Homer TLC, Inc. v Above.com Domain Privacy
Claim Number: FA1406001564321
Complainant is Homer TLC, Inc. (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas. Respondent is Above.com Domain Privacy (“Respondent”), AU.
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is <myhomedepotaccouont.com>, registered with ABOVE.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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2014; the National Arbitration Forum received payment on June 12, 2014.
On June 16, 2014, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <myhomedepotaccouont.com> domain name is registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the names. ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.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 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 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@myhomedepotaccouont.com. Also on June 17, 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 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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.
Complainant
Complainant is the owner and user of the HOME DEPOT mark, used for years in connection with the provision of home improvement goods and services. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,431,636 registered Mar. 10, 1987). The domain name is identical to or confusingly similar to the HOME DEPOT Mark as it adds generic terms and a generic top-level domain ("gTLD")—nothing of distinction is present here.
Respondent is not known by the <myhomedepotaccouont.com> domain name, nor has Complainant approved of Respondent’s use of the HOME DEPOT mark in an Internet domain name. Further, Respondent’s use is not bona fide in that the website associated with the domain name is being used to promote various hyperlinks and other advertisements to various third-party companies.
Respondent has registered and is using the <myhomedepotaccouont.com> domain name in bad faith. First, Respondent is offering competing advertisements through this website in a manner that disrupts Complainant’s business. Second, Respondent’s typosquatting behavior is evidence of further bad faith. Finally, Respondent registered the domain name in bad faith with constructive knowledge of Complainant’s rights.
Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, Complainant is entitled to the relief requested.
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 is the owner and user of the HOME DEPOT mark, used for years in connection with the provision of home improvement goods and services. The mark has been registered with the USPTO (e.g., Reg. No. 1,431,636 registered Mar. 10, 1987). The Panel determines USPTO registration sufficiently evidences Complainant’s Policy ¶ 4(a)(i) rights. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant claims the domain name is identical to or confusingly similar to Complainant’s mark as it merely adds generic terms and a gTLD. The misspelled term “accouont” and the term “my” are added to form the <myhomedepotaccouont.com> domain name. The Panel finds that neither the gTLD nor the additional terms provide any distinction, and thus the domain name is confusingly similar under Policy ¶ 4(a)(i). See Cargill, Incorporated v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) (determining that the disputed domain name, which contains the complainant’s mark, along with two generic terms and a generic top-level domain, is the equivalent of the mark itself for the purposes of Policy ¶ 4(a)(i)).
Complainant has proven this element.
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 is not known by the <myhomedepotaccouont.com> domain name, nor has Complainant approved of Respondent’s use of the HOME DEPOT mark in an Internet domain name. “Above.com Domain Privacy” is the listed registrant of record for this domain name. The Panel concludes there is no evidence to find Respondent is commonly known by this domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also claims Respondent’s use is not bona fide in that the website associated with the domain name is being used to promote various hyperlinks and other advertisements to various third-party companies. The domain name resolves to a website featuring hyperlinks to various credit card services. In Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panel found no bona fide offering when the domain name resolved to a website used only for advertising purposes. The Panel here likewise finds the <myhomedepotaccouont.com> domain name provides neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant has proven this element.
Complainant claims Respondent is offering competing advertisements through this website in a manner that disrupts Complainant’s business. The domain name is being used to promote credit services, and Complainant alleges to offer a store-backed line of credit. The Panel finds that these general offering of credit services are sufficiently competitive with Complainant’s in-store credit offerings, and finds these ads are evidence of Policy ¶ 4(b)(iii) bad faith through commercial disruption. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Complainant also argues Respondent’s typosquatting behavior is evidence of further bad faith. Typosquatting exists when a subtle or nuanced spelling error is introduced into a party’s mark. See, e.g., Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) The disputed domain name adds two new terms to the HOME DEPOT mark: “my” and “accouont.” The Panel finds typosquatting has not been established.
Complainant further claims Respondent, with constructive knowledge of Complainant’s rights, registered the domain name in bad faith. Although past panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <myhomedepotaccouont.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: July 17, 2014
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