Homer TLC, Inc. v. CORNELIU IOAN
Claim Number: FA1406001563639
Complainant is Homer TLC, Inc. (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA. Respondent is CORNELIU IOAN (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <home-depots.com>, registered with GODADDY.COM, LLC.
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.
Scott R. Austin, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 9, 2014; the National Arbitration Forum received payment on June 9, 2014.
On June 10, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <home-depots.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 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@home-depots.com. Also on June 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.
A timely Response was received and determined to be complete on June 19, 2014.
A timely Additional Submission was received by Complainant and determined to be complete on June 24, 2014.
On June 26, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Scott R. Austin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
1. Complainant, Homer TLC, Inc., is the world’s largest home improvement specialty retailer.
2. Complainant owns a number of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HOME DEPOT mark, including Reg. No. 2,314,081, registered February 1, 2000.
3. Respondent’s disputed domain name is confusingly similar to Complainant’s HOME DEPOT mark.
4. Respondent has no rights or legitimate interests in the disputed domain name.
5. Respondent has never been commonly known by the disputed domain name.
6. The website at the disputed domain name contains only a search entry field labeled “Search Ads,” and several sponsored, click-through advertisements redirecting Internet users to third-party websites, including the websites of some of Complainant’s competitors.
7. Respondent registered and used the disputed domain name in bad faith.
8. Respondent is using the disputed domain name to direct Internet users to websites offering products and services in direct competition with Complainant.
9. Respondent is deemed to have constructive knowledge of Complainant’s trademark rights at the time Respondent registered and began using the disputed domain name.
B. Respondent makes the following contentions:
1. Respondent consents to transfer the domain name, but asks the Panel to accept that Respondent did not understand the words were Complainant’s brand and did not intend bad faith.
C. Complainant’s Additional Submission – A Reply to Respondent’s Contentions
1. Respondent admits that he registered the domain name with an intent to use it for pay-per-click advertising.
2. Respondent lives in Flushing, New York, where there are two HOME DEPOT stores and a total of seven HOME DEPOT stores within five miles.
Complainant owns numerous registrations for the famous HOME DEPOT and THE HOME DEPOT trademarks and provides its home improvement services using its distinctive marks throughout the U.S., Canada and abroad;
Complainant has used its marks in the U.S. since at least as early as 1979.
Complainant registered the homedepot.com domain name in 1992, and Complainant has continuously maintained the registration for homedepot.com since that time.
Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the HOME DEPOT mark (Reg. No. 2,314,081, registered February 1, 2000).
Complainant’s marks were registered in the U.S well before Respondent registered its domain name on November 11, 2013.
Respondent’s disputed domain name, <home-depots.com> is confusingly similar to Complainant’s mark, because it incorporates Complainant’s distinctive HOME DEPOT mark in its entirety and adds only a hyphen between the two words comprising the mark and the letter “s” to DEPOT and the addition of a generic top-level domain. These additions do not distinguish the disputed domain name from Complainant’s marks but may in fact add to the disputed domain name’s confusing similarity to Complainant’s marks.
Respondent’s WHOIS information identifies Respondent CORNELIU IOAN as registrant of the disputed domain name.
Respondent is not commonly known by Complainant’s HOME DEPOT or THE HOME DEPO, nor is Respondent authorized by Complainant to use any of Complainant’s marks.
Respondent is not affiliated with Complainant, nor an authorized employee, vendor, supplier, or distributor of Complainant’s goods or services.
Respondent has no rights or legitimate interests in the disputed domain <home-depots.com> because it resolves to a website that provides for various searches linking users to websites where the products and services of competitors of Complainant are sold.
Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
Respondent used Complainant’s trademarks in its domain name to direct Internet users to websites offering products and services in direct competition with Complainant.
Respondent had constructive knowledge of Complainant’s trademark rights at the time Respondent registered and began using the disputed domain name
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.
Preliminary Issue: Consent to Transfer
Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. The Panel finds that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
As in Graebel, the Panel here is of the view that the consent to transfer is insufficient and this case should be decided on the merits, especially here, where the disputed domain name is not merely “generic words” as Respondent asserts, but ones that were identical to Complainant’s distinctive mark, except for the insertion of a hyphen and addition of an “s” and gTLD.
