Homer TLC, Inc. v Zhichao Yang
Claim Number: FA1307001508957
Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <homedecot.com>, <homedepon.com>, <homedepota.com>, <homendepot.com>, <homtdepot.com>, <rhehomedepot.com>, <thehomeddepot.com>, <thehomedeepot.com>, <thehomedepoit.com>, <thehomedepopt.com>, <thehomedepost.com>, <thehomedepoy.com>, <thehomedeppot.com>, <thehomedepto.com>, <thehomeepot.com>, <thehomesdepot.com>, <thehomesepot.com>, <thehonedepot.com>, <thehpmedepot.com>, <theomedepot.com>, and <thrhomedepot.com>, registered with Godaddy.com, LLC.
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 July 10, 2013; the National Arbitration Forum received payment on July 10, 2013.
On July 11, 2013, Godaddy.Com, Llc confirmed by e-mail to the National Arbitration Forum that the <homedecot.com>, <homedepon.com>, <homedepota.com>, <homendepot.com>, <homtdepot.com>, <rhehomedepot.com>, <thehomeddepot.com>, <thehomedeepot.com>, <thehomedepoit.com>, <thehomedepopt.com>, <thehomedepost.com>, <thehomedepoy.com>, <thehomedeppot.com>, <thehomedepto.com>, <thehomeepot.com>, <thehomesdepot.com>, <thehomesepot.com>, <thehonedepot.com>, <thehpmedepot.com>, <theomedepot.com>, and <thrhomedepot.com> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. 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 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 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@homedecot.com, postmaster@homedepon.com, postmaster@homedepota.com, postmaster@homendepot.com, postmaster@homtdepot.com, postmaster@rhehomedepot.com, postmaster@thehomeddepot.com, postmaster@thehomedeepot.com, postmaster@thehomedepoit.com, postmaster@thehomedepopt.com, postmaster@thehomedepost.com, postmaster@thehomedepoy.com, postmaster@thehomedeppot.com, postmaster@thehomedepto.com, postmaster@thehomeepot.com, postmaster@thehomesdepot.com, postmaster@thehomesepot.com, postmaster@thehonedepot.com, postmaster@thehpmedepot.com, postmaster@theomedepot.com, postmaster@thrhomedepot.com. Also on July 15, 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 12, 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 <homedecot.com>, <homedepon.com>, <homedepota.com>, <homendepot.com>, <homtdepot.com>, <rhehomedepot.com>, <thehomeddepot.com>, <thehomedeepot.com>, <thehomedepoit.com>, <thehomedepopt.com>, <thehomedepost.com>, <thehomedepoy.com>, <thehomedeppot.com>, <thehomedepto.com>, <thehomeepot.com>, <thehomesdepot.com>, <thehomesepot.com>, <thehonedepot.com>, <thehpmedepot.com>, <theomedepot.com>, and <thrhomedepot.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 <homedecot.com>, <homedepon.com>, <homedepota.com>, <homendepot.com>, <homtdepot.com>, <rhehomedepot.com>, <thehomeddepot.com>, <thehomedeepot.com>, <thehomedepoit.com>, <thehomedepopt.com>, <thehomedepost.com>, <thehomedepoy.com>, <thehomedeppot.com>, <thehomedepto.com>, <thehomeepot.com>, <thehomesdepot.com>, <thehomesepot.com>, <thehonedepot.com>, <thehpmedepot.com>, <theomedepot.com>, and <thrhomedepot.com> domain names.
3. Respondent registered and used the <homedecot.com>, <homedepon.com>, <homedepota.com>, <homendepot.com>, <homtdepot.com>, <rhehomedepot.com>, <thehomeddepot.com>, <thehomedeepot.com>, <thehomedepoit.com>, <thehomedepopt.com>, <thehomedepost.com>, <thehomedepoy.com>, <thehomedeppot.com>, <thehomedepto.com>, <thehomeepot.com>, <thehomesdepot.com>, <thehomesepot.com>, <thehonedepot.com>, <thehpmedepot.com>, <theomedepot.com>, and <thrhomedepot.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant registered its THE HOME DEPOT mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,188,191, registered on January 26, 1982). Complainant also registered its HOME DEPOT mark with the USPTO (Reg. No. 2,314,081 registered on February 1, 2000).
Respondent registered the <theomedepot.com>, <thehonedepot.com>, <thehomeepot.com>, <thehomedepto.com>, <thehomedepoy.com>, <homtdepot.com>, <homendepot.com>, <homedepota.com>, <homedepon.com>, <homedecot.com> domain names on September 13, 2013. Respondent registered the <thrhomedepot.com>, <thehpmedepot.com>, <thehomesepot.com>, <thehomesdepot.com>, <thehomedeppot.com>, <thehomedepost.com>, <thehomedepopt.com>, <thehomedepoit.com>, <thehomedeepot.com>, <thehomeddepot.com>, <rhehomedepot.com> domain names on September 17, 2013. Respondent uses the disputed domain names above to resolve to websites featuring third-party hyperlinks.
