Homer TLC, Inc. v. BLADIMIR BOYIKO
Claim Number: FA1405001561030
Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is BLADIMIR BOYIKO (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homrdepot.com>, registered with ENOM, INC.
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 May 23, 2014; the National Arbitration Forum received payment on May 23, 2014.
On May 27, 2014, ENOM, INC. confirmed by e-mail message addressed to the National Arbitration Forum that the <homrdepot.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. registra-tion agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Reso-lution Policy (the “Policy”).
On May 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 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@homrdepot.com. Also on May 27, 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 techni-cal, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 24, 2014, pursuant to Complainant's request to have the dispute decid-ed 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
Complainant operates retail stores offering home appliances, tools, hardware, lumber, building materials, paint, plumbing, flooring, garden supplies and plants.
Complainant holds a trademark registration, on file with United States Patent and Trademark Office (“USPTO”), for the HOME DEPOT service mark (Registry No. 2,314,081, registered February 1, 2000).
The earliest date on which Respondent registered the <homrdepot.com> domain name was November 8, 2000.
The domain name is confusingly similar to Complainant’s HOME DEPOT mark.
Respondent has not been commonly known by the disputed domain name.
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Respondent is not sponsored by or affiliated with Complainant in any way.
Complainant has not given Respondent permission to use Complainant's HOME DEPOT mark in a domain name. |
Respondent uses the disputed domain name to redirect unsuspecting Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business.
Respondent’s receives pay-per-click revenues from the operation of the links displayed on the resolving website.
Respondent uses the disputed domain name to attract and mislead consumers.
Respondent has no rights to or legitimate interests with respect to the disputed domain name.
Respondent is serial cyber-squatter.
The domain name is an instance of typo-squatting.
The domain name was registered and is being used 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 will 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 author-ity, the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. For-um Feb. 1, 2005) (concluding that a UDRP complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
This is true without regard to whether Complainant’s rights in its mark arise from its registration in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Russia). See, for example, Ren-aissance Hotel Hldgs, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a UDRP complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction). See also W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (finding that “USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <homrdepot.com> domain name is confusingly similar to Complainant’s HOME DEPOT service mark. The domain name con-tains the mark in its entirety, except for the substitution of the letter “r” for the letter “e”, the deletion of the space between the terms of the mark and the ad-dition of 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 Belkin Com-ponents v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the do-main name <belken.com> confusingly similar to a UDRP complainant's BELKIN mark because the name merely replaced the letter “i” in the mark with an “e”).
See also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007):
Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to 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 <homrdepot.com> do-main name, that Respondent is not sponsored by or affiliated with Complainant in any way, and that Complainant has not given Respondent permission to use Complainant’s HOME DEPOT service mark in a domain name. Moreover, the pertinent WHOIS record identifies the registrant of the disputed domain name only as “BLADIMIR BOYIKO,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLD-TRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel there finding, that a respondent was not commonly known by the domain name <cigaraficionada.com>, and so failed to show that it had rights to or legit-imate interests in that domain name under Policy ¶ 4(c)(ii), based on the relevant WHOIS information and other evidence in the record.
We next observe that Complainant contends, without objection from Respondent, that Respondent uses the <homrdepot.com> domain name to direct unsuspect-ing Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business, and that Respondent pre-sumably receives pay-per-click fees from the operation of these linked websites. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under
Policy ¶4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007):
The disputed domain name, …, currently resolves to a website displaying Complainant’s marks and contains links to Complain-ant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
The evidence shows that Respondent has been a respondent in other UDRP proceedings in which it was found to have registered and used in bad faith domain names derived from the marks of others. See Travelocity.com LP v. Bladimir Boyiko, FA 1446051 (Nat. Arb. Forum June 27, 2012); Univision Com-munications Inc. v. Bladimir Boyiko, FA 1429870 (Nat. Arb. Forum Mar. 22, 2012); Verizon Trademark Services LLC v. Bladimir Boyiko, FA 1382148 (Nat. Arb. Forum May 12, 2011). Under Policy ¶ 4(b)(ii), this stands as proof that Respondent also registered and uses the instant domain name in bad faith. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) the panel there finding that prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations by a respondent. See also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding, under Policy ¶ 4(b)(ii), bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where a respondent had been subject to several UDRP proceedings in which panels ordered the transfer of disputed domain names containing the trademarks of various complainants).
We are also persuaded by the evidence that Respondent’s employment of the <homrdepot.com> domain name as alleged in the Complaint disrupts Complain-ant’s business. Under Policy ¶ 4(b)(iii), this too is proof of Respondent’s bad faith in the registration and use of the domain name. 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).
In addition, we are convinced that Respondent uses the <homrdepot.com> do-main name, which is confusingly similar to Complainant’s HOME DEPOT service mark, to mislead Internet users as to the possibility of Complainant’s affiliation with the domain name for its own profit. Under Policy ¶ 4(b)(iv), this is likewise evidence of Respondent’s bad faith in the registration and use of the domain name. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel there finding that:
Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’
Finally under this head of the Policy, it is plain that the <homrdepot.com> do-main name is an instance of typo-squatting, i.e.: the creation of a domain name by taking advantage of common typing errors made by Internet users in entering into their web browsers the names of enterprises with which they wish to do business. Typo-squatting is independent evidence of bad faith in the registration and use of a domain name. 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).
Therefore, 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 <homrdepot.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 25, 2014
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