Homer TLC, Inc. v. Matthew Ritze
Claim Number: FA1502001605820
Complainant is Homer TLC, Inc. (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA. Respondent is Matthew Ritze (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <roofingcontractorhomedepot.com>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 19, 2015; the Forum received payment on February 19, 2015.
On February 20, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <roofingcontractorhomedepot.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 February 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 2015 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@roofingcontractorhomedepot.com. Also on February 23, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant made the following contentions
Complainant uses the HOME DEPOT mark in connection with its home improvement retail store services and roofing installation services. Complainant has registered the HOME DEPOT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,314,081, registered February 1, 2000), which demonstrates its rights in the mark. The <roofingcontractorhomedepot.com> domain name is confusingly similar because it incorporates the HOME DEPOT mark in its entirety, eliminates the space between words, adds the generic top-level domain name (“gTLD”) “.com”, and adds the descriptive terms “roofing” and “contractor” which may be associated with Complainant’s business purposes.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name or any variant of HOME DEPOT, nor has Respondent received authorization from Complainant to use the HOME DEPOT mark or any variation thereof. Further, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <roofingcontractorhomedepot.com> domain name. Rather, it resolves to an inactively held page that immediately redirects users to <championroofcompany.com>, Respondent’s roofing business that is in direct competition with Complainant.
Respondent is using the <roofingcontractorhomedepot.com> domain name in bad faith. Respondent, by redirecting Internet users to his business’s site in direct competition with Complainant, is acting in bad faith disruption. Additionally, Respondent’s use of the website constitutes an inactive holding of the domain name. Finally, Respondent had actual or at least constructive notice of Complainant’s mark when registering the <roofingcontractorhomedepot.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
However, on February 24, 2015 Respondent sent an email to the Forum stating, formal parts omitted, the following: “No need to go any further... The domain was purchased through Godaddy and was always parked. Never was it used for gain. I'm having Godaddy remove the domain from my account immediately. I didn't think it was a big deal to let it just sit there. I obviously was wrong, you and your company think this is very serious. I would like to apologize and let you know I sent an email authorizing the removal of the domain immediately from my account and also tried to have it done over the phone but to no avail. Godaddy said they need to have their dispute department remove it. So once that is done I will forward a copy to you and yours...”.
Respondent, on February 24, 2015, in response to procedural advice from the Forum, sent a further email to the Forum stating, formal parts omitted, the following: “Whomever needs to contact me for the transfer of the domain, please forward what is needed to do so...”.
Respondent, on March 30, 2015, sent a further email to the Forum
stating, formal parts omitted, the following: “Hello to all. Good Monday Morning.
As mentioned prior please remove the domain in question from my Go Daddy
account immediately. I spend between $50,000-$150,000 each year
with Home Depot and do not wish to continue this dispute over the domain any
longer. Please advise on what is required to make this happen.
Thank you.”
Preliminary Issue: Consent to Transfer
In the correspondence aforesaid, Respondent consents to transfer the <roofingcontractorhomedepot.com>, domain name to Complainant. However, after the initiation of this proceeding, GoDaddy.com, LLC placed a hold on Respondent’s account. As a result, the Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, it is appropriate that the Panel should forego the traditional UDRP analysis and order an immediate transfer of the <roofingcontractorhomedepot.com> domain name. That approach has been followed in several UDRP decisions. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”). Accordingly, for the reasons aforesaid, the Panel will order an immediate transfer of the <roofingcontractorhomedepot.com> 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.
It is clear from the above decisions that such an analysis is not necessary where Respondent has consented to the transfer of the disputed domain name, as Respondent has done in the present case. In response to the Complaint, of which he had notice, Respondent used the words set out above in the Contentions section of this decision in emails to the Forum. Those words can be interpreted only as an unequivocal consent by Respondent that the disputed domain name should be transferred to Complainant. As the Panel finds that these are the facts, the Panel also finds that this is an appropriate case to apply the conclusions and reasoning in the above decisions and in other decisions to the same effect, such as Citigroup Inc. v. Texas International Property Associates- NA NA ,FA0806001210904 (Nat. Arb. Forum, Aug. 5, 2008) and Scores Holding Company, Inc. v. Jason davison, FA 1403001551756 (Nat. Arb.Forum April 26, 2014).
Accordingly, the Panel finds that it is unnecessary and inappropriate to make any other findings of fact or law and that it should proceed forthwith to order the transfer of the disputed domain name to Complainant.
For the reasons set out above, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <roofingcontractorhomedepot.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 7, 2015
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