Homer TLC, Inc. v. Pavol Icik / Poste restante
Claim Number: FA1405001561044
Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Pavol Icik / Poste restante (“Respondent”), Slovakia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homederot.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2014; the National Arbitration Forum received payment on May 23, 2014. The Complaint was received in both Slovak and English.
On May 27, 2014, Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com confirmed by e-mail to the National Arbitration Forum that the <homederot.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com 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 July 15, 2014, the Forum served the Slovak language Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of August 4, 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@homederot.com. Also on July 15, 2014, the Slovak language 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 August 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
Respondent’s domain name, <homederot.com>, the domain name at issue, is confusingly similar to Complainant’s HOME DEPOT mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Homer TLC, Inc., owns retail stores that operate out of warehouse-style buildings which sell products such as home appliances, tools, hardware, lumber, building materials, paint, plumbing, flooring, garden supplies, and plants. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HOME DEPOT mark (e.g., Reg. No. 2,314,081, registered February 1, 2000). Respondent’s <homederot.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark. Respondent’s disputed domain name replaces the letter “p” in “depot” with the letter “r” and further eliminates the space in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.”
Respondent has not been commonly known by the disputed domain name. 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. Respondent presumably receives pay-per-click fees from the displayed links.
Respondent registered and is using the <homederot.com> domain name in bad faith. Respondent has listed the disputed domain name for sale and is a recalcitrant, serial cybersquatter, as evidenced by the multiple prior UDRP decisions which have held against Respondent. Respondent’s resolving website displays pay-per-click links that promote products that compete with Complainant. Respondent uses these links to divert potential customers away from Complainant and to third-party websites, thereby disrupting Complainant’s business. The disputed domain name is being used to attract and mislead consumers for Respondent’s commercial profit and display Complainant’s marks spelled correctly on the resolving website. This is evidence of bad faith intent and Respondent’s awareness of Complainant’s mark. Respondent’s registration of the confusingly similar <homederot.com> domain name indicates typosquatting behavior.
The domain name at issue was registered on June 7, 2008.
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.”).
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Slovak language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant owns retail stores that operate out of warehouse-style buildings which sell products such as home appliances, tools, hardware, lumber, building materials, paint, plumbing, flooring, garden supplies, and plants. Complainant is the owner of trademark registrations with the USPTO for the HOME DEPOT mark (e.g., Reg. No. 2,314,081, registered February 1, 2000). Although Respondent resides in Slovakia, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country of Respondent’s residence. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Consequently, Complainant’s USPTO registration of the HOME DEPOT mark shows that it has rights in the mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s <homederot.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark. Respondent’s <homederot.com> domain name replaces the letter “p” in “depot” with the letter “r.” Respondent’s disputed domain name eliminates the space in Complainant’s mark and adds the gTLD “.com.” In Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) the panel found that the <belken.com> domain name was 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 thus finds that Respondent’s omission of spaces and inclusion of a gTLD is irrelevant under Policy ¶ 4(a)(i). See 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).”). Thus, the Panel holds that Respondent’s <homederot.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark.
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known by the disputed domain name and Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant’s HOME DEPOT mark for any reason. The WHOIS information lists “Pavol Icik” as registrant of the disputed domain name. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel found that respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as respondent was not authorized to register domain names featuring complainant’s mark and failed to submit evidence that it is commonly known by the domain name. Accordingly, the Panel finds that Respondent is not commonly known by the <homederot.com> domain name under Policy ¶ 4(c)(ii).
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. Respondent presumably receives pay-per-click fees from the displayed links. For example, Respondent’s resolving website displays links to “Home Depot Official Site,” “Vons Gas Rewards,” “Dry Rot Damage Pros,” and “Angie’s List Local Rating.” Prior panels have concluded that using a confusingly similar domain name to resolve to a website displaying competing links does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this id 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).”). Therefore, Respondent is not using the <homederot.com> 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 under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent registered and is using the <homederot.com> domain name in bad faith under Policy ¶ 4(b)(i). Respondent has listed the disputed domain name for sale, as evidenced by the WHOIS record, listing the <homederot.com> domain name for $4,750 US dollars. Prior panels have frequently concluded that offering a disputed domain name for sale for more than the out-of-pocket cost to a respondent, indicates bad faith under Policy ¶ 4(b)(i). See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). The Panel agrees with prior precedent and finds that Respondent’s offer to sell the disputed domain name for $4,750 indicates bad faith under Policy ¶ 4(b)(i).
It further appears to the Panel that Respondent is a recalcitrant, serial cybersquatter, as evidenced by the multiple prior UDRP decisions held adversely against Respondent. See e.g., Homer TLD, Inc. v. Pavol Icik/ Poste Restante, FA 1556047 (Nat. Arb. Forum June 4, 2014); see also LaFee v. Pavol Icik/Privacy Protect, Case No. D2013-0526 (WIPO May 6, 2013). The panel inTRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) found that previous UDRP decisions held against a respondent demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii). Likewise, this Panel finds that Respondent’s prior defeats in UDRP decisions indicates Respondent’s bad faith intent under Policy ¶ 4(b)(ii).
Additionally, Respondent’s resolving website displays pay-per-click links that promote products that compete with Complainant. Respondent uses these links to divert potential customers away from Complainant and to third-party websites, thereby disrupting Complainant’s business. In United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) the panel observed, “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 that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).” This Panel agrees with that precedent and concludes that Respondent acted in bad faith under Policy ¶ 4(b)(iii).
Moreover, Respondent uses the disputed domain name to attract and mislead consumers for its own commercial profit. On the resolving website, Respondent displays Complainant’s marks spelled correctly which serves as further evidence of bad faith intent and Respondent’s awareness of Complainant’s mark. The Panel finds that Respondent is using the disputed domain name to mislead and divert consumers for commercial benefit and holds that Respondent has registered and is using the <homederot.com> domain name in bad faith under Policy ¶ 4(b)(iv). 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 which 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).”).
Respondent’s registration of the confusingly similar <homederot.com> domain name indicates typosquatting behavior. This is, in and of itself, evidence of bad faith. Respondent removes the letter “p” in “depot” in Complainant’s HOME DEPOT mark and replaces it with the letter “r” in the disputed domain name. Prior panels have frequently found typosquatting where a respondent creates a likelihood of confusion with a complainant’s mark by merely misspelling the complainant’s mark in an attempt to profit from the Internet user mistyping a complainant’s official domain name. See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (holding that the practice of typosquatting “diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).”); see also 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 therefore concludes that Respondent’s typosquatting behavior indicates bad faith use and registration.
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homederot.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 7, 2014
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