Complainant contends and has submitted evidence of numerous registrations of its trademarks with the USPTO and contends that it is the world’s largest home improvement specialty retailer. Complainant owns a trademark registration with the USPTO for the HOME DEPOT mark (Reg. No. 2,314,081 registered February 1, 2000). The Panel also observes that Respondent, as well as Complainant, reside within the United States. The Panel finds that Complainant’s registration of the HOME DEPOT mark with the USPTO sufficiently shows that it has rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); Delta Corporate Identity, Inc. and Delta Air Lines, Inc. v. dltaairlines.com and deltaaairlines.com c/o Hanna El Hinn, FA548217 (Nat. Arb. Forum Oct. 12, 2005); Innomed Techs., Inc. v. DRP Servs., FA221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes complainant's rights in the mark”).
Complainant contends that Respondent’s <home-depots.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark. Complainant argues that Respondent’s disputed domain incorporates Complainant’s distinctive HOME DEPOT mark in its entirety and adds only a hyphen between the two words comprising the mark and the letter “s” to DEPOT and the addition of a generic top-level domain (“gTLD”) “.com”. The Panel finds that Respondent’s addition of a hyphen does not negate the confusing similarity between the domain name and Complainant’s mark under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). The Panel also finds that Respondent’s addition of a single letter ”s” to Complainant’s mark is irrelevant under Policy ¶ 4(a)(i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel finds that Respondent’s addition of a gTLD does nothing to negate a panel from finding confusing similarity under Policy ¶ 4(a)(i). 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). Therefore, the Panel finds that Respondent’s <home-depots.com> domain name incorporating Complainant’s mark in its entirety is confusingly similar to Complainant’s HOME DEPOT mark pursuant to Policy ¶ 4(a)(i).
Although Respondent contends that the disputed domain name<home-depots.com> is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel observes that such a determination is not necessary under Policy ¶ 4(a)(i) as this section
of the Policy considers only whether Complainant has rights in its mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
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 that Respondent has never been commonly known by the <home-depots.com> domain name. Complainant asserts that there is no evidence in the WHOIS information to suggest that Respondent is known by the domain name. The Panel notes that Respondent is identified as “CORNELIU IOAN” in the WHOIS record. Complainant asserts that Respondent has no relationship, affiliation, connection, endorsement, or association with Complainant. Complainant argues that Respondent has never requested or received any authorization, permission, or license from Complainant to use the HOME DEPOT marks in any way. The Panel finds that Respondent is not commonly known by the <home-depots.com> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant contends and has submitted evidence showing that the website at the <home-depots.com> domain name contains a search entry field labeled “Search Ads,” at the bottom of the page and several sponsored, click-through advertisements redirecting Internet users to third-party websites, including the websites of some of Complainant’s home improvement competitors. The Panel observes that Respondent uses its disputed domain name to direct Internet users to links to Complainant’s home improvement competitor “Lowes”, with links such as “Lowes Roofing,” “Lowes Calculator,” “Lowes Stock Price Today,” and more. In Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), the panel held 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). Panel finds, therefore. that Respondent is not using the <home-depots.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant asserts that Respondent is using the <home-depots.com> domain name to direct Internet users to websites offering products and services in direct competition with Complainant. As noted above the Panel finds that Respondent uses the disputed domain name through its web site at the disputed domain to lead consumers to a webpage offering links to competitor products and services such as “Lowes Roofing,” “Lowes Calculator,” “Lowes Stock Price Today,” and more. Complainant contends in its Additional Submission that Respondent admits that he registered the domain name with an intent to use it for pay-per-click advertising. The Panel finds that Respondent receives pay-per-click revenue through the use of his disputed domain name. The Panel also finds that Respondent is using the disputed domain name to divert consumers from Complainant to his own website for commercial profit, and concludes that Respondent has registered and is using the <home-depots.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant argues that Respondent, who lives in the United States now and did so at the time he registered the disputed domain name, is deemed to have constructive knowledge of Complainant’s trademark rights at the time Respondent registered and began using the <home-depots.com> domain name on November 11, 2013, based on the first use, filing and registration dates for Complainant’s multiple federal US trademark registrations and applications for its HOME DEPOT marks. Further, the Panel notes that in Complainant’s Additional Submission, Complainant alleges that Respondent lives in Flushing, New York, where there are two HOME DEPOT stores and a total of seven HOME DEPOT stores within five miles of his hometown. Although some panels have found that constructive notice alone is not sufficient to support a bad faith finding, the Panel here finds that, due to Respondent’s proximity to HOME DEPOT stores, Respondent had not only constructive, but actual knowledge of the mark and Complainant's successful consumer appeal and use and distinctive rights in the mark. Consequently, the Panel finds that Respondent registered the <home-depots.com> domain name in bad faith under Policy ¶ 4(a)(iii). See 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.”) but see The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <home-depots.com> domain name be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Panelist
Dated: July 14, 2014
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