HomeGoods, Inc. v. Trong Thai
Claim Number: FA2005001896166
Complainant is HomeGoods, Inc. (“Complainant”), represented by Mary Grace Gallagher of Alston & Bird, LLP, Georgia, USA. Respondent is Trong Thai (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homegoodsfinds.com>, registered with GoDaddy.com, LLC.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 13, 2020; the Forum received payment on May 13, 2020.
On May 14, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <homegoodsfinds.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 14, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 2020 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@homegoodsfinds.com. Also on May 14, 2020, 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 May 19, 2020.
On May 24, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 claims that it has rights in the HOMEGOODS service mark acquired through its ownership of the service mark registrations listed below and its use of the HOME GOODS service mark in the provision of its retail services
Complainant submits that the disputed domain name is confusingly similar to its HOMEGOODS service mark as it consists of Complainant’s mark with the addition of the word ‘finds’ and the gTLD <.com> extension. Complainant submits that the addition of the generic word “finds” is used commonly in the context of retail shopping to refer to merchandise which has been discovered and favored by the consumers.
Complainant adds that the <.com> top-level domain extension is irrelevant when establishing whether or not a mark is identical or confusingly similar. See, e.g., Trip Network Inc. v. Alviera, FA914943 (Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name, alleging that Respondent does not refer to himself as HomeGoods in the WHOIS record for the disputed domain name. See Coppertown DriveThru Sys., LLC v. Snowden, FA715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant adds that Respondent does not appear to have any trademark, service mark or trade name rights in HOMEGOODSFINDS.
Complainant asserts that Respondent has no connection or affiliation of any kind with Complainant or its HOMEGOODS-branded services, and Complainant has never granted Respondent a license or consent, express or implied, to use the HOMEGOODS mark in any manner or to register the disputed domain name. See The Caravan Club v. Mrgsale, FA095314 (Forum Aug. 30, 2000) (finding that no rights or legitimate interest existed where Respondent had no connection with the Complainant and had no authorization to use the Complainant’s registered mark).
Complainant submits that the disputed domain name was registered and is being used in bad faith, arguing that the registration and use of the disputed domain name appears to be an attempt to trade on the goodwill of the HOMEGOODS mark by misleading Internet users into believing that Respondent’s website is associated or affiliated with Complainant, and then upon information and belief, getting those users to purchase merchandise from Respondent.
Complainant submits that even if Respondent’s webpage is a legitimate site, it appears to promote a competing company in an attempt to trade on HomeGoods’ goodwill in its HOMEGOODS Marks and profit from consumer confusion. Such use is not a bona fide offering of goods or services. QNX Software Sys. Ltd. v. Future Media Architects, Inc., D2003-0921 (WIPO Feb. 26, 2004) (“It has been held that use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods and services.”).
Complainant submits that the disputed domain name was registered in bad faith thirty years after Complainant’s first use of the HOMEGOODS mark and in light of the substantial fame and notoriety of the HOMEGOODS mark, as well as the related nature of Respondent’s website, it is inconceivable that Respondent could have registered the disputed domain name without knowledge of Complainant’s rights in its mark and an intent to trade on those rights. See Synovus Financial Corp. v. SUE FAMER, FA 1509001638660 (Forum Oct. 21, 2015) (finding bad faith in the registration of the domain name <synovusonlinebank.com> and noting that “a domain name may be so closely connected with a well-known trademark that its very use suggests opportunistic bad faith.”).
Complainant adds that the website to which the disputed domain name resolves, prominently features the designation “Home Goods”, the design of a roof and a red and white color scheme, very similar to HomeGoods’ website.
Complainant further alleges that Respondent is using the disputed domain name to disrupt Complainant’s business and divert users to Respondent’s website which sells competing goods. Complainant argues that such use evidences bad faith per Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (finding bad faith where the respondent used the infringing domain name to disrupt the complainant’s business by diverting Internet users from the complainant’s website to the respondent’s website where it offered competing printer products).
B. Respondent
Respondent submitted the following Response to the Complaint: “To whom it may concern, This is Trong Thai and I am writing this letter to let you know that I have stop (sic) using the domain name: www.homegoodsfinds.com and also deactivated it. I did not know this domain name will violate the ICANN policy and I’d like to be in compliance. I will not use this domain name going forward.
