Homer TLC, Inc. v. Domain Enforcement / Alias Encore, Inc.
Claim Number: FA1606001677977
Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Enforcement / Alias Encore, Inc. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedrepot.com>, registered with Dynadot, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 3, 2016; the Forum received payment on June 3, 2016.
On June 6, 2016, Dynadot, LLC confirmed by e-mail to the Forum that the <homedrepot.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 June 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2016 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@homedrepot.com. Also on June 7, 2016, 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 June 30, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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:
1. Complainant uses its THE HOME DEPOT mark in connection with its business as a leading provider of consumer home improvement products. Complainant has established rights in its THE HOME DEPOT mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,188,191, registered Jan. 26, 1982). Respondent’s disputed <homedrepot.com> is confusingly similar to Complainant’s THE HOME DEPOT mark. Respondent’s domain differs from Complainant’s mark through removal of the word “the,” the removal of spaces between the mark, and adding the letter “r” and the generic top-level domain “.com”. These differences do not distinguish the disputed domain name from Complainant’s THE HOME DEPOT mark.
2. Respondent is not and has not been commonly known by the disputed domain name based on WHOIS information, is not affiliated with Complainant, nor has Complainant authorized Respondent to use the HOME DEPOT mark in any manner. Respondent’s use of a confusingly similar disputed domain name to redirect internet users to Complainant’s legitimate website is in violation of the affiliate agreement between Respondent and Complainant and is therefore not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
3. Respondent registered and is using the <homedrepot.com> domain name in bad faith. Respondent’s use of the confusingly similar domain name to redirect Internauts to Complainant’s website in violation of the affiliate agreement demonstrates bad faith. Respondent’s typosquatting behavior, through the addition of an “r” to complainant’s legitimate domain name, is evidence of bad faith. Respondent had actual knowledge of Complainant’s rights in the HOME DEPOT mark at the time of registration.
B. Respondent:
1. The Respondent has failed to submit a Response in this proceeding.
1. Respondent’s <homedrepot.com> domain name is confusingly similar to Complainant’s THE HOME DEPOT mark.
2. Respondent does not have any rights or legitimate interests in the <homedrepot.com> domain name.
3. Respondent registered or used the <homedrepot.com> domain name 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 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(f), 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 (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 claims to use the THE HOME DEPOT mark in connection with its business as a leading retailer of consumer home improvement products. Complainant argues that it has firmly established rights in the THE HOME DEPOT mark through registration of the mark with the USPTO (Reg. No. 1,188,191, registered Jan. 26, 1982). Panels have consistently held that registration of a mark with the USPTO is sufficient evidence of a complainant’s rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).). Given the provided evidence supporting Complainant’s registration of its THE HOME DEPOT mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s disputed <homedrepot.com> domain name is confusingly similar to Complainant’s THE HOME DEPOT mark. The disputed domain name differs from Complainant’s mark through removal of the word “the”, removal of spaces between the words of the mark, and adding the letter “r” along with the gTLD “.com”. The Panel further notes that Complainant’s primary domain <homedepot.com> does not use the “the” from its THE HOME DEPOT mark. Panels have found that the deletion of spaces between the mark, the deletion of the word “the” in a mark, and the addition of the gTLD “.com” does not affect an analysis of confusing similarity. See The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.). Panels have also found that adding or deleting one letter from a mark does not diminish confusing similarity. See Marriott Int'l, Inc. v. Seocho, FA 149187 (Forum Apr. 28, 2003) (finding that the respondent's <marrriott.com> domain name was confusingly similar to the complainant's MARRIOTT mark). The Panel therefore finds that under Policy ¶ 4(a)(i) the differences between Complainant’s mark and Respondent’s <homedrepot.com> mark do not distinguish the disputed domain name from Complainant’s THE HOME DEPOT mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 argues that Respondent is not and has not been commonly known by the disputed domain name. The publically available WHOIS information lists Respondent as “Domain Enforcement” of the organization “Alias Encore, Inc.” Neither of these names appear to resemble the disputed domain name. Complainant also claims that Respondent is not affiliated with Complainant, nor has Complainant authorized Respondent to use the THE HOME DEPOT mark when registering domain names. Panels have regularly held that a respondent is not commonly known by a disputed domain name based on WHOIS and other information. See Instron Corp. v. Kaner, FA 768859 (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). The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant finally contends that Respondent uses the disputed domain name to redirect internet users to Complainant’s legitimate website in violation of Complainant’s affiliate program. The Panel notes Complainant’s Attached Ex. H to see Complainant’s <homedepot.com> website being resolved from Respondent’s disputed domain name and Complainant’s Attached Exhibit M for the Affiliate Agreement between Complainant and Respondent. In analogous cases, panels have found a respondent to not be making a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel accordingly finds that Respondent’s use of the disputed domain name to gain referral fees from an affiliate program is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
While Complainant has not made arguments under Policy ¶ 4(b), such arguments are not mandatory under the Policy—so long as Complainant shows bad faith use and registration in some manner. 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).
Complainant claims that Respondent’s registration of a confusingly similar domain name to receive affiliate fees while part of an affiliate program with Complainant is evidence of Respondent’s bad faith under Policy ¶ 4(a)(iii). See Compl., at Attached Exs. H, M. Panels have held that registering a domain name that is confusingly similar to a complainant’s mark, while in an affiliate agreement with a complainant, is evidence of bad faith. See LifeLock v. Sparta Trading S.A., FA1408001577367 (Forum October 14, 2014) (“Respondent is using the disputed domain name to redirect Internet users to Complainant’s website, which is a violation of its affiliate agreement with Complainant. Therefore, Respondent is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).”). The Panel finds that Respondent’s registration of the <homedrepot.com> domain name while party to an affiliate agreement with Complainant demonstrates bad faith under Policy ¶ 4(a)(iii).
Complainant claims that Respondent registration of the <homedrepot.com> domain constitutes typosquatting behavior, through the addition of an “r” to complainant’s legitimate domain name, and therefore shows Respondent’s bad faith. Panels have held that typosquatting behavior supports a finding of bad faith under Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’ . . . through Respondent’s persistent practice of ‘typosquatting’”). The Panel holds that Respondent’s apparent typosquatting behavior shows bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in its THE HOME DEPOT mark. Complainant argues that Respondent's participation in Complainant's affiliate program at the time of registration indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homedrepot.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 13, 2016
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