Homer TLC, Inc. v. KAREL KAPTEYN / BEE38
Claim Number: FA1504001613701
Complainant is Homer TLC, Inc. (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA. Respondent is KAREL KAPTEYN / BEE38 (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homeupgradedepot.com>, registered with ENOM, INC..
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 9, 2015; the Forum received payment on April 9, 2015.
On April 13, 2015, ENOM, INC. confirmed by e-mail to the Forum that the <homeupgradedepot.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. 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 April 14, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 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@homeupgradedepot.com. Also on April 14, 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 May 13, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Homer TLC, Inc. is the owner of the famous HOME DEPOT and THE HOME DEPOT trademarks. Homer TLC, Inc., through its predecessor in interest and licensees, including The Home Depot (collectively “Home Depot”), commenced use of the trademarks HOME DEPOT and THE HOME DEPOT (hereinafter the “HOME DEPOT Marks”) at least as early as 1979 in connection with home improvement retail store services and related goods and services. Since that time, Home Depot has continuously used the HOME DEPOT Marks in commerce in the United States and abroad.
Today, 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. 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.
In addition to its extensive common law rights, Home Depot owns numerous U.S. federal registrations for its HOME DEPOT Marks, including, among others, the following: THE HOME DEPOT (Reg. Nos. 1,431,636; 2,825,232; 4,185,403; 4,212,770; 4,216,628; 4,216,629; 4,220,687; 4,220,741; 4,252,553 and 4,438,588), THE HOME DEPOT & Design (Reg. Nos. 1,297,161; 1,835,705; 2,391,201 and 4,256,235), THE HOME DEPOT (Stylized) (Reg. No. 4,300,027), HOME DEPOT (Reg. No. 2,314,081), THE HOME DEPOT KIDS WORKSHOP (Reg. No. 2,316,186), THE HOME DEPOT FOUNDATION. (Reg. No. 3,650,106), HOME DEPOT FUEL (Reg. No. 3,722,317), ECO OPTIONS THE HOME DEPOT & Design (Reg. No. 3,671,105), GET IT INSTALLED THE HOME DEPOT & Design (Reg. No. 3,885,173) and THE HOME DEPOT PRO XTRA & Design (Reg. No. 4,392,280). These registrations are valid, subsisting and enforceable. The HOME DEPOT Marks are distinctive, well-known and famous marks.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
[a.] The <homeupgradedepot.com> domain name is confusingly similar to the HOME DEPOT Marks in which Home Depot has trademark rights worldwide.
[i] Home Depot has rights in its trademarks.
The HOME DEPOT Marks have been used in commerce in connection with, among other things, home improvement retail store services since at least as early as 1979. In addition, Home Depot has registered and uses the domain name homedepot.com in connection with the advertising of its retail store services on the Internet. Home Depot first registered the homedepot.com domain name in 1992 and has continuously maintained the registration for homedepot.com since that time.
The HOME DEPOT Marks have become highly valuable assets of Home Depot, representing substantial goodwill. The value of these assets has been cultivated as a result of Home Depot’s continuous and exclusive use of the marks for many years, and because of Home Depot’s efforts to promote the mark through the expenditure of substantial sums and careful control of the public perception of both the nature and quality of the goods and services provided in connection with the marks.
It is well established under the Policy that Home Depot’s registration of a mark with federal authority establishes a prima facie case of Home Depot’s rights. See, e.g., Delta Corporate Identity, Inc. and Delta Air Lines, Inc. v. dltaairlines.com and deltaaairlines.com c/o Hanna El Hinn, FA548217 (NAF Oct. 12, 2005), citing Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.”), and Innomed Techs., Inc. v. DRP Servs., FA221171 (NAF Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes complainant's rights in the mark”).
[ii] The <homeupgradedepot.com> domain name is confusingly similar to the HOME DEPOT Marks.
Home Depot has used its HOME DEPOT Marks in commerce since at least 1979. As noted above, such long-standing and continuous use gives Home Depot exclusive rights in the HOME DEPOT Marks. ICANN panels have found that, where, as in this case, a domain name incorporates a distinctive mark in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar. See Lowen Corp. v. Henry Chan, D2004-4030 (WIPO August 5, 2004) (finding that the domain name lowensigns.com is confusingly similar to LOWEN).
