Homer TLC, Inc. v. FUNDACION PRIVATE WHOIS / DOMAIN ADMINISTRATOR
ATTN: hhomedepot.com,homedepeot.com,homedepit.com,homedepor.com,homedepoth.com,homehepot.com,homepdepot.com,nomedepot.com,thehomedeopt.com,thehomedepo.com
Claim Number: FA1304001494705
Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is FUNDACION PRIVATE WHOIS / DOMAIN ADMINISTRATOR
ATTN: hhomedepot.com,homedepeot.com,homedepit.com,homedepor.com,homedepoth.com,homehepot.com,homepdepot.com,nomedepot.com,thehomedeopt.com,thehomedepo.com (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hhomedepot.com>, <homedepeot.com>, <homedepit.com>, <homedepor.com>, <homedepoth.com>, <homehepot.com>, <homepdepot.com>, <nomedepot.com>, <thehomedeopt.com>, and <thehomedepo.com>, registered with Internet.Bs Corp.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 12, 2013; the National Arbitration Forum received payment on April 12, 2013.
On April 18, 2013, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <hhomedepot.com>, <homedepeot.com>, <homedepit.com>, <homedepor.com>, <homedepoth.com>, <homehepot.com>, <homepdepot.com>, <nomedepot.com>, <thehomedeopt.com> domain names are registered with Internet.Bs Corp. and that Respondent is the current registrant of the names. Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. 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 24, 2013, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <thehomedepo.com> domain name is registered with Internet.Bs Corp. and that Respondent is the current registrant of the names. Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. 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 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 2013 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@hhomedepot.com, postmaster@homedepeot.com, postmaster@homedepit.com, postmaster@homedepor.com, postmaster@homedepoth.com, postmaster@homehepot.com, postmaster@homepdepot.com, postmaster@nomedepot.com, postmaster@thehomedeopt.com, and postmaster@thehomedepo.com. Also on April 24, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 21, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hhomedepot.com>, <homedepeot.com>, <homedepit.com>, <homedepor.com>, <homedepoth.com>, <homehepot.com>, <homepdepot.com>, <nomedepot.com>, <thehomedeopt.com> domain names are confusingly similar to Complainant’s THE HOME DEPOT mark.
2. Respondent does not have any rights or legitimate interests in the <hhomedepot.com>, <homedepeot.com>, <homedepit.com>, <homedepor.com>, <homedepoth.com>, <homehepot.com>, <homepdepot.com>, <nomedepot.com>, <thehomedeopt.com> domain names.
3. Respondent registered and used the <hhomedepot.com>, <homedepeot.com>, <homedepit.com>, <homedepor.com>, <homedepoth.com>, <homehepot.com>, <homepdepot.com>, <nomedepot.com>, <thehomedeopt.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the THE HOME DEPOT mark (e.g., Reg. No. 1,188,191, registered January 26, 1982) and for the HOME DEPOT mark (Reg. No. 2,314,081, registered February 1, 2000).
The earliest date on which Respondent registered the disputed domain names was January 26, 2000. Respondent is using some of the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent is also using some of the disputed domain names to redirect Internet users to Complainant’s own website through Complainant’s affiliate program.
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(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.”).
The Panel finds that Complainant’s registration of the THE HOME DEPOT and HOME DEPOT marks sufficiently establish its rights in the marks pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel notes that Respondent appears to reside in Panama. However, Complainant does not need to register its mark in the country that Respondent operates in under Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s disputed domain names are confusingly similar to Complainant’s marks because they differ by only a single character from Complainant’s marks. The addition or substitution of letters to Complainant’s mark does not distinguish Respondent’s domain names from Complainant’s mark under Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Respondent’s removal of spaces and addition of a gTLD to the disputed domain names is inconsequential to a Policy ¶ 4(a)(i) confusingly similar analysis. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <hhomedepot.com>, <homedepeot.com>, <homedepit.com>, <homedepor.com>, <homedepoth.com>, <homehepot.com>, <homepdepot.com> and <nomedepot.com> domain names are confusingly similar to Complainant’s HOME DEPOT mark.
