Homer TLC, Inc. v. Song Bin
Claim Number: FA1306001505218
Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Song Bin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homederpot.com> registered with GUANGZHOU MING YANG INFORMATION TECHNOLOGY CO., LTD.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, 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. The Complaint was submitted in both English and Chinese.
On Jun 19, 2013, GUANGZHOU MING YANG INFORMATION TECHNOLOGY CO., LTD confirmed by e-mail to the National Arbitration Forum that the <homederpot.com> domain name is registered with GUANGZHOU MING YANG INFORMATION TECHNOLOGY CO., LTD and that Respondent is the current registrant of the name. GUANGZHOU MING YANG INFORMATION TECHNOLOGY CO., LTD has verified that Respondent is bound by the GUANGZHOU MING YANG INFORMATION TECHNOLOGY CO., LTD 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 24, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language 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@homederpot.com. Also on June 24, 2013, the Chinese 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 July 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
Pursuant to Rule 11(a), the Panel determines the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
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Complainant’s Mark: HOME DEPOT [i.]
THE HOME DEPOT for Home Improvement Center Services. FIRST USE: 19790622.
FIRST USE IN COMMERCE: 19790622 (US Reg. No. 1188191); |
FACTUAL
AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
Complainant, Homer TLC, Inc., dba Home Depot ("Home Depot") is a
publicly traded corporation listed on the S&P 500 Component.
Headquartered in Cobb County, Georgia, with more than 2,000 locations serving
the United States Puerto Rico, Canada, Mexico and China.
Home Depot was founded in 1978 by Bernie Marcus and Arthur Blank, who had a
vision of opening a place for one-stop shopping for the do-it-yourselfer.
That vision came to fruition when they opened the first two Home Depot stores
on June 22, 1979, in Atlanta, Georgia. The Home Depot model
revolutionized the home improvement industry by bringing the know-how and the
tools to the consumer and saving them money.
Currently employing more than 330,000 employees in the United States, the
retail stores operate out of warehouse-style buildings, offering products
such as home appliances, tools, hardware and lumber, building materials, paint,
plumbing, flooring, garden supplies and plants. Sales to contractors, builders,
companies, as well as individual shoppers are commonly made through the company
website, HOMEDEPOT.COM, which launched in 1992.
Home Depot exclusively carries such product lines as BEHR Paint, Chem-Dry
Cleaning Products, GE Water Heaters, Homelite Power Tools, and the company's
own product line, HDX Brand. Additionally, they are retailers of Husky
Tools, Workforce shelving and cabinets and Glacier Bay sinks and faucets.
In terms of overall revenue reported to the U.S. Securities and Exchange
Commission, the company is the largest home improvement retailer in the United
States. In 1981, the company went public on NASDAQ and moved to the New
York Stock Exchange in 1984 (NYSE: HD). The combined revenue of the
company's successful stores and direct sales in 2012 were $70.4 billion USD,
and the company reported a net income that year of $3.9 billion.
Home Depot has become well known to the public, not only for their product
labels and employee uniforms, conspicuously embossed with the Home Depot name,
but also because of their many environmental, philanthropic and sports support,
for which they have received awards and public recognition.
· For over 20 years, Home Depot is the leader in the industry to a more sustainable future by offering the largest green labeling program in American retailing among other sustainable projects supported by the Company. Due to these efforts, Home Depot was named as the Top 25 Socially Responsible Dividend Stock by Dividend Channel. The Company has also been awarded Energy Star® Retail Partner of the Year (2012); WaterSense® Retail Partner of the Year (2011); Carbon Disclosure Project Ranked Leader in Sector with a score of 82 (2011); NEWSWEEK ranked #74 of top 500 green companies (2011) among other recognitions in the industry.
· Since 1999, giving back to the communities has been an integral part of Home Depot. In 2002, The Home Depot Foundation was established to serve as the charitable arm to provide resources to assist nonprofit organizations. This includes a three year commitment and a $30 million pledge to veterans' housing initiatives. Also, as a member of the American Red Cross Annual Disaster Giving Program (ADGP), Home Depot contributes $500,000 each year for disaster relief.
· Since 1991, the company has become a large supporter of athletics, sponsoring the United States and Canadian Olympic teams, and launching a program which offered employment to athletes that accommodates their training and competition schedules. Sponsorship also includes, Soccer, NASCAR racing, the Atlanta Braves (MLB) among other sporting events and professional teams.
