Homer TLC, Inc. v. Protection Domain / ITWEB Domain Protection
Claim Number: FA1511001647886
Complainant is Homer TLC, Inc. (“Complainant”), represented by Sheri M. Hunter of King & Spalding LLP, Texas, USA. Respondent is Protection Domain / ITWEB Domain Protection (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotjobs.com>, registered with Unified Servers, Inc.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 19, 2015; the Forum received payment on November 19, 2015.
On November 24, 2015, Unified Servers, Inc. confirmed by e-mail to the Forum that the <homedepotjobs.com> domain name is registered with Unified Servers, Inc. and that Respondent is the current registrant of the name. Unified Servers, Inc. has verified that Respondent is bound by the Unified Servers, 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 November 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 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@homedepotjobs.com. Also on November 24, 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 December 22, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is the owner of a trademark registration for THE HOME DEPOT registered in 1982. The mark is used in connection with home improvement retail store services since as early as 1979. The mark and Complainant’s products are famous. Complainant 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 $83 billion. It has more than 2,200 retail stores, including stores in all 50 states, the District of Columbia, Puerto Rico, the U.S. Virgin Islands, ten Canadian provinces, and Mexico.
According to Complainant, the disputed domain name is confusingly similar to its mark because the domain name contains the dominant portion of the mark, merely removing “the” and adding the generic term “jobs” in addition to the generic top-level domain *(“gTLD”) “.com.” Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has no rights or legitimate interests. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. In addition, Respondent is not making a bona fide offering or a legitimate noncommercial or fair use because the domain name is being used to run a phishing scheme. The web site at the disputed domain name contains a Home Depot Visitors survey purporting to offer rewards to customers of Complainant. If viewers respond to the survey, they are asked for personally identifiable information and must in fact pay some amount to receive the reward they select. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent has engaged in bad faith registration and use. Respondent is attempting to run a phishing scheme, which amounts to bad faith under Policy ¶ 4(a)(iii), see above. Also, Respondent registered the disputed domain name with actual knowledge of Complainants trademark rights. Respondent’s website features Complainant’s famous trademark in a clear attempt by Respondent to create the false impression that Respondent is somehow related to or authorized by Complainant. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark THE HOME DEPOT and uses them to market a range of home improvement products. The marks and the products are famous.
Complainant’s registration of its mark dates back to 1982.
The disputed domain name was registered in 2015.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name points to a web site that is being used for phishing. That web site displays Complainant’s mark and contains a Home Depot Visitors survey purporting to offer rewards to customers of Complainant. If viewers respond to the survey, they are asked for personally identifiable information and must in fact pay some amount to receive the reward they select.
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.”).
Complainant is the owner of a trademark for THE HOME DEPOT, registered in 1982. The mark is used in connection with home improvement retail store services since as early as 1979. The disputed domain name contains the dominant portion of the mark, merely removing “the” and adding the generic term “jobs” in addition to the gTLD “.com.” Previous panels have established a confusing similarity where the respondent has created a domain name that either removes a term from the relevant trademark or adds a generic term that is non-existent in said trademark. 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). Additionally, prior panels have held that the addition of “.com” to the domain name is insufficient to provide distinguishing relief for the respondent. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent is not commonly known as the disputed domain name, nor is Respondent in possession of licensing rights that would allow him to use Complainant’s mark in domain names. The Panel notes that “Protection Domain” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Prior panels have held that, where such a void exists, Respondent does not have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
The web site at the disputed domain name contains a Home Depot Visitors survey purporting to offer rewards to customers of Complainant. If viewers respond to the survey, they are asked for personally identifiable information and must in fact pay some amount to receive the reward they select. Thus the disputed domain name is used in connection with a phishing scheme. Past panels have found that use of a domain name to run a phishing scheme fails to amount to a bona fide offering or a legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Thus the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Furthermore, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods and services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, D2002-0701 (WIPO Sept. 6, 2002); see also AltaVista Company v. Saeid Yomtobian, D2000 0937 (WIPO Oct. 13, 2000).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s famous mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Respondent’s website features Complainant’s famous trademark in a clear attempt by Respondent to create the false impression that Respondent is somehow related to or authorized by Complainant. This constitutes bad faith use under the Policy. See Frey Wille GmbH & Co KG v. Lining, D2013-2178 (WIPO Jan. 28, 2014) (finding bad faith registration based on Respondent’s “intention by Respondent to create consumer confusion” by “copying of Complainant’s trademarks, how Respondent’s website is presented, and the offer for sale of goods that Complainant deals in”).
As stated above, the disputed domain name resolves to a webpage that prompts Internet users to take a survey, after which said Internet users are asked to provide personal information and to pay money to Respondent. This constitutes phishing. Prior panels have found bad faith where the domain name was used to run a phishing scheme. See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). Indeed Respondent’s bad faith has been demonstrated under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Further, Respondent intentionally attracts, for commercial gain, users who mistakenly believe that Respondent’s domain is affiliated with or owned by Complainant. Panels have found bad faith under Policy ¶ 4(b)(iv) where a respondent phishes for user information or passes off as a complainant. See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at registration, and a copy of the complainant’s website was used at the domain name in order to facilitate the interception of the complainant’s customer’s account information, the respondent’s behavior evidenced bad faith use and registration of the domain name). See also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Since Respondent is running a phishing scheme, the Panel finds that the disputed domain name was registered and is being used in faith under Policy ¶ 4(a)(iii) and 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homedepotjobs.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: December 23, 2015
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