Homer TLC, Inc. v. Issac Portis
Claim Number: FA1410001585480
Complainant is Homer TLC, Inc. (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA. Respondent is Issac Portis (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepot.xyz>, registered with Go Daddy, 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.
Luz Helena Villamil-Jimenez as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2014; the National Arbitration Forum received payment on October 17, 2014.
On October 21, 2014, Go Daddy, LLC confirmed by e-mail to the National Arbitration Forum that the <homedepot.xyz> domain name is registered with Go Daddy, LLC and that Respondent is the current registrant of the name. Go Daddy, LLC has verified that Respondent is bound by the Go Daddy, 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 October 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 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@homedepot.xyz. Also on October 21, 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 November 10, 2014.
On November 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luz Helena Villamil-Jimenez 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
Complainant asserts that Homer TLC, Inc. is the owner of the famous HOME DEPOT and THE HOME DEPOT trademarks. It adds that through its predecessor in interest and licensees, including The Home Depot, it commenced use of the trademarks HOME DEPOT and THE HOME DEPOT at least as early as 1979 in connection with home improvement retail store services and related goods and services.
Complainant further claims that Home Depot is the world’s largest home improvement specialty retailer and the fourth largest retailer in the U.S. with annual worldwide sales of more than $66 billion. It adds that Home Depot has more than 2,200 retail stores in the U.S., including stores in all 50 states, the District of Columbia, Puerto Rico and the U.S. Virgin Islands. Home Depot also has retail stores in ten Canadian provinces, Mexico and China. As a result of Home Depot’s efforts, the HOME DEPOT Marks have become famous, and have been found to be famous in numerous prior UDRP proceedings.
Lastly, Complainant contends that in addition to its extensive common law rights, Home Depot owns numerous U.S. federal registrations for its HOME DEPOT Marks.
Based on the foregoing, Complainant’s main contentions are as follows:
1. The homedepot.xyz domain name is identical to the HOME DEPOT Marks in which Home Depot has trademark rights worldwide.
According to the Complainant, the mere addition of a generic top-level domain, such as “.xyz,” is irrelevant in determining similarity of Respondent’s homedepot.xyz domain name to Home Depot’s HOME DEPOT Marks. The homedepot.xyz domain name is identical to and incorporates in its entirety the HOME DEPOT Marks.
2. Respondent Has No Rights or Legitimate Interests in the Domain Name because:
- Respondent has no relationship, affiliation, connection, endorsement or association with Home Depot. Respondent has never requested or received any authorization, permission or license from Home Depot to use the HOME DEPOT Marks in any way.
- There is no evidence in the WHOIS information to suggest that Respondent is known by the homedepot.xyz domain name.
- Respondent has not used the homedepot.xyz domain name in good faith or in connection with a bona fide offering of goods and services.
3. Respondent Registered and Used the Domain Name in Bad Faith.
Respondent has made no active use of the homedepot.xyz domain name, which is identical to the HOME DEPOT Marks, since it still resolves to nothing more than a “parked” web page.
B. Respondent
Respondent asserts that he has a transportation service and purchased the domain name for a good purpose. He claims that he was trying to expand his company by networking with other Taxi, Limos and other Car Services, and considered that the name was a good name for his Transportation Headquarters for all of the companies to gather. Respondent also mentions that he had all good intentions for the Domain Name, and express his apologies if for any reason the registration of the domain name <homedepot.xyz> caused a problem.
Complainant is the holder of several U.S. registrations for the trademarks THE HOME DEPOT and HOME DEPOT, as evidenced by the registration copies attached to the Complaint. The Panel therefore finds that with such registrations Complainant has established rights in the marks THE HOME DEPOT and HOME DEPOT under Policy ¶ 4(a)(i).
The Panel also finds that it is clearly established in the registration certificates for the trademarks HOME DEPOT (e.g. Reg. No. 2,314,081) and THE HOME DEPOT (e.g. Reg. No. 1,431,636) that the trademark basis of the complaint is in use at least since 1979.
The Panel considers as well that the presence of the generic top-level domain “.xyz” in the domain name <homedepot.xyz> is certainly irrelevant, inasmuch as generic top-level domains should be left out in order to carry out the comparison of names in case disputes arise. In the present case the identical condition of the domain name <homedepot.xyz> with the trademark HOME DEPOT is transparent, and no thorough elaborations are required to explain it. In this specific concern, the Panel is of the opinion that the identity of names, particularly when they relate with the distinctive words that conform a given trademark, does not happen by chance but because the “second to come” had knowledge of the trademark in question.
