Homer TLC, Inc. v. Online Management
Claim Number: FA1404001556049
Complainant is Homer TLC, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Online Management (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <muyhomedepotaccount.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 25, 2014; the National Arbitration Forum received payment on April 25, 2014.
On April 28, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <muyhomedepotaccount.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. 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 April 29, 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@muyhomedepotaccount.com. Also on April 29, 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 May 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
1. Complainant is the owner of the famous HOME DEPOT trademarks. Complainant contends that it commenced use of the HOME DEPOT trademarks at least as early as 1979 in connection with home improvement retail store services and related goods and services. Complainant has continuously used the HOME DEPOT mark in the United States and internationally, since that date.
2. Complainant owns numerous registrations for its HOME DEPOT marks with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,314,081 registered February 1, 2000)
3. Respondent’s <muyhomedepotaccount.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark.
a. Respondent’s disputed domain name contains Complainant’s entire HOME DEPOT mark with the addition of the misspelling or Spanish translation of the word “my” and the word “account.”
b. Respondent further adds the generic top-level domain (“gTLD”) “.com.”
4. Respondent has no rights or legitimate interests in the <muyhomedepotaccount.com> domain name.
a. Respondent is not commonly known by the disputed domain name.
i. Respondent has no relationship, endorsement or association with Complainant or Complainant’s marks.
ii. There is no information in the WHOIS information to suggest that Respondent is known by the disputed domain name.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
i. Respondent’s disputed domain name resolves to a website offering sponsored, click-through advertisements redirecting Internet users to third party websites, including those that compete with Complainant.
ii. Respondent receives compensation every time one of the links displayed on Respondent’s resolving website is clicked.
5. Respondent registered and is using the <muyhomedepotaccount.com> domain name in bad faith.
a. Respondent has engaged in a pattern of registering other domain names incorporating registered marks of others, which were previously transferred under the UDRP. See Thierry Mugler v. Registration Private, Domains by Proxy, LLC/ Online Mgmt., D2013-2011 (WIPO Jan. 13, 2014); see also F. Hoffmann-La Roche AG v. Online Mgmt, D2013-2028 (WIPO Jan. 17, 2014); see also Clarins v. Online Mgmt./ Registration Private, D2013-1862 (WIPO Dec. 16, 2013); see also Tommy Bahama Group, inc. v. Domains by Proxy, LLC/Online Mgmt., D2013-1631 (WIPO Nov. 18, 2013).
b. Respondent uses Complainant’s trademark in the disputed domain name and on its website to direct consumers to commercial websites offering goods and services in direct competition with Complainant.
c. Respondent uses the disputed domain name to attract Internet users to its resolving website in order to cause confusion as to Complainant’s association with the disputed domain name and financially gain from the displayed links.
d. Respondent had knowledge of complainant and Complainant’s marks when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant asserts that it is the owner of the famous HOME DEPOT trademarks. Complainant contends that it commenced use of the HOME DEPOT trademarks at least as early as 1979 in connection with home improvement retail store services and related goods and services. Complainant states that it has continuously used the HOME DEPOT mark in the United States and internationally, since that date. Complainant asserts that it owns numerous registrations for its HOME DEPOT marks with the USPTO (Reg. No. 2,314,081 registered February 1, 2000). Panels have found that, regardless of the location of the parties, the registration of a mark with a federal trademark authority is evidence of having rights in that mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the HOME DEPOT mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <muyhomedepotaccount.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark. Complainant argues that Respondent’s <muyhomedepotaccount.com> domain name contains complainant’s entire HOME DEPOT mark with the addition of the word “muy” and the word “account.” Complainant states that Respondent further adds the gTLD “.com.” Panels have held that the addition of terms which describe the business offerings of the complainant increases, rather than minimizes confusing similarity. See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)). The Panel notes that adding a gTLD and removing a space in a mark is irrelevant to a Policy ¶ 4(a)(i) analysis, according to previous panels. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”); 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 terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel concludes that Respondent’s <muyhomedepotaccount.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 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 asserts that Respondent has no rights or legitimate interests in the <muyhomedepotaccount.com> domain name. Complainant elaborates, claiming Respondent is not commonly known by the disputed domain name and Respondent has no relationship, endorsement or association with Complainant or Complainant’s marks. Complainant argues that there is no information in the WHOIS information to suggest that Respondent is known by the disputed domain name. The Panel notes that the WHOIS information for Respondent’s <muyhomedepotaccount.com> domain name lists “Online Management” as registrant. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that the respondent was not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. Therefore, the Panel finds here that Respondent is not commonly known by the <muyhomedepotaccount.com> domain name.
Complainant next asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant argues that Respondent’s disputed domain name resolves to a website offering sponsored, click-through advertisements redirecting Internet users to third-party websites, including those that compete with Complainant. Complainant contends that Respondent receives compensation every time one of the links displayed on Respondent’s resolving website is clicked. The Panel notes that some of the links include, “Laminate Flooring Sale,” “Air Conditioner Problems?” “Home Depot,” “Conditioner Repair,” and “Store Locator.” Panels have found that using a confusingly similar domain name to display links in competition with the complainant’s services is not a use which falls within the protective realm of Policy ¶¶ 4(c)(i) and 4(c)(iii). See 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’s use of the <muyhomedepotaccount.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
Complainant has proven this element.
Complainant contends that Respondent registered and is using the <muyhomedepotaccount.com> domain name in bad faith. Complainant claims that Respondent has engaged in a pattern of registering other domain names incorporating registered marks of others, which were previously transferred under the UDRP. See Thierry Mugler v. Registration Private, Domains by Proxy, LLC/ Online Mgmt., D2013-2011 (WIPO Jan. 13, 2014); F. Hoffmann-La Roche AG v. Online Mgmt, D2013-2028 (WIPO Jan. 17, 2014); Clarins v. Online Mgmt./ Registration Private, D2013-1862 (WIPO Dec. 16, 2013); Tommy Bahama Group, inc. v. Domains by Proxy, LLC/Online Mgmt., D2013-1631 (WIPO Nov. 18, 2013). The Panel notes that multiple panels have previously found bad faith use and registration where a respondent was subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing trademarks of other complainants. 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). The Panel agrees with this assessment and concludes that Respondent registered and is using the <muyhomedepotaccount.com> domain name in bad faith under Policy ¶ 4(a)(ii).
Complainant next contends that Respondent uses Complainant’s trademark in the disputed domain name and on its website to direct consumers to commercial websites offering goods and services in direct competition with Complainant. Complainant states that this use results in a disruption of Complainant’s business. The Panel notes that in Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), the panel found bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors. Therefore, the Panel finds that Respondent’s registration and use of the <muyhomedepotaccount.com> domain name is disruptive to Complainant’s business pursuant to Policy ¶ 4(b)(iii).
Complainant alleges that Respondent uses the disputed domain name to attract Internet users to its resolving website to cause confusion as to Complainant’s association with the disputed domain name and financially gain from the displayed links. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), the panel found bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes. The Panel finds that the <muyhomedepotaccount.com> domain name was registered and is used in bad faith under Policy ¶ 4(b)(iv).
Lastly, Complainant argues that Respondent had knowledge of Complainant and Complainant’s marks when it registered the disputed domain name. Complainant again points out that its registration and use for the HOME DEPOT mark predates Respondent’s registration for the disputed domain name. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel finds conclude that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <muyhomedepotaccount.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: May 23, 2014
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