Homer TLC, Inc. v. ELIZA ALVEYRA
Claim Number: FA1504001616252
Complainant is Homer TLC, Inc. (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA. Respondent is ELIZA ALVEYRA (“Respondent”), Phillipines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homeappliancedepot.com>('the Domain Name'), registered with Enom.
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.
<<Dawn Osborne of Palmer Biggs Legal >> as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 24, 2015; the Forum received payment on April 24, 2015.
On April 27, 2015, Enom confirmed by e-mail to the Forum that the <homeappliancedepot.com> domain name is registered with Enom and that Respondent is the current registrant of the name. Enom has verified that Respondent is bound by the Enom 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 28, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 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@homeappliancedepot.com. Also on April 28, 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 27 May 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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
The Complainant is the owner of the famous HOME DEPOT and THE HOME DEPOT marks, used since 1979 in relation to home improvement retail store goods and services. It owns numerous US trade mark registrations for marks comprising of or including its marks. It registered homedepot.com in 1992 and has maintained it since that time. The Complainant has considerable goodwill in the HOME DEPOT mark.
The Domain Name is confusingly similar to the Complainant’s HOME DEPOT mark. The addition of the generic term 'appliance' to the HOME DEPOT mark does not negate the confusing similarity between the Domain Name and the Complainant’s trade mark. The addition of a generic top level domain such as .com is irrelevant in determining similarity of the Domain Name to the Complainant's HOME DEPOT mark.
The Respondent has no relationship with the Complainant and has not received permission to use the HOME DEPOT mark in any way. The Respondent is not known by the Doman Name. It is not making legitimate non-commercial or fair use of the Domain Name. The website which resolves from the Domain Name features product listings and images for home appliances and has the appearance of an on line store, however no goods are, in fact, sold from the web site and each product image links to a corresponding product listing by third parties on ebay.com which are directly competitive with the Complainant. Respondent will receive compensation each time a product is purchased through one of these links and the third parties benefit through sales, both of which constitute use of the Domain Name for commercial gain. Respondent’s use of the Domain Name is not legitimate as it diverts the Complainant's customers to the Respondent's web site and then to the web sites of the Complainant's competitors. This is not use in good faith in connection with a bona fide offering of goods and services.
Respondent has no rights or legitimate interests in the Domain Name
The fact that the Respondent is directing Internet users to third party sites and to its own web site, both which directly compete with the Complainant shows knowledge of the Complainant’s rights. The Complainant’s trade mark registrations also act as constructive notice to the Respondent.
B. Respondent
Respondent failed to submit a Response in this proceeding but has indicated that she does not contest the transfer to the Complainant.
The Complainant is the owner of the famous HOME DEPOT and THE HOME DEPOT marks, first use recorded as 1979 in relation to home improvement retail store goods and services. It owns numerous US trade mark registrations for marks comprising of or including its HOME DEPOT mark. It registered homedepot.com in 1992 and has maintained it since that time. The Complainant has considerable goodwill in the HOME DEPOT mark.
The Domain Name was registered in October 2014 and has been used for a web site purporting to offer home appliances for sale which links to appliances for sale on eBay in competition with the Complainant. The Respondent has indicated it will not contest transfer of the Domain Name to the Complainant.
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.”).
Identical or Confusingly Similar
The Domain Name consists of the Complainant's HOME DEPOT mark, the generic term 'appliance', a generic term commonly used in relation to electrical equipment for the home, and the gTLD .com.
Prior panels have held that adding a descriptive term to a domain name that is otherwise identical to the mark at issue creates a confusing similarity. See AOL LLC v AIM Profiles FA 964479 (Nat Arb Forum May 20, 2007) (finding that the respondent failed to differentiate the aimprofiles.com domain name from the Complainant’s AIM mark by merely adding the term 'profiles'.)
The gTLD .com does not serve to distinguish the Domain Name from the HOME DEPOT mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Complainant maintains that the Respondent is not commonly known by the Domain Name, is not using it to offer bona fide goods and services and is not making a legitimate non-commercial or fair use of the name. The Complainant contends that the site is set up for commercial benefit to compete with the Complainant using the latter's mark to make a profit.
The Respondent has used the site attached to the Domain Name to promote goods and services in competition with those of the Complainant. It uses the Complainant's trade mark and does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. (See Am. Intl Group Inc v Benjamin FA 944242 (Nat. Arb. Forum May 11, 2007) 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 use of goods and services.)
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Complainant also alleges that the Respondent's use of the site is commercial and she is using it to make profit from using a web site which competes with the Complainant in a confusing manner by purporting to offer, and linking to third party web sites which offer, products in competition with the Complainant. The Respondent does not contest the transfer of the Domain Name to the Respondent or seek to answer these allegations. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site. (See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Nat. Arb Forum May 29, 2007) finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use).
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of 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 <homeappliancedepot.com> domain name be TRANSFERRED from Respondent to Complainant
<<Dawn Osborne>>, Panelist
Dated: June 3, 2015
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