HomeGoods, Inc. v. Edwin Cornejo
Claim Number: FA2007001902728
Complainant is HomeGoods, Inc. (“Complainant”), represented by Mary Grace Gallagher of Alston & Bird, LLP, Massachusetts, USA. Respondent is Edwin Cornejo (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homegoodsforme.com>, registered with Tucows Domains Inc..
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.
Aaron B. Newell was appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 2, 2020; the Forum received payment on July 2, 2020.
On July 2, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <homegoodsforme.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 July 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 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@homegoodsforme.com. Also on July 2, 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 July 3, 2020.
On July 8 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Aaron B. Newell 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 alleges:
i) that it has used the HOMEGOODS name since at least 1992 in respect of retail of household products, owns a number of valid United States trademark registrations for or containing the HOMEGOODS name with some dating back to 1992, and now operates over 700 retail outlets in the United States by reference to the HOMEGOODS name;
ii) that the domain name is confusingly similar to its HOMEGOODS name and trademark registrations;
iii) that the Respondent is not authorized to use the HOMEGOODS name and registered the domain name without Complainant’s consent;
iv) that the domain name loads what appears to be an online shop operating by reference to the name “HOMEGOODS” and retailing household products;
v) that the Respondent registered the domain name in full knowledge of the fame and notoriety of the Complainant’s HOMEGOODS name and is trying to take advantage of the HOMEGOODS name and trade on Complainant’s goodwill;
vi) that the Respondent is disrupting Complainant’s business and competing with Complainant using Complainant’s own trademark.
B. Respondent
Respondent filed a short submission denying that it intended to trade off Complainant’s goodwill, advising that it had removed the website complained of and consenting to the transfer of the domain name to the Complainant.
For the reasons set out below, the Panel does not assess the Complainant’s assertions under Paragraph 4(a) of the Policy.
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 the present case, the Respondent has unequivocally communicated to the Complainant and the Forum that it consents to the transfer of the domain name to the Complainant. This of course is the remedy requested by the Complainant, and the Panel is aware of no indications from the Complainant that it does or would decline Respondent’s consent in favor of a recorded decision on the merits.
While the Panel acknowledges that certain circumstances may warrant a substantive decision on the record despite both parties agreeing as to how the proceeding should be resolved, in this case the Panel sees no reason not to give both parties what they want and simply to order that the domain name be transferred. Here the Panel notes that “[A] genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements” (see The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132).
No assessment necessary given the parties’ agreement that the domain name should be transferred.
No assessment necessary given the parties’ agreement that the domain name should be transferred.
No assessment necessary given the parties’ agreement that the domain name should be transferred.
The Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homegoodsforme.com> domain name be TRANSFERRED from Respondent to Complainant.
Aaron B. Newell, Panelist
Dated: 21 July 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page