HomeGoods, Inc. v. badr malyh / safeknee
Claim Number: FA2007001902813
Complainant is HomeGoods, Inc. (“Complainant”), represented by Mary Grace Gallagher of Alston & Bird, LLP, Georgia, USA. Respondent is badr malyh / safeknee (“Respondent”), Morocco.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homegoodsinc.com> (‘the Domain Name’), registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 2, 2020; the Forum received payment on July 2, 2020.
On July 3, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <homegoodsinc.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 July 7, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 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@homegoodsinc.com. Also on July 7, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 28, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
Complainant is a corporation duly organized and existing under the laws of the State of Delaware, having a principal place of business in Framingham, Massachusetts. Complainant has operated under the corporate name HomeGoods, Inc. and has offered retail store services in the United States under the HOMEGOODS mark since at least as early as 1992, and currently has over 700 retail locations throughout the United States.
The Complainant is the owner of, inter alia, the trade mark HOMEGOODS registered in the USA for retail stores for home wares with first use recorded as 1992.
Respondent registered the Domain Name on May 17, 2020. The Domain Name is confusingly similar to the Complainant’s trade mark adding only the generic designation ‘inc’ and the gTLD “.com.”
The Respondent does not have rights or legitimate interests in the Domain Name, is not commonly known by it, is not authorized by the Complainant and is it making legitimate noncommercial fair use of it. Respondent has no association or affiliation with HomeGoods of any kind, nor does it have any license or permission to use the HOMEGOODS mark in any form, including in the Domain Name.
The Respondent has used or is currently using the Domain Name for a website prominently featuring the designation HOMEGOODS throughout each page of the site and includes, or has included, a TM symbol next to its use of the HOMEGOODS mark throughout its website in a clear attempt to confuse consumers into believing this is the website associated with the Complainant. The website that is and/or has been recently accessible by the Domain Name appears to entice consumers into purchasing products on that website instead of going to the Complainant’s stores. Consumers accessing the website will believe, mistakenly, that the merchandise they purchase comes from the Complainant and that any negative experiences consumers experience at the website accessed by the Domain Name are caused by the Complainant, thereby potentially injuring the Complainant’s reputation in the marketplace. The website accessed by the Domain Name is in English and offers products with amounts in dollars clearly indicating the website is targeting customers in the United States, who would be familiar with the Complainant and its reputation.
This is not a bona fide offering of goods or services. It is registration and use in bad faith confusing Internet users and disrupting the Complainant’s business in actual knowledge of the Complainant’s rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of, inter alia, the trade mark HOMEGOODS registered in the USA for retail stores for home wares with first use recorded as 1992.
The Domain Name registered in 2020 has been used for a competing site selling home wares using the HOMEGOODS mark on every page with the designation TM.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Domain Name consists of the Complainant's HOMEGOODS mark (which is registered, inter alia in USA for retail services relating to home wares and has been used since 1992), the generic term ‘inc’ and the gTLD “.com.”
Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underling mark held by the Complainant). The Panel agrees that the addition of the generic term ‘inc’ to the Complainant's mark does not distinguish the Domain Name from the Complainant's trade mark pursuant to the Policy.
The gTLD “.com” does not serve to distinguish the Domain Name from the HOMEGOODS mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest from the WHOIS information that the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use of the Domain Name is commercial so it cannot be legitimate noncommercial fair use.
The addition of the designation ‘inc’ to exactly mirror the name of the Complainant in the Domain Name, the use of the designation TM throughout the competing site selling home wares and the fact that the site offers prices in dollars showing it is aimed at the American market makes it more likely than not that the Respondent knew of the Complainant and its business, rights, products and services and intended to confuse Internet users into thinking that its web site is associated with the Complainant in order to compete unfairly with the Complainant using the Complainant’s HOMEGOODS trade mark. The panel finds the use deceptive and confusing and so this cannot be a bona fide offering of goods or services. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] 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).”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the Panelist, the use made of the Domain Name in relation to the site attached to it is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offers home wares under a Domain Name containing the Complainant’s HOMEGOODS mark marked with a TM sign showing that the use is intended to be use as a trade mark and not use in any descriptive sense. Further the addition of ‘inc’ to the Complainant’s trade mark in the Domain Name to reflect the exact corporate name of the Complainant makes it more likely than not that the Respondent was aware of the Complainant and its rights, business, products and services at the time of registration of the Domain Name.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of that web site and products offered on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc. v. Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under ¶¶ 4(b)(iii) and 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homegoodsinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: July 28, 2020
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