Homer TLC, Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1606001677982
Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bomedepot.com>, registered with TLD Registrar Solutions Ltd.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 3, 2016; the Forum received payment on June 3, 2016.
On June 8, 2016, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <bomedepot.com> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions 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 June 13, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2016 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@bomedepot.com. Also on June 13, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 8, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 uses its HOME DEPOT mark in connection with retail home improvement supplies and building supplies. Complainant has established rights in its HOME DEPOT mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,314,081, registered February 1, 2000). Respondent’s <bomedepot.com> domain is confusingly similar to Complainant’s HOME DEPOT mark. Respondent’s domain differs from Complainant’s mark through Respondent’s replacing the letter “h” with “b,” and the affixation of the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain. Respondent is not, and has not been, commonly known by the disputed domain name based on WHOIS information. Additionally, Respondent is neither affiliated with Complainant nor authorized by Complainant to use the HOME DEPOT mark in any manner. Respondent’s use of a confusingly similar domain to redirect Internet users to Complainant’s own website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and is using the <bomedepot.com> domain name in bad faith. Respondent has offered the disputed domain name for sale. Respondent’s use of the confusingly similar domain name to redirect Internauts to Complainant’s own website in violation of Complainant’s affiliate agreement demonstrates bad faith. Respondent’s typosquatting behavior, through its substitution of a “b” for “h” in complainant’s mark, is evidence of bad faith. Respondent had actual knowledge of Complainant’s rights in the HOME DEPOT mark at the time of registration. Finally, Respondent used falsified and/or incomplete WHOIS contact information, which is evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order canceling or transferring a domain name:
(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(f), 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 (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 uses the HOME DEPOT mark in connection with retail home improvement supplies and building supplies. Complainant acquired rights in the HOME DEPOT mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,314,081, registered February 1, 2000). Registration of a mark with the USPTO (or any other similar governmental authority) is sufficient evidence of a complainant’s rights in a mark even though the parties may be from different countries. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”). Complainant does not need to prove it has superior rights to Respondent at this stage of the proceedings, just that Complainant has some rights. Complainant has adequately established its rights in the mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <bomedepot.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark. The disputed domain name differs from Complainant’s mark by replacing the letter “h” with “b,” and the adding the gTLD “.com.” There is no doubt the letter “b” is very close to the letter “h” on a QWERTY keyboard (which is the keyboard most of us use). First of all, a TLD (whether a gTLD, sTLD or ccTLD) must be disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires a TLD. Second, omitting spaces must be disregarded under a Policy ¶4(a)(i) analysis because domain name syntax prohibits spaces. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (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)); see also Belkin Components v. Gallant, FA 97075 (Forum May 29, 2001) (finding the <belken.com> domain name 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”); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Respondent’s domain name is confusingly similar to Complainant’s mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 claims Respondent is not commonly known by the disputed domain name. The domain name was registered using a WHOIS privacy service called “Whois Privacy Corp.” There is no obvious connection between the domain name and registrant’s disclosed name. Complainant claims Respondent is not affiliated with Complainant, and that Complainant has not authorized Respondent to use the HOME DEPOT mark when registering domain names (which appears in the affiliate agreement). Absent some other factual predicate in the record (which is not the case in this Proceeding), a respondent is not commonly known by a disputed domain name based on WHOIS and other information in the record provided by a complainant. See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). This Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent uses the <bomedepot.com> domain to redirect Internet users to Complainant’s own website in violation of Complainant’s affiliate program. Complainant’s <homedepot.com> website resolves from Respondent’s disputed domain name. Such behavior by a respondent does not to constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶4(c)(iii)); see also Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶4(c)(i) or ¶4(c)(iii) . . .”). Respondent’s use of the domain to redirect Internet users to Complainant’s own website in violation of Complainant’s affiliate agreement does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and 4(c)(iii).
Respondent has not acquired any rights by registered the domain name with a privacy service because Respondent has not publicly associated itself in any way with the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has generally offered the <bomedepot.com> domain name for sale, which is bad faith under Policy ¶4(b)(i). Making a general offer to sell a domain is evidence of bad faith registration and use under Policy ¶4(b)(i) (and is what happened in this case). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). Therefore, Respondent’s registration and use of the <bomedepot.com> domain name constitutes bad faith under Policy ¶4(b)(i).
Complainant claims Respondent’s registration of a confusingly similar domain name to redirect Internauts to Complainant’s own website demonstrates bad faith. Registering a confusingly similar domain name to get click-through commissions is evidence of bad faith. See LifeLock v. Sparta Trading S.A., FA1408001577367 (Forum October 14, 2014) (“Respondent is using the disputed domain name to redirect Internet users to Complainant’s website, which is a violation of its affiliate agreement with Complainant. Therefore, Respondent is using the disputed domain name in bad faith under Policy ¶4(a)(iii).”). Using a domain to simply redirect Internet users to Complainant’s own website (especially for a price) constitutes bad faith under Policy ¶4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶4(a)(iii).”). Respondent’s registration and use of the <bomedepot.com> domain name demonstrates bad faith under Policy ¶4(a)(iii).
Complainant claims Respondent had actual knowledge of Complainant's rights in its HOME DEPOT mark at the time the domain was registered. Respondent participated in Complainant's affiliate program before the registration of the disputed domain, which strongly suggests Respondent knew about Complainant’s mark. Respondent used bits and pieces of Complainant’s web site in its HTML programming code. This also strongly suggests Respondent actually knew of Complainant's mark and rights. This Panel has no hesitation finding Respondent had actual knowledge of Complainant's mark and rights. This means Respondent registered the domain in bad faith under Policy ¶4(a)(iii). See Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶4(a)(iii)).
Complainant claims Respondent used falsified and/or incomplete WHOIS information, which is evidence of bad faith. These is no doubt Respondent used a privacy service to register the domain name. Respondent’s use of false and/or incomplete WHOIS information is evidence of bad faith under Policy ¶4(a)(iii). In the commercial contest, this raises a rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption. See Video Direct Distribs. Inc. v. Video Direct, Inc., FA 94724 (Forum June 5, 2000) (finding that the respondent acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name); see also Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith); Dell Inc. v. dell service, Claim Number: FA1606001677667 (7/14/2016); American Thoracic Society v. shaheer khan, Claim Number: FA1606001678239 (7/11/2016) and CircleBack Lending, Inc. v. Andy Tang, Claim Number: FA1603001667870 (4/28/2016). Respondent has engaged in bad faith registration and use pursuant to Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <bomedepot.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, July 14, 2016
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