Furthermore, the addition of the common or descriptive term “upgrade” to Home Depot’s famous HOME DEPOT trademark does not negate the confusing similarity between <homeupgradedepot.com> and the HOME DEPOT Marks under Policy ¶4(1)(i). See Exxon Mobil Corporation v. mga enterprises limited, FA0907001273445 (NAF Aug. 26, 2009) (finding that the addition of the terms “travel” and “club,” which have an obvious relationship to Complainant’s [Exxon’s] business, to Complainant’s mark in the disputed domain name <exxontravelclub.com> create a confusing similarity between the disputed domain name and the registered mark); Homer TLC, Inc. v. Whois Guard, FA619597 (NAF Feb. 14, 2006) (finding that the addition of common words to Complainant’s registered mark did not negate the confusing similarity). Moreover, the addition of a generic top-level domain, such as “.com,” is irrelevant in determining similarity of Respondent’s <homeupgradedepot.com> domain to Home Depot’s HOME DEPOT Marks. See, e.g., Delta Corporate Identity, Inc. and Delta Air Lines, Inc, citing Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[t]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”); See also, Thomas B. Hudson v. Ted Machi & Associates, FA133759 (NAF Jan. 21, 2003).
In this case, the <homeupgradedepot.com> domain name is confusingly similar to and incorporates in its entirety the HOME DEPOT Marks. The domain name differs from the HOME DEPOT Marks only by the additions of the common or descriptive word “upgrade” and the top-level domain, .com. These minor differences are insufficient to distinguish the <homeupgradedepot.com> domain name from the HOME DEPOT Marks.
[b.] Respondent Has No Rights or Legitimate Interests in the Domain Name.
Because Home Depot has made a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests in the Domain Name. See, e.g., Tejon Ranchcorp and Tejon Ranch Co. v. J & L Enterprises, FA524749 (NAF September 20, 2005), citing Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (where complainant has asserted that respondent has no rights or legitimate interests with respect to domain name, respondent must come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent.”), and G.D. Searle v. Martin Mktg., FA118277 (NAF Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent”).
Moreover, Respondent must show it has rights or legitimate interest in respect of the domain name at issue by “concrete evidence.” See Kate Spade, LLC v. Darmstadter Designs, No. D2001-1384 (WIPO Jan. 3, 2002) citing UDRP Policy 4(c). “Concrete evidence” requires more than personal assertions; it requires documents or third party declarations in support of such assertions. Id. A failure to produce such concrete evidence entitles a panel to conclude that the respondent has no such rights or legitimate interest. Id.
From the evidence discussed below, it is clear that Respondent has no rights or legitimate interest in the <homeupgradedepot.com> domain name.
[i] Respondent has no relationship with Home Depot.
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.
[ii] Respondent has never been commonly known by the domain name <homeupgradedepot.com> or by the HOME DEPOT Marks and has never acquired any trademark rights in the same.
There is no evidence in the WHOIS information to suggest that Respondent is known by the <homeupgradedepot.com> domain name. Indeed, given Home Depot’s long-time and extensive world-wide rights in the HOME DEPOT Marks in connection with home improvement retail stores and related goods and services, Respondent could not have rights in the HOME DEPOT Marks unless Home Depot granted them. However, that has not occurred.
[iii] Respondent has not used the domain name in good faith and in connection with a bona fide offering of goods or services.
Respondent’s use for commercial gain of a domain name that is confusingly similar to the HOME DEPOT Marks to direct Internet users interested in Complainant’s goods and services to third party websites offering similar goods and services in competition with Complainant is not a legitimate noncommercial or fair use of the domain name. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (NAF Feb. 27, 2001) (respondent's commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (NAF Sept. 27, 2000) (“[U]nauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”)
Here, the <homeupgradedepot.com> domain name directs Internet users to Respondent’s website, which Respondent uses to advertise, and redirect users to, websites that sell, products that directly compete with Home Depot. Specifically, upon reaching Respondent’s <homeupgradedepot.com> website, users are presented with a large message stating: “The products that you come across in our web site can be bought in ebay. Just click on the links supplied in this site and it will instantly direct you to that exact product on ebay,” underneath which Respondent presents numerous hyperlinked advertisements for a variety of goods, including, among others: (i) sinks, faucets, and other home improvement-related products manufactured or sold by third parties, including Home Depot’s competitors; (ii) products offered and sold by Home Depot under its house trademarks, such as GLACIER BAY; (iii) coupons for discounted purchases at Home Depot’s retail stores; and (iv) coupons for discounted purchases at retail stores operated by Home Depot’s competitors. Upon clicking the linked advertisements on Respondent’s website, moreover, the user is immediately redirected to specific product listings on eBay.com offering these goods for direct purchase.
