Homer TLC, Inc. v. Bob Pham
Claim Number: FA1404001556046
Complainant is Homer TLC, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Bob Pham (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <2fhomedepot.com>, which is registered with RegisterMatrix.com Corp.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on April 25, 2014; the National Arbitration Forum received payment on April 25, 2014.
On April 28, 2014, RegisterMatrix.com Corp. confirmed by e-mail to the National Arbitration Forum that the <2fhomedepot.com> domain name is registered with RegisterMatrix.com Corp. and that Respondent is the current registrant of the name. RegisterMatrix.com Corp. has verified that Respondent is bound by the RegisterMatrix.com 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 April 28, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 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@2fhomedepot.com. Also on April 28, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addres-ses 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 May 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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
Operating under the HOME DEPOT mark, Complainant is the world’s largest home improvement specialty retailer and the fourth largest retailer in the United States, with annual sales of more than $66 billion.
Complainant holds a registration for the HOME DEPOT mark, on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 2,314,081, registered February 1, 2000).
Respondent registered the disputed <2fhomedepot.com> domain name on November 18, 2013.
The domain name is confusingly similar to Complainant’s HOME DEPOT mark.
Respondent has not been commonly known by the contested domain name, and Complainant has not authorized Respondent to use its HOME DEPOT mark in any way.
The domain name redirects Internet users to a website with click-through adver-tisements for the websites of Complainant’s commercial competitors.
It may be presumed that Respondent receives click-through revenue from the operation of these links.
Respondent does not have any rights to or legitimate interests in the disputed domain name.
Respondent knew of Complainant’s HOME DEPOT mark when registering the domain name.
Respondent both registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the HOME DEPOT service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark auth-ority, the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO adequate to establish rights in a mark pursuant to Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Vietnam). See, for example, Al Ghurair Group LLC v. Ghurair Group, D2004-0532 (WIPO November 4, 2004):
It is thus sufficient that the Complainant establish that, at the time of filing the complaint, it has some rights in a trademark [whether ac-quired by registration or otherwise] anywhere in the world. ([citing:] Advanced Magazine Publishers Inc. v. Computer Dazhong, WIPO Case No. D2003-0668); (Kabushiki Kaisha ASTY and Kabu-shiki Kaisha F.D.C. Products v. Li Hai, WIPO Case No. D2003-0963).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that Respondent’s <2fhomedepot.com> domain name is con-fusingly similar to Complainant’s HOME DEPOT service mark. The domain name incorporates Complainant’s mark in its entirety, with the space between its terms eliminated, while adding the generic elements “2” and “f,” as well as the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See Am. Online, Inc. v. Tullo, FA 150811 (Nat. Arb. Forum Apr. 15, 2003) (finding that the <3daol.com> domain name is confusingly similar to a UDRP complainant’s AOL mark because “…the addition of the prefix ‘3d’ does nothing to ‘distinguish’ Respondent’s domain name from Complainant’s registered trademarks.”).
See also 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 the terms of the mark of another and the addition of a gTLD in creating a domain name do not establish distinctiveness from a UDRP complainant’s mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <2fhomedepot.com> domain name, and that Complainant has not authorized Respondent to use its HOME DEPOT mark in any way. Moreover, the WHOIS record for the domain name identifies the registrant only as “Bob Pham,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so failed to show that it had rights to or legitimate interests in them as provided in Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other evidence in the record, gave no indication that that respondent was commonly known by the domain names, and where a UDRP complainant had not authorized that re-spondent to register a domain name containing its mark).
We next observe that Complainant asserts, without objection from Respondent, that the <2fhomedepot.com> domain name redirects Internet users to a website with click-through advertisements for the websites Complainant’s commercial competitors, and that It may be presumed that Respondent receives revenue from the operation of these links. This employment of the domain name is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that a respond-ent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the business of a UDRP complainant was 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)).
Therefore, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <2fhomedepot.com> domain name, as alleged in the Complaint, disrupts Com-plainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof that Respondent has both registered and is using the domain name in bad faith. See, for exam-ple, Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the use of a contested domain name to attract Inter-net users to a website containing links to the websites of a UDRP complainant’s commercial competitors demonstrated a respondent’s bad faith registration and use under Policy ¶ 4(b)(iii)).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the HOME DEPOT service mark when it registered the disputed <2fhomedepot.com> domain name. This is independent proof of Respondent’s bad faith in the registration of the domain name. See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was "well-aware of” a UDRP complainant's YAHOO! mark at the time of its registration of a disputed domain name).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, GRANTED.
Accordingly, it is Ordered that the <2fhomedepot.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 3, 2014
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