Moreover, based on the evidence submitted with the Complaint, the Panel finds that the claimant is also the owner of the domain name homedepot.com, which was registered in 1992 and has been maintained in force since then.
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.
The first requirement of the Policy in Paragraph 4(a)(i) for the Complainant to meet is to demonstrate its rights over a trademark identical or confusingly similar to a domain name registered by the Respondent.
In the present case, Complainant demonstrated with the trademark registration copies submitted with the Complaint that it is the exclusive owner of the trademarks HOME DEPOT and THE HOME DEPOT.
The trademark HOME DEPOT and the domain <homedepot.xyz> are identical, and this is undeniable. This circumstance, in the opinion on the Panel, no doubt may lead consumers to erroneously believe either that the website <homedepot.xyz> belongs to the Claimant, or that there is a business association between the Claimant and the Respondent.
In light of the foregoing, there is no doubt for the Panel that the Policy requirement in Paragraph 4(a)(i) is met as to the fact that the disputed domain name <homedepot.xyz> is identical to the trademark HOME DEPOT, in which the Claimant has rights.
In order to demonstrate that Respondent has no rights or legitimate interests in the Domain Name <homedepot.xyz>, Complainant elaborates on the provision contained in Paragraph 4 (c) of the Policy, which provides guidance to domain registrants as to how to demonstrate their rights to and legitimate interests in the domain name in responding to a Complaint.
To start, the Complainant asserts that Respondent has no relationship, affiliation, connection, endorsement or association with Home Depot. Respondent has never requested or received any authorization, permission or license from Home Depot to use the HOME DEPOT Marks in any way. The foregoing statement not only was not rebutted by the Respondent, but on the contrary it was confirmed in his response to the Complaint when he stated that “We did not have The Home Depot store in mind. It had nothing to do with retail. “
Afterwards, Complainant contends that Respondent has never been commonly known by the domain name homedepot.xyz or by the HOME DEPOT Marks and has never acquired any trademark rights in the same. In this concern, the Panel notes that according to the whois information submitted with the Complaint the disputed domain name registrant is “Isaac Portis”. Based upon this information, the Panel finds that indeed, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Moreover, Complainant states that Respondent has not used the <homedepot.xyz> domain name in good faith or in connection with a bona fide offering of goods and services since in fact, Respondent has not used the subject domain name at all. Respondent’s <homedepot.xyz> domain name currently resolves to a blank, “parked” web page containing no content other than advertisements and links for GoDaddy.com. The Panel is in agreement with the contention that Respondent’s failure to make an active use of a domain name that is identical to Complainant’s HOME DEPOT Marks is not a bona fide offering of goods or services.
On the other hand, the Respondent did not provide the slightest statement as regards any claimed rights or legitimate interests over the disputed domain name <homedeport.xyz>. Under this scenario, the Panel considers that the Policy requirement in Paragraph 4(a)(ii) is met as to the fact that the Respondent has no rights or legitimate interests in respect of the domain name <homedepot.xyz>.
According to Paragraph 4 (b) of the Policy, when certain circumstances are present in a given case they shall be evidence of the registration and use of a domain name in bad faith. Among such circumstances the Policy mentions in Paragraph 4(b)(iv): using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant 's mark as to the source, sponsorship, affiliation, or endorsement of you’re the Respondent’s site or location or of a product or service on the Respondent’s web site or location. The Panel considers that in the present case, the fact that the Domain Name <homedepot.xyz> is identical to the registered trademark HOME DEPOT clearly indicates that there is a prima facie intention of the Respondent to attract Internet users for commercial gain.
Furthermore, Complainant asserts that Respondent is deemed to have constructive knowledge of Complainant’s rights in the HOME DEPOT Marks pursuant to multiple federal U.S. trademark registrations and applications, as well as worldwide trademark registrations and applications, for the HOME DEPOT Marks. “There is a legal presumption of bad faith when [Respondent] reasonably should have been aware of Complainant’s trademarks, actually or constructively.” The Panel concurs with this line of reasoning, which is complemented with the fact that Complainant has extensively used and continues using the trademarks HOME DEPOT and THE HOME DEPOT in the U.S. market. This being the case, the Registrant could not have registered a domain name identical to said trademarks in good faith, because any identical reproduction of a trademark manner is an infringement thereof, and infringements entail bad faith.
Based on the foregoing ratio, the Panel considers that the Policy requirement in Paragraph 4(a)(iii) is met as to the fact that the Respondent registered and uses the domain name <homedepot.xyz> in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homedepot.xyz> domain name be TRANSFERRED from Respondent to Complainant.
Luz Helena Villamil-Jimenez, Panelist
Dated: December 1st, 2014
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