national arbitration forum

 

DECISION

 

Homer TLC, Inc. v. Above.com Domain Privacy

Claim Number: FA1409001579386

 

PARTIES

Complainant is Homer TLC, Inc. (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA.  Respondent is Above.com Domain Privacy (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <homedepotserviceprovider.com>, registered with ABOVE.COM PTY LTD.

 

PANEL

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.

 

David E. Sorkin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 12, 2014; the National Arbitration Forum received payment on September 12, 2014.

 

On September 16, 2014, ABOVE.COM PTY LTD. confirmed by email to the National Arbitration Forum that the <homedepotserviceprovider.com> domain name is registered with ABOVE.COM PTY LTD. and identified the current registrant of the name as Shu Lin, Zhongshan District, Dalian, China.  ABOVE.COM PTY LTD. has verified that the registrant is bound by the ABOVE.COM PTY LTD. 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 September 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration (including both the public whois data and that provided in the registrar’s verification email) as technical, administrative, and billing contacts, and to postmaster@homedepotserviceprovider.com.  Also on September 16, 2014, the Written Notice of the Complaint, notifying Respondent of the email 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 October 13, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant operates a large chain of retail home improvement stores.  Complainant has used the HOME DEPOT trademark in connection with this business since at least 1979.  HOME DEPOT and related marks are the subjects of numerous trademark registrations and applications in the United States and elsewhere, including U.S. registration number 2,314,081 (HOME DEPOT, registered on the Principal Register in 2000).

 

Complainant contends that the disputed domain name, <homedepotserviceprovider.com>, is confusingly similar to Complainant’s mark, differing only by the addition of the descriptive term “service provider” and the top-level domain.  Complainant further contends that Respondent has no rights or legitimate interests in the domain name.  In support thereof, Complainant states that it has no relationship or affiliation with Respondent; that Respondent has never been known by the domain name or by Complainant’s mark; and that Respondent has used the domain name for a website that offers goods or services similar to and in competition with those offered by Complainant, in a manner designed to confuse and deceive consumers into believing that the site is associated with Complainant.  Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith.  In support thereof, Complainant refers to the website described above, and alleges that Respondent’s conduct demonstrates its knowledge of Complainant’s rights in the HOME DEPOT mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

 

The disputed domain name combines Complainant’s registered trademark with the broad descriptive term “service provider” and the “.com” top-level domain.  These additions do not substantially distinguish the domain name from Complainant’s mark.  See, e.g., Homer TLC, Inc. v. Domain Admin / Abadaba S.A., FA 1563406 (Nat. Arb. Forum July 22, 2014) (finding <homedepotrebate.com> confusingly similar to HOME DEPOT); Dell Inc. v. Itel Computer Solutions c/o Raj Kumar, FA 1494154 (Nat. Arb. Forum June 3, 2013) (finding <dellservicecenters.com> confusingly similar to DELL); Assurant, Inc. v. ICS INC., FA 1470246 (Nat. Arb. Forum Dec. 17, 2012) (finding <assuranthealthproviders.com> confusingly similar to ASSURANT HEALTH).  The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.

 

Rights or Legitimate Interests

 

Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).

 

The disputed domain name incorporates Complainant’s mark without authorization, and apparently its sole use has been for a website that exploits confusion with Complainant’s mark to promote competing goods or services.  Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests.  Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.

 

Registration and Use in Bad Faith

 

Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith.  Under paragraph 4(b)(ii) of the Policy, bad faith may be shown by evidence that the domain name was registered “in order to prevent the owner of the trademark or service mark from reflecting the mark in

a corresponding domain name, provided that [Respondent] ha[s] engaged in

a pattern of such conduct.”  Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor.”  Under paragraph 4(b)(iv), bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”

 

Respondent’s registration of a domain name that combines Complainant’s well-known mark with the broad descriptive term “service provider,” together with the use of the domain name to promote competing goods or services in a manner designed to exploit confusion with Complainant and its mark, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.  See, e.g., Homer TLC, Inc. v. Rafael Rodriguez, FA 1564785 (Nat. Arb. Forum July 14, 2014) (finding bad faith under similar circumstances).[1]  Accordingly, the Panel finds that the disputed domain name was registered and has been used in bad faith.

 

DECISION

Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <homedepotserviceprovider.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

David E. Sorkin, Panelist

Dated:  October 13, 2014