Upon information and belief, Respondent receives compensation each time a searcher clicks on one of these links, which constitutes use of the domain for commercial gain. In fact, Respondent’s website expressly states that it is “an affiliate marketer for ebay.” Respondent’s use of the <homeupgradedepot.com> domain name is also commercial use because the various parties offering product listings on eBay.com that are linked to Respondent’s website benefit from the subsequent interest and purchases by Internet users. ICANN panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See Focus Do It All Group v. Athanasios Sermbizis, D2000-0923 (WIPO October 6, 2000)(finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial). Respondent’s use cannot be characterized as fair use. See id. (finding that Respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainants until they found that instead they were in a directory which would do the Complainants potential harm”).
Furthermore, such use is not legitimate because it diverts Complainant’s customers and potential customers to Respondent’s website and to websites selling products offered by Complainant’s competitors. See Athanasios Sermbizis, D2000-0923 (finding that Respondent’s domain name which linked visitors to a directory of regional competitors was not a legitimate use). See also Homer, TLC Inc. v. Kang, FA573872 (NAF Nov. 22, 2005) (“Respondent’s use of ‘a’ domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering . . . or a legitimate noncommercial or fair use . . . .”). Such use of Home Depot’s trademarks is clearly confusing and deceptive to consumers. As such, Respondent’s website at <homeupgradedepot.com> is not used or maintained in good faith and in connection with a bona fide offering of goods or services.
[c.] Respondent Registered and Used the Domain Name in Bad Faith.
There are at least two pieces of evidence that show Respondent had knowledge of Home Depot’s trademark rights, yet proceeded to register and use the <homeupgradedepot.com> domain name in bad faith: (1) Respondent uses Complainant’s trademarks in its domain name and on its website to sell goods and services in direct competition with Complainant; and (2) the content on Respondent’s website at the disputed domain name.
Respondent is using the <homeupgradedepot.com> domain name, which is confusingly similar to the HOME DEPOT Marks, to direct Internet users to a website with links and sponsored ads that direct visitors to third party websites selling goods and services that directly compete with Home Depot. Such use is concrete evidence of bad faith registration and use. See, e.g., Homer TLC, Inc. v. Unitedeurope Consulting, FA 1110103 (NAF Feb. 8, 2008) (“Respondent’s use of the disputed domain name to advertise links to third-party competitors is evidence of registration and use in bad faith under Policy ¶4(b)(iii)”), and S. Exposure v. S. Exposure, Inc., FA 94864 (NAF July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Furthermore, it is clear that Respondent registered the disputed domain name with the HOME DEPOT Marks in mind in light of the obvious link between Home Depot and the content advertised on the website, as well as the blatant and unauthorized use of the HOME DEPOT Marks. See MIVA, Inc. v. WhoIs Privacy Inc., citing Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (because link between complainant’s mark and content advertised on respondent’s website obvious, respondent “must have known about the complainant’s mark when it registered the subject domain name”). As described above, Respondent is using the <homeupgradedepot.com> domain name generate revenue through click-through ads that redirect to eBay listings, where users can purchase Home Depot’s products, and products offered by Home Depot’s competitors, from third parties. Such use of the subject domain name clearly demonstrates Respondent’s bad faith. See Aktiebolaget Electrolux v. DomainsByProxy.com / My Co Doan, WIPO Case No. D2010-0134 (March 17, 2010) (finding bad faith registration and use of <electroluxdishwashers.com> where respondent’s website contained links to eBay.com auctions for dishwashers, which complainant offered under its ELECTROLUX mark); Bang & Olufsen a/s v. BlueHost.com- INC, WIPO Case No. D2010-0406 (May 5, 2010) (finding bad faith where respondent generated click-through revenue by providing ads on its website which linked to products for sale on eBay, including those offered by complainant).
Any use by Respondent of the HOME DEPOT Marks, even as a domain name, is an infringement of Home Depot’s long-held rights under trademark law. As the panelist in C-Line Products, Inc. v. Ralco Consulting c/o Robert Lebeaux pointedly noted, a potential domain name registrant:
would be well-advised to heed the oft-repeated admonition, such as that of Scott W. Pink, in his treatise, The Internet & E-Commerce Legal Handbook (2001), where at page 110, he states: “Once you have decided on the TLDs and ccTLDs, you will want to select the second level of the domain, the words that signify your unique address. In doing so, you should first conduct both a domain name search to make sure the particular domain is available as well as a trademark search to make sure your choice of a domain name does not potentially infringe on another person or entity’s trademark rights.” C-Line Products, Inc. v. Ralco Consulting c/o Robert Lebeaux, Claim No. FA187608 (NAF October 20, 2003) (Emphasis supplied).