I hope this resolve all the issues occurred. Please let me know if I need to do anything further. Regards, Trong Thai”
Complainant offers retail services under the HOMEGOODS mark at over 700 retail locations throughout the United States and is the owner of a portfolio of registered service marks including the following United States registrations:
· HOMEGOODS & DESIGN registration number 1,955,706 registered on February 13, 1996 on the Principal Register for services in international Class 42;
· HOMEGOODS registration number 2,692,830 registered on March 4, 2003 on the Principal Register for services in international Class 35.
The disputed domain name was registered on April 2, 2020 and resolves to a website offering home ware.
Respondent has filed a brief Response which gives no details of himself or his business activities. The information available about Respondent is therefore what has been provided in the Complaint, the Registrar’s WHOIS.
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 has adduced uncontested, clear and convincing evidence of its rights in the HOMEGOODS service mark acquired through its ownership of the trademark registrations set out above and its use of the HOME GOODS service mark in its retail services
The disputed domain name consists of Complainant’s HOMEGOODS mark in its entirety in combination with the word ‘finds’ and the gTLD <.com> extension. As Complainant submits, the word “finds” is commonly used in the context of retail shopping to refer to merchandise which has been discovered and favored by the consumers and adds no distinctive character to the disputed domain name.
For the purposes of comparison the gTLD <.com> extension may be ignored in the circumstances of this Complaint because, as a domain extension, it would be recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out an prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, alleging that Respondent does not refer to himself as HomeGoods in the WHOIS record for the disputed domain name; that Respondent does not appear to have any trademark, service mark or trade name rights in HOMEGOODSFINDS as a trademark, service mark, or trade name; that Respondent has no connection or affiliation of any kind with Complainant or its HOMEGOODS-branded services; that Complainant has never granted Respondent a license or consent, express or implied, to use the HOMEGOODS mark in any manner or to register the disputed domain name.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name.
Respondent does not address these allegations in his Response and it may be inferred that he either accepts or at least does not contest them. In either case Respondent has not discharged the burden of production.
In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
This third element of the test in Policy ¶ 4(a)(iii) is more finely balanced and further investigation of Respondent and his website by Complainant would have been of assistance.
It may be inferred from his Response that Respondent denies that the disputed domain name was registered and is being used in bad faith as he submits that he was unaware that the disputed was not in compliance with the Policy; that he wishes to comply with the Policy; that he has deactivated the disputed domain name and has undertaken not to use the disputed domain name in the future.
Factors in favor of finding for Respondent would include:
· that Complainant bears the burden of persuasion;
· the strength and nature of Complainant’s trademark;
· the descriptive character of the mark in the context of the content of the website to which the disputed domain name resolves;
· that the record does not show that Complainant sent any cease or desist letter or endeavoured to communicate with Respondent prior to the initiation of this Complaint proceedings and it seems that Respondent’s immediate response was to cease using the disputed domain name;
· that there is nothing on the record to indicate that Respondent has given false contact details or used a privacy service to conceal his identity.
However Respondent does not deny that he was aware of Complainant when he registered the disputed domain name. It is unlikely that Respondent was unaware of Complainant and its HOME STORE chain of retail outlets. Also there is almost no information about Respondent or his activities. There is nothing in Respondent’s Response, or on Respondent’s website to indicate that he is carrying on any bona fide business.
The single factor that tips the balance in favor of Complainant is that the top banner on Respondent’s website has a logo device above the words “Home Goods Finds” [IMAGE OMITTED]
that is very similar to Complainant’s abovementioned registered service mark HOMEGOODS and Design, registration number 1,955,796 and appears on Complainant’s website as [IMAGE OMITTED]
The similarity of the device chosen and used by Respondent and Complainant’s logo is beyond coincidence. On the balance of probabilities, it was devised, and used by Respondent to create an association with Complainant’s trademark.
This Panel finds therefore that the preponderance of evidence shows that, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of his web site and is therefore using the disputed domain name in bad faith.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. Complainant has therefore satisfied the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in its application.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homegoodsfinds.com> domain name be TRANSFERRED from Respondent to Complainant.
_________________________
James Bridgeman SC
Panelist
Dated: May 25, 2020
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