Homer TLC, Inc. v. David Gabunia
Claim Number: FA1103001375357
Complainant is Homer TLC, Inc. (“Complainant”), represented by Karla S. Lambert of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is David Gabunia (“Respondent”), Georgia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotcarpet.org>, registered with GoDaddy.com, Inc. (R91-LROR).
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2011; the National Arbitration Forum received payment on March 1, 2011.
On March 1, 2011, GoDaddy.com, Inc. (R91-LROR) confirmed by e-mail to the National Arbitration Forum that the <homedepotcarpet.org> domain name is registered with GoDaddy.com, Inc. (R91-LROR) and that Respondent is the current registrant of the name. GoDaddy.com, Inc. (R91-LROR) has verified that Respondent is bound by the GoDaddy.com, Inc. (R91-LROR) 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 March 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2011 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@homedepotcarpet.org. Also on March 2, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 March 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
A. Complainant makes the following assertions:
1. Respondent’s <homedepotcarpet.org> domain name is confusingly similar to Complainant’s HOME DEPOT mark.
2. Respondent does not have any rights or legitimate interests in the <homedepotcarpet.org> domain name.
3. Respondent registered and used the <homedepotcarpet.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Homer TLC, Inc., has offered home improvement retail store services since at least 1979 and advertises its services at the <homedepot.com> domain name. Complainant owns multiple trademark registrations for the HOME DEPOT and related marks with the United States Patent and Trademark Office (“USPTO”) and the European Union Office of Harmonization for the Internal Market (“OHIM”):
USPTO
Mark Reg. No. Date Issued
THE HOME DEPOT 1,152,625 April 28, 1981;
THE HOME DEPOT 1,188,191 January 26, 1982;
THE HOME DEPOT 1,297,161 September 18, 1984;
THE HOME DEPOT 1,431,636 March 10, 1987;
THE HOME DEPOT 1,835,705 May 10, 1994;
HOME DEPOT 2,314,081 February 1, 2000;
THE HOME DEPOT 2,391,201 October 3, 2000;
THE HOME DEPOT 2,413,721 December 19, 2000;
THE HOME DEPOT 2,420,666 January 16, 2001;
THE HOME DEPOT 2,428,264 February 13, 2001;
THE HOME DEPOT 2,492,817 September 25, 2001;
THE HOME DEPOT 2,500,530 October 23, 2001; and
THE HOME DEPOT 2,825,232 March 23, 2004.
OHIM
Mark Reg. No. Date Issued
THE HOME DEPOT 000051458 February 16, 2000;
THE HOME DEPOT 000051482 March 24, 2000;
THE HOME DEPOT 002416253 March 20, 2003;
THE HOME DEPOT 002416949 June 13, 2003; and
THE HOME DEPOT 002920890 September 13, 2004.
Respondent, David Gabunia, registered the <homedepotcarpet.org> domain name on December 13, 2010. The disputed domain name redirects Internet users to a blog purporting to offer reviews and information on carpet, other types of flooring, and flooring-related service providers, which phishes for consumers’ information through a “Contact Us” page.
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."
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.”).
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 owns multiple trademark registrations for the HOME DEPOT and related marks with the USPTO and the OHIM:
USPTO
Mark Reg. No. Date Issued
THE HOME DEPOT 1,152,625 April 28, 1981;
THE HOME DEPOT 1,188,191 January 26, 1982;
THE HOME DEPOT 1,297,161 September 18, 1984;
THE HOME DEPOT 1,431,636 March 10, 1987;
THE HOME DEPOT 1,835,705 May 10, 1994;
HOME DEPOT 2,314,081 February 1, 2000;
THE HOME DEPOT 2,391,201 October 3, 2000;
THE HOME DEPOT 2,413,721 December 19, 2000;
THE HOME DEPOT 2,420,666 January 16, 2001;
THE HOME DEPOT 2,428,264 February 13, 2001;
THE HOME DEPOT 2,492,817 September 25, 2001;
THE HOME DEPOT 2,500,530 October 23, 2001; and
THE HOME DEPOT 2,825,232 March 23, 2004.
