Homer TLC, Inc. v. Domain Admin / Abadaba S.A.
Claim Number: FA1406001563406
Complainant is Homer TLC, Inc. (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA. Respondent is Domain Admin / Abadaba S.A. (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotrebate.com>, registered with Fabulous.com Pty Ltd.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 6, 2014; the National Arbitration Forum received payment on June 6, 2014.
On June 9, 2014, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <homedepotrebate.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 June 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@homedepotrebate.com. Also on June 13, 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 July 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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 has rights in the HOME DEPOT mark, used in connection with home improvement retail store services and related goods and services. Complainant owns registrations for the HOME DEPOT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,314,081 registered Feb. 1, 2000).
b) Respondent’s <homedepotrebate.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the generic term “rebate” and the generic top-level domain (“gTLD”) “.com.”
c) Respondent does not have any rights or legitimate interests in the <homedepotrebate.com> domain name.
a. 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.
b. The <homedepotrebate.com> domain name resolves to a directory website providing a list of sponsored, click-through advertisements, including Complainant’s competitors. See Complainant’s Exhibit D.
d) Respondent registered and is using the <homedepotrebate.com> domain name in bad faith.
a. Respondent is disrupting Complainant’s business by directing Internet users to a webpage featuring links to competitor websites offering similar goods and services as those offered by Complainant. See Complainant’s Exhibit D.
b. Respondent had knowledge of Complainant’s HOME DEPOT mark prior to registering the <homedepotrebate.com> domain name because Complainant has long held multiple trademark registrations for the HOME DEPOT mark as well as other similar marks. See Complainant’s Exhibit B.
B. Respondent
a) Respondent did not submit a response in this proceeding.
b) The Panel notes that the disputed domain name was registered on October 23, 2005.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 contends it has rights in the HOME DEPOT mark, used in connection with home improvement retail store services and related goods and services. Complainant states it owns registrations for the HOME DEPOT mark with the USPTO (e.g., Reg. No. 2,314,081 registered Feb. 1, 2000). The Panel notes that Respondent resides or operates in a different country than that in which Complainant holds its trademark registration; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. 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). Therefore, the Panel finds that Complainant has rights in the HOME DEPOT mark within the meaning of Policy ¶ 4(a)(i) because Complainant holds several trademark registrations for the HOME DEPOT mark. 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)).
Complainant alleges that Respondent’s <homedepotrebate.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark. Complainant observes that the disputed domain name incorporates Complainant’s mark in its entirety while adding the generic term “rebate” and the gTLD “.com.” The Panel notes that the disputed domain name also removes the space that exists between the words in Complainant’s mark. First, the Panel finds that the addition of a generic term to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). Next, the Panel finds that removing a space and adding a gTLD does not negate a finding of confusing similarity. 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)).
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); 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 alleges Respondent does not have any rights or legitimate interests in the <homedepotrebate.com> domain name. Complainant states 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. 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). Therefore, because Respondent was not authorized by Complainant to use the HOME DEPOT mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, and thus the Panel finds that Respondent is not commonly known by the <homedepotrebate.com> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that the <homedepotrebate.com> domain name resolves to a directory website providing a list of sponsored, click-through advertisements, including Complainant’s competitors. See Complainant’s Exhibit D. The Panel notes that the links include “Find Local Painters,” “Commercial Contractor,” and “Sephora Office Coupons.” Id. Past panels have found that using a confusingly similar domain name to promote links of a complainant’s competitors fails to demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”). 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 Respondent is using the <homedepotrebate.com> domain name to provide a list of sponsored, competing links.
Complainant contends that Respondent registered and is using the <homedepotrebate.com> domain name in bad faith. Complainant asserts that Respondent is disrupting Complainant’s business by directing Internet users to a webpage featuring links to competitor websites offering similar goods and services as those offered by Complainant. See Complainant’s Exhibit D. Past panels have found that such conduct may indeed demonstrate a bad faith disruption under 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 <homedepotrebate.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because Respondent is using the disputed domain name to host competing hyperlinks.
Complainant claims Respondent had knowledge of Complainant’s HOME DEPOT mark prior to registering the <homedepotrebate.com> domain name because Complainant has long held multiple trademark registrations for the HOME DEPOT mark as well as other similar marks. See Complainant’s Exhibit B. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, as the Panel determines Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name due to the well-known status of the Complainant’s mark, the Panel concludes 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”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homedepotrebate.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 22, 2014
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