Respondent’s <thehomedeopt.com> domain name transposes the letters “p” and “o” in Complainant’s mark, also insufficient to distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Delta Corporate Identity, Inc. v. SearchTerms, FA 590678 (Nat. Arb. Forum Dec. 14, 2005) (concluding that the <dleta.com> domain name was confusingly similar to the complainant’s DELTA mark). Respondent deletes the letter “t” from Complainant’s THE HOME DEPOT mark in the <thehomedepo.com> domain name, irrelevant to a Policy ¶ 4(a)(i) analysis. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Therefore, the Panel finds that Respondent’s <thehomedeopt.com>, and <thehomedepo.com> domain names are confusingly similar to Complainant’s THE HOME DEPOT mark.
The Panel finds that Complainant has satisfied under Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has not been commonly known by the disputed domain names. The WHOIS information identifies “FUNDACION PRIVATE WHOIS / DOMAIN ADMINISTRATOR ATTN: hhomedepot.com,homedepeot.com,homedepit.com,homedepor.com,homedepoth.com,homehepot.com,homepdepot.com,nomedepot.com,thehomedeopt.com,thehomedepo.com” as the registrant of the disputed domain names. Complainant asserts that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant states that it has not given Respondent permission to use Complainant’s mark in a domain name. The Panel therefore finds that Respondent is not commonly known by the disputed domain names. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant contends that Respondent is using the <hhomedepot.com>, <homedepeot.com>, <homedepit.com>, <homedepor.com>, <homedepoth.com>, <homehepot.com>, <homepdepot.com>, <nomedepot.com>, and <thehomedepo.com> domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel notes that Respondent’s disputed domain names resolve to websites that provide competing hyperlinks to third-party competitors such as “Lowes Application,” “home improvement MusicBlvd,” “Home Depot Applications.” Complainant asserts that Respondent presumably receives pay-per-click fees from these linked websites. The Panel finds that Respondent’s use of the disputed domain names to feature competing hyperlinks is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant argues that Respondent is using the <thehomedeopt.com> domain name to redirect Internet users to Complainant’s own website through Complainant’s affiliate program, which is in direct violation of the affiliate agreement which governs the relationship of affiliates and Complainant. The Panel finds that this is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Complainant has satisfied under Policy ¶ 4(a)(ii).
Complainant shows that Respondent has also listed some of the disputed domain names for sale. The DomainTools record lists the <hhomedepot.com>, <homedepit.com>, <homedepor.com>, <homedepoth.com>, <homehepot.com>, <homepdepot.com>, <nomedepot.com>, <thehomedeopt.com>, and <thehomedepo.com> domain names for sale. The Panel finds that it is likely that Respondent intended to offer the domain names for sale when it registered the domain names, an indication of bad faith pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“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).”).
Complainant contends that Respondent is a recalcitrant, serial cybersquatter, citing McDonald’s Corporation v. Fundacion Private Whois, D2012-1435 (WIPO September 20, 2012) and Karen Millen Fashions Limited v. Fundacion Private Whois, D2012-1644 (WIPO October 9, 2012). The Panel finds that Respondent’s prior adverse UDRP rulings are evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Respondent’s <hhomedepot.com>, <homedepeot.com>, <homedepit.com>, <homedepor.com>, <homedepoth.com>, <homehepot.com>, <homepdepot.com>, <nomedepot.com>, and <thehomedepo.com> disputed domain names resolve to websites that provide competing hyperlinks to third-party competitors such as “Lowes Application,” “home improvement MusicBlvd,” “Home Depot Applications.” Complainant contends that this diverts consumers away from Complainant, disrupting Complainant’s business. The Panel agrees and finds that this demonstrates Respondent’s bad faith use and registration under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent is using the disputed domain names to attract and mislead consumers for its own profit, further evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Respondent is using some of the disputed domain names to redirect Internet users to Complainant’s own website through Complainant’s affiliate program, in violation of Complainant’s affiliate agreement. The Panel finds that Respondent’s use of some of the disputed domain names to link to Complainant’s website through its affiliate program shows bad faith use and registration under Policy ¶ 4(b)(iv). See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program).
The Panel also finds that Respondent’s intentional misspelling or “typosquatting” of Complainant’s mark in the disputed domain names is, in itself, evidence of bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
The Panel finds that Complainant has satisfied under 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 <hhomedepot.com>, <homedepeot.com>, <homedepit.com>, <homedepor.com>, <homedepoth.com>, <homehepot.com>, <homepdepot.com>, <nomedepot.com>, <thehomedeopt.com>, and <thehomedepo.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 28, 2013
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