.com> domain name in bad faith. Complainant alleges that Respondent has previously registered domain names incorporating registered trademarks that were subsequently transferred or canceled in UDRP proceedings. See, e.g., Virgin Enter.s Ltd. v. Zhichao Yang, D2013-2112 (WIPO Jan. 29, 2014); Comerica Inc. v. Zhichao Yang / Whois Privacy Prot. Serv., Inc., Whois Agent, D2013-1184 (WIPO Sep. 11, 2013); Compagnie Générale des Etablissements Michelin (Michelin) v. Zhichao Yang, D2013-1418 (WIPO Sep. 17, 2013);The Net-A-Porter Group Ltd. v. Zhichao Yang, D2013-1748 (WIPO Nov. 28, 2013). In previous cases, panels have found that adverse UDRP proceedings involving a respondent constitutes evidence of bad faith in the instant case pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Therefore, the Panel finds that Respondent registered and is using the <homedepotestimater.com> domain name in bad faith under Policy ¶ 4(b)(ii) because Respondent has been involved in several prior UDRP proceedings that involved the transfer or cancellation of Respondent’s domain names.
Respondent is using the <homedepotestimater.com> domain name to direct Internet users to a website featuring third-party links to Complainants competitors, presumably for click-through revenue. Past panels have held that using a confusingly similar domain name to host third-party links to a complainant’s competitors constitutes a bad faith disruption of the complainant’s business pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent registered and is using the <homedepotestimater.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant asserts that Respondent had knowledge of Complainant’s HOME DEPOT mark prior to registering the <homedepotestimater.com> domain name because Respondent uses Complainant’s mark on the resolving website and Complainant has long-held rights in the mark. The Panel agrees and finds that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
The Panel finds that 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 <homedepotestimater.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 29, 2014
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