Homer TLC, Inc. v. Domain Admin / Whois Foundation
Claim Number: FA1503001612147
Complainant is Homer TLC, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Domain Admin / Whois Foundation (“Respondent”), represented by William A. Delgado of WILLENKEN WILSON LOH & DELGADO LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hthehomedepot.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 30, 2015; the Forum received payment on March 30, 2015.
On April 2, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <hthehomedepot.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 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@hthehomedepot.com. Also on April 2, 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.
A timely Response was received and determined to be complete on April 20, 2015.
On April 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Reinhard Schanda 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it the THE HOME DEPOT mark in connection with its business as a home improvement specialty retailer. Complainant has registered the THE HOME DEPOT mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,188,191, registered January 26, 1982), establishing its rights in the mark. Respondent’s <hthehomedepot.com> domain name is confusingly similar to the THE HOME DEPOT mark because it incorporates the mark in its entirety and merely adds the letter “h” and a “.com” generic top-level domain (“gTLD”).
Complainant further contends that respondent has no rights or legitimate interests in the <hthehomedepot.com> domain name. Respondent is not commonly known by the disputed domain name and has no endorsement to use the THE HOME DEPOT mark in any variation in the registering of domain names by Complainant. Further, Respondent is not using the <hthehomedepot.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s domain name directs to a site which contains sponsored advertisements presumably netting Respondent click-through commercial gains, as well as a search engine. Such use is intended to divert Internet users to competitors of Complainant.
Complainant finally contends that respondent is using the <hthehomedepot.com> domain name in bad faith. First, Respondent is soliciting the sale of the domain name. Second, Respondent intends to disrupt the legitimate business purposes of Complainant via the use of the disputed domain name. Third, the <hthehomedepot.com> domain name evinces typosquatting behavior. And fourth, Respondent registered the <hthehomedepot.com> domain name with actual or constructive knowledge of the THE HOME DEPOT mark and Complainant’s rights in the mark.
B. Respondent
Respondent indicates that it is willing to voluntarily transfer the disputed domain name to Complainant. Respondent “respectfully requests that the transfer be ordered without findings of fact or conclusions as to Policy 4(a) other than the Domain Name be transferred.”
The Panel notes that the <hthehomedepot.com> domain name was registered on March 27, 2015.
Preliminary issue – Consent to transfer
Respondent consents to transfer the <hthehomedepot.com> domain name to Complainant. However, the Panel decides that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. The Panel finds that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated that:
Respondent has admitted in his Response to the Complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, the Panel decides that it would like to analyze the case under the elements of the UDRP.
The Panel finds that:
1. The domain name <hthehomedepot.com> is confusingly similar to Complainant’s registered trademark.
2. The Respondent has not established rights or legitimate interests in the domain name <hthehomedepot.com>.
3. The Respondent has registered and is using the domain name <hthehomedepot.com> 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.
Complainant uses the THE HOME DEPOT mark in connection with its business as a home improvement specialty retailer. Complainant purports to have registered the THE HOME DEPOT mark with the USPTO (e.g., Reg. No. 1,188,191, registered January 26, 1982), arguing that such registrations evince rights in the mark under Policy ¶ 4(a)(i). Past panels have agreed that trademark registrations with the USPTO are sufficient in the establishment of rights pursuant to Policy ¶ 4(a)(i). See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks”).
Next, Complainant contends that Respondent’s <hthehomedepot.com> domain name is confusingly similar to the THE HOME DEPOT mark because it incorporates the mark in its entirety and merely adds an “h” and a “.com” gTLD. Panels have seen such alterations as insufficient in overcoming a finding of confusing similarity per Policy ¶ 4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Thus, this Panel declares that Respondent’s <hthehomedepot.com> domain name is confusingly similar to the THE HOME DEPOT mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The complainant must show that the respondent has no rights or legitimate interests in respect of the disputed domain name. The respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that Complainant has discharged the onus of proof for the second criterion: Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once Complainant has made a prima facie showing, the burden of production shifts to Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant argues that Respondent has no rights or legitimate interests in the <hthehomedepot.com> domain name. In arguing this, Complainant contends that Respondent is not commonly known by the disputed domain name and has no endorsement to use the THE HOME DEPOT mark in any variation in the registering of domain names by Complainant. The Panel notes the relevant WHOIS information which states “Domain Admin / Whois Foundation” as registrant of record. The Panel further notes that Respondent makes no contentions about whether it is commonly known by the disputed domain name, nor does Respondent add any additional evidence to the record for the Panel’s consideration. In light of Respondent’s deficiency, the Panel finds no basis in declaring Respondent as commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Complainant asserts that Respondent is not using the <hthehomedepot.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant argues that Respondent’s domain name directs to a site which contains sponsored advertisements presumably netting Respondent click-through commercial gains, as well as a search engine. Such use is seen by this Panel as intent to divert Internet users to competitors of Complainant. Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user).
Therefore, this Panel agrees that Respondent’s <hthehomedepot.com> domain name has not been used in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) & (iii), respectively.
Complainant argues that Respondent is using the <hthehomedepot.com> domain name in bad faith to solicit the sale of the domain name. On the basis of Complainant’s attached Exhibit F, which purports to display the page which resolves from clicking the “Inquire about this domain name” link included on the <hthehomedepot.com> site, the Panel determines that such an offer for sale would parallel the decision in Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), in which the panel found “Respondent’s general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).” Therefore, the Panel concludes that Respondent has acted in bad faith per Policy ¶ 4(b)(i).
Next, Complainant contends that Respondent intends to disrupt the legitimate business purposes of Complainant via the use of the disputed domain name, indicating bad faith under Policy ¶ 4(b)(iii). The Panel takes Complainant’s attached Exhibits D and E into consideration when determining whether Respondent’s disputed domain name directs Internet users to third-party competitors of Complainant. The panel in Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) found “that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names.” The Panel finds a similarity to the finding in Red Hat, Inc. and concludes that Respondent has acted in bad faith disruption per Policy ¶ 4(b)(iii) by diverting Internet users to third-party competitors of Complainant.
Additionally, Complainant argues that the <hthehomedepot.com> domain name resembles typosquatting behavior. The Panel agrees with Complainant that the disputed domain name is a simple misspelling of the THE HOME DEPOT mark, and hold that Respondent’s registration of <hthehomedepot.com> exemplifies typosquatting behavior under Policy ¶ 4(a)(iii). See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
Finally, Complainant also contends that in light of the fame and notoriety of Complainant's THE HOME DEPOT mark, it is inconceivable that Respondent could have registered the <hthehomedepot.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hthehomedepot.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: May 6, 2015
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