Homer TLC, Inc. v. Protection Domain
Claim Number: FA1506001624199
Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Protection Domain (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <homedpeot.com>, <homeepot.com>, and <whomedepot.com>, ('the Domain Names') registered with Above.com Pty Ltd.
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 June 12, 2015; the Forum received payment on June 12, 2015.
On June 17, 2015, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <homedpeot.com>, <homeepot.com>, and <whomedepot.com> domain names are 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, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 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@homedpeot.com, postmaster@homeepot.com, postmaster@whomedepot.com. Also on June 17, 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 July 14, 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 names be transferred from Respondent to Complainant.
A. Complainant
The Complainant's submissions can be summarised as follows:
Complainant is the owner of federal trade mark registrations in the USA for THE HOMEDEPOT and HOME DEPOT with first use recorded as 1979. It was founded in 1978 as a one stop shop for DIY enthusiasts. Its website HOMEDEPOT.COM was launched in 1992. The company is the largest home improvement retailer in the US. It is well known to the public. Revenue in 2012 was $70.4 billion USD. It is also known for its high profile philanthropic endeavours.
The Domain Name is identical and confusingly similar to the Complainant's marks. The Domain Names are confusingly similar to the Complainant’s because they are classic examples of typo squatting differing by only a single character or the juxtaposition of two characters when compared with the Complainant’s mark. The relevant comparison is to be made only between the second level portion of the Domain Name and the Complainant's marks.
Respondent has no rights or legitimate interests in the Domain Names. It has not been commonly known by and has no intellectual property rights in them. The Respondent is not affiliated with the Complainant in any way. Complainant has not given Respondent permission to use the Domain Names. The Respondent did not reply to a cease and desist letter. The Domain Names are being used to direct Internet users to a web site featuring generic links to third party web sites some of which compete directly with the Complainant.
The Domain Names were registered in 2009.
Typo squatting is, in itself, bad faith. By using the Domain Names for a click through site using Complainant’s trade mark and providing links to products and services for commercial advantage to competitors is evidence of bad faith. By using it also to point to the Complainant’s marks properly spelled and to material also directly related to the Complainant's business, this shows the Respondent is aware of the Complainant.
Finally providing false or incomplete details on the Whois records for the Domain Name indicates a desire to avoid being accountable and serves as further bad faith intent.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of federal trade mark registrations in the USA for THE HOMEDEPOT and HOME DEPOT with first use recorded as 1979.
The Domain Names were registered in 2009 and have been pointed to links to third party products competing with the Complainant as well as web sites actually relating to the Complainant’s business and its products.
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. web net-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 Names consists of misspellings of the Complainant’s mark and the addition of the gTLD .com.
Noting Diners Club International Ltd. v my first car ltd FA 070500 (Nat. Arb. Forum June 11, 2007)(finding that the domain name dinnerclubinternational.com was confusingly similar to the DINERS CLUB INTERNATIONAL mark owner by the Complainant because the name merely alters DINERS to dinner by the addition of one letter and Complainant’s mark remains the dominant portion of the Disputed Domain name and See Reuters Ltd. v Global Net 2000 Inc. D2000-04441 (WIPO July 13, 2000)(finding that a domain name which differs by only one letter from the trade mark has a greater tendency to be confusingly similar to a trade mark where it is highly distinctive) and see Victoria's Secret v Zuccarini, FA 95762 (Nat. Arb. Forum Nov 18, 2000)(finding that by misspelled words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant's marks)
The Panel agrees that the misspelling alterations to the Complainant's mark used in the Domain Names including in one case an additional letter 'w' do not negate the confusingly similar nature of the Domain Names to the Complainant’s marks pursuant to the Policy.
The addition of the gTLD .com does not serve to distinguish the Domain Names from the Complainant’s mark 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).)
Accordingly, the Panel holds that the Domain Names are 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.
Respondent has not responded and given any reasons for its registration and use of the Domain Names. Respondent does not appear to be commonly known by the Domain Names. Complainant has not authorised the use of its mark and the Respondent does not appear to be connected with the Complainant in any way.
The Domain Names have been used to link to pay-per-click advertising for third party commercial web sites including competitors of the Complainant. The Panel notes Disney Enters. Inc. v Kamble FA 918556 (Nat Arb. Forum Mar 27 2007) (holding that the operation of a pay per click website at a confusingly similar domain name was neither a bona fide offering of goods and services nor a legitimate non-commercial or fair use of the disputed domain names.)
The Panel thus concludes that there is no rights or legitimate interests in the Domain Names under para 4 (c) (i) or (iii) of the Policy.
The Domain Names have been used as link farms to point to third party commercial including sites involved with home improvement services not connected with the Complainant. The available evidence suggests that the Respondent is using this domain name in an attempt to purposely attract Internet users seeking Complainant's goods to a web site used for commercial purposes unconnected to the Complainants. The Panel notes Univ of Houston Sys. v Salvia Corp FA 637920 (Nat. Arb. Forum Mar. 21, 2006) ("Respondent is using the disputed domain name to operate a web site which features links to competing and non-competing commercial web sites from which the Respondent presumably received referral fees. Such use of misspellings of a well-established and recognised mark for the Respondent's own commercial gain is evidence of bad faith registration and use pursuant to para 4(b) (iv) of the Policy.")
The fact that the pay per click links on the web site attached to the Domain Names also point to some sites relating to the business of the Complainant itself shows the Respondent’s awareness of the Complainant and the Complainant’s business and a willingness to cause confusion on the Internet by use of the Domain Names.
Accordingly, the Panellist holds that there is in this case evidence of bad faith registration and use pursuant to para 4 (b) (iv) 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 <homedpeot.com>, <homeepot.com>, and <whomedepot.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: <<July 21, 2015>>
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