Homer TLC, Inc. v. Rafael Rodriguez
Claim Number: FA1406001564785
Complainant is Homer TLC, Inc. (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA. Respondent is Rafael Rodriguez (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotsweepstakes.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 16, 2014; the National Arbitration Forum received payment on June 16, 2014.
On June 17, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <homedepotsweepstakes.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 June 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 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@homedepotsweepstakes.com. Also on June 17, 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 July 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant is the owner of the famous HOME DEPOT trademarks.
Complainant 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.
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).
Respondent’s <homedepotsweepstakes.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark. Respondent’s disputed domain name contains Complainant’s entire HOME DEPOT mark with the addition of the term “sweepstakes.” Respondent further adds the generic top-level domain (“gTLD”) “.com” and removes the space in Complainant’s mark.
Respondent has no rights or legitimate interests in the <homedepotsweepstakes.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent has no relationship, endorsement or association with Complainant or Complainant’s marks. There is no information in the WHOIS information to suggest that Respondent is known by the disputed domain name. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s disputed domain name currently does not resolve to an active website. Respondent previously used the disputed domain name to resolve to a website featuring a directory website containing only a search entry field labeled “Search Ads” and providing a list of several sponsored click-through advertisements, which would redirect Internet users to third party websites, some of which competed with Complainant. Respondent collected revenue from the links displayed on the resolving website.
Respondent has registered and is using the <homedepotsweepstakes.com> domain name in bad faith. Respondent registered the disputed domain name to previously direct Internet users to a website displaying links to competitors’ websites offering goods and services of the nature offered by Complainant. Respondent’s prior use of the disputed domain name was intended to attract Internet users through the use of Complainant’s registered mark, and confuse them as to Complainant’s association with the resolving website with the intent to commercially gain from the confusion caused. Respondent’s disputed domain name currently resolves to an inactive website.
Respondent had knowledge of Complainant and Complainant’s rights in the HOME DEPOT mark when Respondent registered the disputed <homedepotsweepstakes.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for HOME DEPOT.
Respondent is not affiliated with Complainant and had not been authorized to use the HOME DEPOT mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in HOME DEPOT.
The at-issue domain name was previously used to address website containing a search entry field labeled “Search Aids” and providing a list of several sponsored click-through advertising links some leading to enterprises competing with Complainant.
Currently, the at-issue domain name does not address a web object.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the HOME DEPOT mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i)”).
Respondent’s <homedepotsweepstakes.com> domain name contains Complainant’s entire HOME DEPOT mark less its space followed by the word “sweepstakes,” with the top-level domain name “.com” appended thereto. Adding generic terms to a Complainant’s mark does not eliminate the at-issue domain name’s confusing similarity to that mark. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark). Likewise, neither the removal of the space from Complainant’s trademark nor the addition of the top level domain name is significant. 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).”). Therefore, the Panel finds that Respondent’s <homedepotsweepstakes.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark under Policy ¶4(a)(i).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “Rafael Rodriguez” as the at-issue domain name’s registrant. Moreover, the record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by the domain name. The Panel thus concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also 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).
Additionally, Respondent’s at-issue domain name currently does not resolve to an active website. Respondent’s failure to associate content with its <homedepotsweepstakes.com> domain name offers nothing that suggests either a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Moreover, Respondent’s previous use of the at-issue domain name for a website featuring a search box entitled “Search Ads” leading to links such as “Home Makeover Sweepstakes,” “Biggest sale of the year,” “Home Depot Official Site,” and “USAA Diamonds & Jewelry” also lends no support for finding rights or interests pursuant to Policy ¶ 4(c)(i) or Policy ¶ 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)).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent has used the at-issue domain name to redirect Internet users to websites that contains links to goods and services that compete with Complainant. Respondent’s registration and use of the confusingly similar domain name for such purpose disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). Additionally, Respondent prominent display of Complainant’s famous orange trade dress and a picture of a Home Depot retail store interior on a website addressed by the domain name were intended to give the false impression that Respondent’s domain name was authorized by Complainant. Therefore, it is clear that Respondent’s plan for the confusingly similar domain name was to use it to mislead Internet users and thereby increase traffic to websites or links in which Respondent’s had a vested interest and might benefit from pay-per-click schemes or otherwise. Respondent’s use of the at-issue domain name in this manner demonstrates that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Finally, it is evident from the notoriety of Complainant’s trademark, Respondent’s suggestive incorporation of “sweepstakes” in the domain name, and the overt use of Complainant’s trade dress on a website addressed by the at-issue domain name, that Respondent was well familiar with Complainant’s trademark at the time it registered <homedepotsweepstakes.com>. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homedepotsweepstakes.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 14, 2014
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