Owner of several US federal trademarks for HOME DEPOT, as referenced in Section (c) above, the Home Depot name has been used continuously since early 1979 in connection with retail home improvement supplies and building supplies.
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[a.] |
The
Disputed Domain Name(s) are nearly identical and confusingly similar to
Complainant's Marks.
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[b.] |
Respondent
has no rights or legitimate interests in respect of the Disputed Domain
Name(s) for the following reasons:
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[c.] |
The
Domain Name(s) should be considered as having been registered and being used
in bad faith for the following reasons:
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B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order transferring or cancelling a domain name:
(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 claims to own the HOME DEPOT mark through its various trademark registrations with the United States Patent & trademark Office (“USPTO”) (e.g., Reg. No. 2,314,081, registered February 1, 2000). Complainant’s USPTO registration sufficiently establishes its rights in the HOME DEPOT mark under Policy ¶4(a)(i), despite the fact Respondent resides outside of the United States. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”). Under Policy ¶4(a)(i), Complainant need only have rights, not necessarily superior rights to Respondent.
Complainant claims the <homederpot.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark as the domain merely adds the letter “r” to the mark and includes the gTLD “.com.” <homederpot.com> domain also eliminates the space between Complainant’s two-word HOME DEPOT mark. By and large, the addition of a single letter imbedded in a complainant’s mark does not sufficiently differentiate the disputed domain from the mark because minor misspellings of a mark in a domain name increase (rather than decrease) confusing similarity. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶4(a)(i).”). The elimination of the space between the two word mark and the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark. 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 <homederpot.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark because the additions of the letter “r” and gTLD “.com” to the HOME DEPOT mark, and the elimination of the space between the mark, do not sufficiently distinguish the disputed domain from the mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has not been commonly known by the disputed domain name. There is no evidence in the WHOIS record to suggest Respondent is known by the disputed domain. The WHOIS information identifies the domain registrant as “Song Bin.” Complainant has not licensed or otherwise permitted Respondent to use the mark in a domain name. Respondent does not contest these assertions. Therefore, the Panel is comfortable finding Respondent is not commonly known by the domain name in dispute pursuant to Policy ¶4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
The disputed domain resolves to a website displaying links promoting Complainant’s competitors. The links on the web site cause Respondent to receive “click through” fees. A disputed domain name used to offer goods or services which compete with a complainants’ business does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Respondent’s use of the disputed domain name is not 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).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent is a recalcitrant, serial cybersquatter. Complainant argues Respondent’s pattern of bad faith registration and use is evidence of Respondent’s current bad faith. Perhaps this is so. However, this case must turn on the facts of this case and not the facts of previous cases. Therefore, this Panel will review the unquestioned evidence rather than accept Complainant’s argument.
The links displayed on the resolving website promote products that compete with Complainant, diverting potential customers away from Complainant to third-party websites, all of which disrupts Complainant’s business. It is sufficient evidence of bad faith where a respondent provides links to complainant’s competitors through the confusingly similar domain name. See H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶4(b)(iii).”). The Panel finds Respondent’s bad faith registration and use under Policy ¶4(b)(iii) because Complainant has provided the Panel with evidence showing Respondent provides links to Complainant’s competitors.
Respondent’s bad faith is also shown by Respondent using the disputed domain name in connection with generating revenue as a “click through” website by using the HOME DEPOT mark and providing links to services and products offered by Complainant to take advantage of Complainant’s mark for commercial gain. This is sufficient evidence of bad faith pursuant to Policy ¶4(b)(iv) because the resolving page provides links to Complainant’s competitors, including “Sears Lawn & Garden”, and Respondent likely receives click-through fees by intentionally misleading Internet users into associating Complainant with the domain name. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Complainant claims Respondent had actual knowledge of Complainant’s rights in the HOME DEPOT mark, which Complainant argues is evidence of Respondent’s bad faith. Just because Respondent has knowledge of Complainant’s mark and registers a confusingly similar domain name does not ipso facto, without more, constitute bad faith registration and use of the domain name.
Complainant argues Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. Once again, this Panel refuses to go this far either under the facts of this case or as a matter of policy. Typosquatting in not per se proscribed under the UDRP and this Panel is loath to read such a restriction into the UDRP. Sufficient other facts in this case allow the Panel to find bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered that the <homederpot.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, July 30, 2013
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