Homer TLC, Inc. v. 21562719 Ont Ltd
Claim Number: FA1310001526817
Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is 21562719 Ont Ltd (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gomedepot.com>, registered with FABULOUS.COM PTY LTD.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 28, 2013; the National Arbitration Forum received payment October 28, 2013.
On October 28, 2013, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <gomedepot.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. verified that Respondent is bound by the FABULOUS.COM PTY LTD. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 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@gomedepot.com. Also on October 29, 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 November 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant makes the following allegations in this proceeding:
a) Complainant operates a retail store chain that provides home improvement goods and services. Complainant has some 2,000 stores in North America and China and employs some 330,000 people in the United States.
b) Complainant has rights in the HOME DEPOT mark, used in connection with retail home improvement goods. Complainant is the owner of registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,314,081 registered February 1, 2000).
c) Respondent’s <gomedepot.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark. The disputed domain name differs by a single character from Complainant’s mark, replacing the letter “h” in the word “home” with the letter “g.” The disputed domain name also adds the generic top-level domain (“gTLD”) “.com.”
d) Respondent does not have any rights or legitimate interests in the <gomedepot.com> domain name.
i. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its HOME DEPOT mark in any way.
ii. Respondent is using the <gomedepot.com> domain name to redirect Internet users to a website featuring generic third-party links, some of which compete directly with Complainant’s business. See Complainant’s Exhibit H. Complainant presumes Respondent receives pay-per-click revenue from these links.
e) Respondent registered and is using the <gomedepot.com> domain name in bad faith.
i. Respondent is a serial cyberquatter who has been involved in numerous UDRP proceedings, which conduct constitutes an ongoing pattern of bad faith behavior.
ii. Respondent is disrupting Complainant’s business by using the <gomedepot.com> domain name to display generic third-party links, some of which directly compete with Complainant. See Complainant’s Exhibit H.
iii. Respondent is attempting to attract and mislead Internet users to its confusingly similar domain by creating a likelihood of confusion with Complainant’s HOME DEPOT mark. The <gomedepot.com> domain name resolves to a website featuring generic third-party links, some of which directly compete with Complainant, and Complainant believes Respondent is receiving pay-per-click revenue from these links. See Complainant’s Exhibit H.
iv. Respondent’s conduct constitutes typosquatting.
Respondent did not submit a response in this proceeding.
The Panel notes that Respondent registered the <gomedepot.com> domain name May 6, 2005.
FINDINGS:
Complainant established that it has rights to and legitimate interests in the mark contained in misspelled form in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no such rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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 that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant contends it has rights in the HOME DEPOT mark, used in connection with retail home improvement goods. Complainant owns registrations with the USPTO (e.g., Reg. No. 1,188,191 registered January 26, 1982). The Panel notes that Respondent resides in a different country from that in which Complainant holds its trademark registrations; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has rights in the HOME DEPOT mark pursuant to Policy ¶ 4(a)(i) via a valid trademark registration with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant next alleges that Respondent’s <gomedepot.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark. Complainant states that the disputed domain name differs by a single character from Complainant’s mark, replacing the letter “h” in the word “home” with the letter “g.” Complainant also notes that the disputed domain name also adds the gTLD “.com.” Additionally, the Panel notes that the disputed domain name removes the space that appears in Complainant’s mark between the words “home” and “depot.” The Panel finds that a disputed domain name that differs from a trademark by a single letter does not negate a finding of confusing similarity. See 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”). The Panel also finds that addition of a gTLD and elimination of a space between words is irrelevant for purposes of determining confusing similarity. 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)). Therefore, the Panel finds that Respondent’s <gomedepot.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such 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 does not have any rights or legitimate interests in the <gomedepot.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its HOME DEPOT mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “21562719 Ont Ltd” as the domain name registrant. Past panels have looked to the WHOIS record, to whether the respondent was authorized to use the trademark, and to the evidence on record as a whole in determining whether the respondent is commonly known by the disputed domain name. 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the HOME DEPOT mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <gomedepot.com> domain name under Policy ¶ 4(c)(ii).
According to Complainant, Respondent is using the <gomedepot.com> domain name to redirect Internet users to a website featuring generic third-party links, some of which compete directly with Complainant’s business. See Complainant’s Exhibit H. Complainant presumes Respondent receives pay-per-click revenue from these links. In previous cases, panels found that using a disputed domain name to host competing third-party links does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use. See, e.g., Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not making a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent is using the <gomedepot.com> domain name to redirect Internet users to a website featuring generic third-party links, some of which compete directly with Complainant’s business.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant claims Respondent registered and is using the <gomedepot.com> domain name in bad faith. Complainant states that Respondent is a serial cyberquatter who has been involved in numerous UDRP proceedings, which constitutes an ongoing pattern of bad faith behavior. The Panel notes that a search for Respondent in the National Arbitration Forum decision database shows eight decisions involving Respondent, all of which resulted in the transfer of the disputed domain name. See, e.g., Intelius Inc. v. 21562719 Ont Ltd, FA 1336877 (Nat. Arb. Forum Aug. 31, 2010); Getty Images (US), Inc. & its subsidiary, Istockphoto LP v. 21562719 Ont Ltd, FA 1521952 (Nat. Arb. Forum Nov. 11, 2013). Past panels have found that a respondent who has a history of prior adverse UDRP decisions provides sufficient proof to find that respondent acted in bad faith. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Therefore, the Panel finds that Respondent registered and is using the <gomedepot.com> domain name in bad faith under Policy ¶ 4(b)(ii) because Respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names.
Complainant claims that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). Complainant argues that Respondent is disrupting Complainant’s business by using the <gomedepot.com> domain name to display generic third-party links, some of which directly compete with Complainant. See Complainant’s Exhibit H. Complainant contends that Respondent’s use of the disputed domain name diverts Internet users away from Complainant’s official website and to Respondent’s disputed domain name, thus disrupting Complainant’s business. Previous panels have found that using a disputed domain name to resolve to a website featuring links to complainant’s competitors indicates an intention to disrupt a complainant’s business. See H-D Michigan 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 therefore finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent also registered and is using the disputed domain name in bad faith under a Policy ¶ 4(b)(iv) analysis. Complainant asserts that Respondent is attempting to attract and mislead Internet users to its confusingly similar domain by creating a likelihood of confusion with Complainant’s HOME DEPOT mark. Complainant contends that Respondent’s <gomedepot.com> domain name resolves to a website featuring generic third-party links, some of which directly compete with Complainant, and Complainant believes Respondent is receiving pay-per-click revenue from these links. See Complainant’s Exhibit H. Prior UDRP panels routinely have found that using a confusingly similar domain name to resolve to a website featuring links that compete with a complainant’s website and also collect revenue, suggests bad faith use and registration. 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 that 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).”). The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant claims Respondent’s conduct constitutes typosquatting. In Liberty Mut. Ins. Co. v. Domain Park Ltd., FA 1189049 (Nat. Arb. Forum June 23, 2008), the panel defined typosquatting as the “registration of a disputed domain name that capitalizes on Internet users’ typographical errors.” The Panel notes that the <gomedepot.com> domain name differs from Complainant’s HOME DEPOT mark by a single letter. Further, past panels have found that typosquatting constitutes further 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)). Therefore, the Panel finds that Respondent’s conduct constitutes typosquatting and thus provides further evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <gomedepot.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 4, 2013.
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