OHIM
Mark Reg. No. Date Issued
THE HOME DEPOT 000051458 February 16, 2000;
THE HOME DEPOT 000051482 March 24, 2000;
THE HOME DEPOT 002416253 March 20, 2003;
THE HOME DEPOT 002416949 June 13, 2003; and
THE HOME DEPOT 002920890 September 13, 2004.
The Panel finds that these USPTO trademark registrations demonstrate Complainant’s rights in the HOME DEPOT mark for the purposes of Policy ¶ 4(a)(i), despite that the marks are registered in a country different from Respondent’s country of residence or business operations. 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. The U.S. Trademark Act is clear that the certificate of registration on the Principal Register, as here, is prima facie evidence of the validity of the registered mark and the registrant's exclusive right to use the mark in commerce in on or in connection with the goods specified in the registration.”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant alleges that Respondent’s <homedepotcarpet.org> domain name is confusingly similar to Complainant’s HOME DEPOT mark because the disputed domain name consists of Complainant’s mark without the space between the terms combined with the descriptive term “carpet” and the generic top-level domain (“gTLD”) “.org.” The Panel finds that combining Complainant’s mark with a term that describes one of Complainant’s product offerings, “carpet,” does not differentiate the disputed domain name from Complainant’s mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel also determines that neither deleting the space between terms nor attaching a gTLD prevents confusing similarity as spaces are not permitted and gTLDs are required elements of domain names. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel accordingly concludes that Respondent’s <homedepotcarpet.org> domain name is confusingly similar to Complainant’s HOME DEPOT mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has proven Policy ¶ 4(a)(i).
The requirements of Policy ¶ 4(a)(ii) dictate that Complainant must first present a prima facie case against Respondent before the burden to prove rights and legitimate interests shifts to Respondent. As the Panel finds Complainant has satisfied this obligation, the onus is now on Respondent to demonstrate evidence of rights and legitimate interests. Respondent has not presented any evidence or made any contesting arguments, however, because Respondent has failed to respond. The Panel may therefore infer that Respondent does not possess rights and legitimate interests in the disputed domain name and that Complainant’s allegations are true. See Wild West Domains, Inc. v. Jung, D2004-0243 (WIPO May 18, 2004) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest in the Domain Name . . . . It is incumbent on Respondent to contribute to the fact-finding and if contrary to that, it rather incurs in default, there is nothing that the Panel could do to discuss in its benefit.”); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed). The Panel will nevertheless consider the record against the Policy ¶ 4(c) factors to independently determine whether Respondent has rights and legitimate interests.
Complainant asserts that Respondent has no relationship, affiliation, connection, endorsement, or association with Complainant or Home Depot. Complainant argues that Respondent has never received any authorization, permission or license from Complainant to use the HOME DEPOT marks in any way. The WHOIS information for the <homedepotcarpet.org> domain name does not support a finding that Respondent is commonly known by the disputed domain name as it indicates that the registrant is “David Gabunia.” The Panel thus determines that Respondent neither is commonly known by the <homedepotcarpet.org> domain name nor has rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Complainant alleges that Respondent uses the <homedepotcarpet.org> domain name to divert Internet users to a blog purporting to offer reviews and information on carpet, other types of flooring, and flooring-related service providers. Complainant contends that Respondent is also using the resolving website as a phishing site to obtain Internet users personal contact information through a “contact us” web page. The Panel finds that using Complainant’s mark in a domain name to divert Internet users, provide unauthorized information, and obtain consumers’ personal information does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).
The Panel finds that Complainant has proven Policy ¶ 4(a)(ii).
When conducting a Policy ¶ 4(a)(iii) analysis, the Panel finds that it may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant argues that Respondent’s <homedepotcarpet.org> domain name diverts Internet users to Respondent’s resolving website that seems to feature a blog relating to carpet and other types of flooring, as well as flooring providers. Complainant asserts that Respondent maintains this blog and the corresponding “Contact Us” page in order to benefit from the goodwill of Complainant and collect the personal contact information of misled and confused consumers. The Panel holds that a phishing attempt to collect personal information under false pretenses and using Complainant’s mark indicates that Respondent has registered and is using the <homedepotcarpet.org> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
The Panel finds that Complainant has proven Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homedepotcarpet.org> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 7, 2011
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