Homer TLC, Inc. v. Kwan lee
Claim Number: FA1311001529212
Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Kwan Lee (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepoot.com>, registered with FABULOUS.COM PTY LTD.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 11, 2013; the National Arbitration Forum received payment on November 11, 2013.
On November 11, 2013, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <homedepoot.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.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 November 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 2013 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@homedepoot.com. Also on November 12, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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.
Complainant
a) Complainant is the owner of the HOME DEPOT mark, used in connection with retail home improvement supplies and building supplies. Complainant has rights in its mark by virtue of its United States Patent and Trademark Office (“USPTO”) registration for the HOME DEPOT mark (Reg. No. 2,314,081 registered Feb. 1, 2000; Reg. No. 1,188,191 registered on January 26, 1982).
b) The disputed domain name is confusingly similar to the HOME DEPOT mark. Respondent merely adds a single letter and a generic top-level domain (“gTLD”) to the mark in the domain name.
c) Respondent has no rights or legitimate interests in the disputed domain name.
a. Respondent is not commonly known by the disputed domain name. Respondent is not associated with or licensed by Complainant, and Respondent does not have intellectual property rights in the domain name.
b. The <homedepoot.com> domain name resolves to a website where Internet users are redirected to Complainant’s own website through Complainant’s affiliate program, directly in violation of the affiliate agreement of Complainant.
d) Respondent registered and is using the <homedepoot.com> domain name in bad faith.
a. Respondent is a cybersquatter. Searches through the National Arbitration Forum (“NAF”) and World Intellectual Property Organization (“WIPO”) databases reveals that Respondent has engaged in an ongoing pattern of bad faith.
b. By registering confusingly similar domain names while a member of this affiliate program, Respondent has attempted to opportunistically benefit from its registration and use of the <homedepoot.com> domain name at Complainant’s expense.
c. The <homedepoot.com> domain name is a clear example of typosquatting.
d. Respondent was aware of Complainant’s rights in the HOME DEPOT mark when registering the <homedepoot.com> domain name, as Respondent was part of Complainant’s affiliate program.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 contends that it is the owner of the HOME DEPOT mark, used in connection with retail home improvement supplies and building supplies. Complainant demonstrates that it has rights in its mark by virtue of its USPTO registration for the HOME DEPOT mark (Reg. No. 2,314,081 registered Feb. 1, 2000; Reg. No. 1,188,191 registered on January 26, 1982). Panels have found that registration of a mark, regardless of the location of the parties, is evidence of rights in the mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has rights in the HOME DEPOT mark under Policy ¶ 4(a)(i).
Complainant also argues that the disputed domain name is confusingly similar to the HOME DEPOT mark. Complainant explains that Respondent merely adds a single letter and a gTLD to the mark in the domain name. The Panel notes that Respondent also removes the spacing from Complainant’s mark. The Panel finds that each of these changes is insignificant in a determination of confusing similarity. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also 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)). Therefore, the Panel finds that Respondent’s <homedepoot.com> domain name is confusingly similar to the HOME DEPOT mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 (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 asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues that Respondent is not commonly known by the disputed domain name, and Respondent is not associated with or licensed by Complainant, and Respondent does not have intellectual property rights in the domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. The WHOIS record for the <homedepoot.com> domain name lists “Kwan lee” as the domain name registrant. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that the <homedepoot.com> domain name resolves to a website where Internet users are redirected to Complainant’s own website through Complainant’s affiliate program, directly in violation of the affiliate agreement of Complainant. The record shows that the domain name’s resolving website takes Internet users to Complainant’s own websites. The panel in Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006), found 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). Therefore, the Panel finds that Respondent is using the <homedepoot.com> domain name for neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant has proven this element.
Complainant asserts that Respondent registered and is using the <homedepoot.com> domain name in bad faith because Respondent is a cybersquatter. According to Complainant, searches through the NAF and WIPO databases reveals that Respondent has engaged in an ongoing pattern of bad faith. See Clark Equip. Co. v. kwan lee, FA 1446300 (Nat. Arb. Forum Jul. 1, 2012); Destination EL Grp., Inc. v. kwan lee, FA 1511775 (Nat. Arb. Forum Sep. 18, 2013); Ridgid, Inc. & Emerson Electric Co. v. kwan lee, FA 1429685 (Nat. Arb. Forum Mar. 29, 2012). Previous panels have held, as the panel did in Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006), that there was bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants. Therefore, the Panel finds that Respondent has demonstrated a pattern of bad faith that allows for an inference of bad faith in the present dispute under Policy ¶ 4(b)(ii).
Complainant further argues that, by registering a confusingly similar domain name while a member of Complainant’s affiliate program and having the domain name redirect to Complainant’s website, Respondent has attempted to opportunistically benefit from its registration and use of the <homedepoot.com> domain name at Complainant’s expense. In Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000), the panel found bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain. Therefore, the Panel finds that Respondent has, in bad faith under Policy ¶ 4(b)(iv), created a likelihood of confusion so as to commercially gain by exploiting an affiliate agreement.
Complainant next alleges that the <homedepoot.com> domain name is a clear example of typosquatting. Complainant notes that it differs from the HOME DEPOT mark by one single letter that is merely a repeat of the one before it being added. Therefore, the Panel finds that Respondent is attempting to capitalize off of typographical errors, and as such has typosquatted the HOME DEPOT mark in bad faith under Policy ¶ 4(a)(iii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark).
Lastly, Complainant argues that Respondent was aware of Complainant’s rights in the HOME DEPOT mark when registering the <homedepoot.com> domain name, as Respondent was part of Complainant’s affiliate program. The Panel finds that Respondent had such actual knowledge and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <homedepoot.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 11, 2013
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