Respondent knew of Home Depot’s rights in the HOME DEPOT Marks. Its registration and infringing use of the <homeupgradedepot.com> domain name, despite having such knowledge, indicates bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 uses its THE HOME DEPOT mark in connection with its business as the world’s largest home improvement specialty retailer. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”), which adequately evidence its rights in THE HOME DEPOT mark pursuant to Policy ¶4(a)(i). (e.g. Reg. No. 1,188,191, registered January 26, 1982). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶4(a)(i).”). It is only necessary at this point Complainant evidence SOME rights to its mark, not that its rights are superior to Respondent’s rights. The fact Complainant’s mark was registered with the USPTO is still adequate under Policy ¶4(a)(i), even though Respondent is located in Hong Kong.
Complainant claims the <homeupgradedepot.com> domain name is confusingly similar to its THE HOME DEPOT mark because Respondent has simply dropped the “the” from Complainant’s mark and added the generic term “upgrade” in-between the words of the mark. The disputed domain name also differs from Complainant’s mark by the addition of the generic top-level domain (“gTLD”) “.com.” Generally speaking, deleting a minor portion of a mark and addition of a generic term are not sufficient to prevent a finding of confusing similarity. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). This Panel finds Respondent’s domain name is rather far down the spectrum of what constitutes confusing similarly, but it is still within the realm of what is confusingly similar. Adding a gTLD (or even a ccTLD) to a mark and removal of the spaces is (and must be) ignored under a Policy ¶4(a)(i) analysis because spaces are prohibited in domain names and gTLDs or ccTLDs are required in domain names. 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)). To rule otherwise would be to eviscerate the UDRP. The <homeupgradedepot.com> domain name is confusingly similar to Complainant’s THE HOME DEPOT mark per Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is not commonly known by the <homeupgradedepot.com> domain name. There is no obvious connection between the Respondent’s name (as revealed once the WHOIS protection was dropped) and the disputed domain name. Complainant never authorized Respondent to use its THE HOME DEPOT mark (and Respondent has not claimed otherwise). Respondent has failed to submit a response in this proceeding to rebut any of Complainant’s contentions. Given the lack of evidence to infer otherwise, the Panel finds Respondent is not commonly known by the <homeupgradedepot.com> domain name pursuant to Policy ¶4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant claims Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name as required by Policy ¶4(c)(i) and Policy ¶4(c)(iii). Respondent partially uses the disputed domain name to redirect Internet users to Complainant’s competitors. The services of Lowes and Glacier Bay are both advertised by Respondent’s website, both of whom are Complainant’s direct competitors. Such a use of a disputed domain name is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use according to Policy ¶¶4(c)(i) and 4(c)(iii), respectively. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did 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)).
Finally, Respondent registered the disputed domain name by using a privacy service. This means the real respondent’s name is not publicly associated with the disputed domain name, which is essentially owned by a naked trustee. This means the real respondent cannot acquire rights to the disputed domain name because the real respondent does not own it of record. The privacy service does not control the contents or use of the disputed domain, so it cannot acquire any rights because it doesn’t use the disputed domain name (and it isn’t the real party interest because it is merely a nominee).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶4(a)(iii). Respondent disrupts Complainant’s business by directing Internet users to Complainant’s competitors. This constitutes bad faith registration and use under Policy ¶4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶4(b)(iii)).
Complainant claims Respondent must have had actual knowledge of Complainant and its THE HOME DEPOT mark. There is no doubt Respondent advertises Complainant’s products, as well as Complainant’s competitors’ products. It seems inconceivable Respondent didn’t know about Complainant’s business and mark. This Panel believes Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds actual knowledge is adequate evidence of bad faith under Policy ¶4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Finally, Respondent registered the disputed domain name using a privacy service. As this Panel has previously ruled, such a registration gives rise to a rebuttable presumption of bad faith registration and use in the commercial context. Respondent has done nothing to rebut that presumption. That factor alone justifies a finding of bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <homeupgradedepot.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, May 13, 2015
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