Homer TLC, Inc. v. Balticsea LLC
Claim Number: FA1306001505216
Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Balticsea LLC (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ghomedepot.com> and <homedwepot.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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 17, 2013; the National Arbitration Forum received payment on June 17, 2013.
On June 19, 2013, Tucows Domains Inc. confirmed by e-mail to the National Arbitration Forum that the <ghomedepot.com> and <homedwepot.com> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. 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 June 25, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 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@ghomedepot.com and postmaster@homedwepot.com. Also on June 25, 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 August 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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’s Contentions
i. Respondent has also listed the disputed domain names for sale.
ii. Respondent’s advertised pay-per-click links displayed on the resolving websites promote products that compete with Complainant.
iii. Respondent has registered and used the disputed domain names in bad faith by using the disputed domain names to attract and mislead consumers for its own profit.
iv. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.
v. Respondent had actual knowledge of Complainant’s rights in the at-issue trademarks at the time it registered the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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.”).
Complainant argues that it owns retail stores operating out of warehouse-style buildings, offering products such as home appliances, tools, hardware and lumber, building materials, paint, plumbing, flooring, garden supplies, and plants. Complainant shows that it is the owner of a trademark registration with the USPTO for its HOME DEPOT mark (Reg. No. 2,314,081, registered February 1, 2000). The Panel notes that Respondent appears to reside in Russia. However, the Panel determines that Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent resides, so long as it establishes rights in the mark in some jurisdiction. See 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). Therefore, the Panel finds that Complainant’s registration of the HOME DEPOT mark with the USPTO establishes its rights in the marks under 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)).
Complainant claims that the disputed domain names are confusingly similar to Complainant’s mark because they differ by only a single character from Complainant’s mark. The Panel notes that Respondent adds the letter “g” to Complainant’s HOME DEPOT mark in its <ghomedepot.com> domain name, and the letter “w” to the <homedwepot.com> domain name. The Panel finds that Respondent’s inclusion of an additional letter to Complainant’s mark does not sufficiently distinguish its domain names from the mark pursuant to 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)). Accordingly, the Panel concludes that Respondent’s <ghomedepot.com> and <homedwepot.com> domain names are confusingly similar to Complainant’s HOME DEPOT mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent has not been commonly known by the disputed domain names. The Panel notes that the WHOIS record identifies “Balticsea LLC” as the registrant of the <ghomedepot.com> and <homedwepot.com> domain names. Absent evidence from Respondent regarding authorization to use Complainant’s trademark or any other evidence showing Respondent’s identity, the Panel finds that Respondent is not commonly known by the <ghomedepot.com> and <homedwepot.com> domain names under Policy ¶ 4(c)(ii).
The Panel further notes that Respondent’s <ghomedepot.com> and <homedwepot.com> domain names link to Complainant’s legitimate website at <homedepot.com>. The Panel finds that Respondent’s use of these domain names to resolve to Complainant’s legitimate website 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).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s typosquatting behavior is evidence of bad faith. The Panel notes that Respondent adds the letters “g” or “w” to its <ghomedepot.com> and <homedwepot.com> domain names. The Panel finds that Respondent has engaged in typosquatting, evidencing bad faith use and registration under Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent’s registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark”).
Thus, Complainant has also satisfied 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 <ghomedepot.com> and <homedwepot.com> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: August 19, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page