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 USPTO registration of it’s THE HOME DEPOT and HOME DEPOT marks establishes its rights in the marks under Policy ¶ 4(a)(i), even where Respondent resides outside the United States. In Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), the panel reaffirmed the long-held principle that a complainant need not illustrate rights in every possible jurisdiction where a respondent may be located. See also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”).
Respondent’s domain names all include various misspellings of Complainant’s THE HOME DEPOT or HOME DEPOT marks, and add the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD to the mark and the removal of the spaces in the mark are immaterial to this proceeding. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The intentional misspelling of Complainant’s mark also does not distinguish the disputed domain names from Complainant’s mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Pier 1 Imps., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com> is confusingly similar to the complainant's PIER 1 mark). Thus, the Panel finds that Respondent’s domain names are all confusingly similar to THE HOME DEPOT or HOME DEPOT marks.
The Panel finds that Complainant has satisfied 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 claims that Respondent is not commonly known by any of the disputed domain names. The WHOIS information for the disputed domain names lists “Zhichao Yang” as the registrant, which shows no connection between the registrant and the disputed domain names. Complainant states that it has not authorized, licensed, or endorsed Respondent’s use of its THE HOME DEPOT or HOME DEPOT marks in the disputed domain names. Thus, is no basis to find that Respondent is commonly known by any of these domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant argues that Respondent uses the disputed domain names to send Internet users to websites that promote content sponsored by third party entities, sending Internet users to various websites and away from Complainant’s business. The Panel notes that some of these third-party hyperlinks promote goods that compete with Complainant’s goods. In Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), the panel refused to find a bona fide offering under Policy ¶ 4(c)(i), or a legitimate noncommercial use under Policy ¶ 4(c)(iii), when the respondent was using the domain name at issue solely to list hyperlinks to various businesses in order to generate advertising revenue. The Panel similarly finds that Respondent’s use of the disputed domain names is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel notes that Complainant provides evidence of Respondent’s offer to sell the <homtdepot.com> and <theomedepot.com> domain names through a DomainTools.com sponsored advertisement. See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale); CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”). The Panel finds Respondent registered the confusingly similar <homtdepot.com> and <theomedepot.com> domain names with the bad faith purpose of resale.
The Panel notes that in Brooks Bros. Group, Inc. v. Zhichao Yang, FA 1488737 (Nat. Arb. Forum Apr. 10, 2013), Dollar Shave Club, Inc. v. Zhichao Yang, FA 1491288 (Nat. Arb. Forum Apr. 26, 2013), and State Farm Auto. Ins. Co. v. Zhichao Yang, FA 1461251 (Nat. Arb. Forum Oct. 16, 2012) previous panels conclude that Respondent registered and used the disputed domain names in bad faith, and thus ordered Respondent to transfer the domain names. The Panel finds that these prior adverse UDRP decisions demonstrate a pattern of Policy ¶ 4(b)(ii) bad faith. See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
Respondent’s use of competing hyperlinks on the websites resolving from the disputed domain names illustrates an attempt to disrupt Complainant’s business. The Panel notes that each of the websites includes advertisements to goods or services provided by Complainant under its THE HOME DEPOT and HOME DEPOT marks, such as “Wholesale Home Décor Items,” “Electric Table Saws,” “Window Blinds Home Depot,” “Lennox Furnace, and “Furnace Parts.” The Panel finds that this constitutes bad faith under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant argues that Respondent is confusing Internet users into viewing the websites associated with the disputed domain names to generate commercial revenue when Internet users click through to third-party websites. The Panel agrees and finds that Respondent’s use of the disputed domain names to promote hyperlinks to competing and related goods constitutes Policy ¶ 4(b)(iv) bad faith registration and use. See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).
Complainant claims that Respondent surely had actual knowledge of Complainant’s rights in THE HOME DEPOT an HOME DEPOT marks, which can be inferred from Respondent’s registration of the twenty-one disputed domain names, each of which embody minor misspellings of Complainant’s THE HOME DEPOT mark. The Panel agrees and finds that Respondent had actual knowledge of Complainant's rights in the marks prior to registering the disputed domain name, further evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel also finds that Respondent’s typosquatting is itself evidence of bad faith. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds that Complainant has 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 <homedecot.com>, <homedepon.com>, <homedepota.com>, <homendepot.com>, <homtdepot.com>, <rhehomedepot.com>, <thehomeddepot.com>, <thehomedeepot.com>, <thehomedepoit.com>, <thehomedepopt.com>, <thehomedepost.com>, <thehomedepoy.com>, <thehomedeppot.com>, <thehomedepto.com>, <thehomeepot.com>, <thehomesdepot.com>, <thehomesepot.com>, <thehonedepot.com>, <thehpmedepot.com>, <theomedepot.com>, and <thrhomedepot.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 24, 2013
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