Homer TLC, Inc. v. Hong Kong Domain / Domain Admin
Claim Number: FA1401001541730
Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Hong Kong Domain / Domain Admin (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepol.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 January 31, 2014; the National Arbitration Forum received payment on January 31, 2014.
On February 4, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <homedepol.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. 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 February 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2014 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@homedepol.com. Also on February 5, 2014, 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 March 4, 2014, 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <homedepol.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark.
2. Respondent does not have any rights or legitimate interests in the <homedepol.com> domain name.
3. Respondent registered and uses the <homedepol.com> domain name in bad faith.
B. 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.”).
The Panel finds that Complainant has rights in the HOME DEPOT mark under Policy ¶ 4(a)(i) based on its registrations with the USPTO. Panels have routinely found that providing evidence of a registration for a mark with a recognized trademark authority is sufficient to establish rights in a given mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). The Panel notes that it is irrelevant whether a complainant registers a domain name in the location of respondent as long as it provides evidence of a registration in some jurisdiction. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Respondent’s <homedepol.com> domain name takes advantage of Internet users’ typographical errors by creating a domain name exchanging the “T” in Complainant’s HOME DEPOT mark and replacing it with an “L.” Previous panels have found that replacing one letter of a complainant’s mark does not distinguish a domain name from a complainant’s mark. See Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar). Respondent’s <homedepol.com> domain name also removes the space in Complainant’s HOME DEPOT mark and adds the gTLD “.com,” both insufficient to differentiate a disputed domain name from a given mark. 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)). Thus, the Panel finds that Respondent’s <homedepol.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark.
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 argues that Respondent has not been commonly known by the disputed domain name and has no trademark rights in the disputed domain name. Complainant states that Respondent is not sponsored by or affiliated with Complainant in any way and Complainant has not given Respondent permission to use Complainant’s mark. Complainant points out that Respondent registered the disputed domain name on September 22, 2010, which is significantly after Complainant’s registration for the HOME DEPOT mark. The WHOIS information for the <homedepol.com> domain name lists “Domain Admin” as the registrant. Previous panels have concluded that a respondent is not commonly known by a disputed domain name where there is no indication on the WHOIS information or elsewhere suggesting such a relationship. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent has no rights or legitimate interests in the <homedepol.com> domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii). Complainant claims that Respondent uses the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Complainant further argues that Respondent collects pay-per-click fees from the links present on the resolving website. The Panel notes that the resolving website features pictures of home interiors, exteriors, and men constructing a new kitchen, as well as headings such as “Home Depot Stores,” “Home Depot Opinion Survey,” “Home Depot Coupon Codes,” “Home Depot Discounts,” “Home Appliances,” “Home Building Materials,” “Home Improvement,” and “Patio Furniture.” Complainant points out that Respondent features Complainant’s HOME DEPOT mark spelled correctly on the resolving website. Previous panels have frequently found that using a confusingly similar domain name to resolve to a website featuring links related to a complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). Thus, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and is using the <homedepol.com> domain name in bad faith and provides evidence that Respondent has listed the disputed domain name for sale. Prior panels have found that offering to sell a disputed domain name indicates bad faith use and registration under Policy ¶ 4(b)(i). 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). The Panel therefore finds that Respondent registered and is using the <homedepol.com> domain name in bad faith under Policy ¶ 4(b)(i).
Complainant also argues that Respondent’s use of the disputed domain name to feature pay-per-click links that compete with and disrupt Complainant’s business is diverting consumers away from Complainant’s business to third party websites. The Panel agrees and finds that this indicates bad faith use and registration under Policy ¶ 4(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”).
Respondent likely receives revenue from the misdirected Internet users searching for Complainant’s legitimate business who click on Respondent’s pay-per-click links featured on the resolving website. Prior panels have concluded that it is bad faith to use a confusingly similar domain name to resolve to a website displaying links that resolve to pay-per-click third party websites. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). The Panel finds that Respondent’s use of the disputed domain name indicates bad faith use and registration under Policy ¶ 4(b)(iv).
Respondent’s typosquatting is also further evidence of bad faith under Policy ¶ 4(a)(iii). 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 <homedepol.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 17, 2014
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