Homer TLC, Inc. v. Montauk Asset
Management
Claim
Number: FA0504000467966
Complainant is Homer TLC, Inc. (“Complainant”), represented
by Carrie L. Johnson, of Fulbright and Jaworski L.L.P., 2100 IDS Center, 80 South Eighth Street, Minneapolis, MN 55402. Respondent is Montauk Asset Management (“Respondent”), 168 East Main Street, East
Islip, NY 11730-2633.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <1800homedepot.com>, registered with Go
Daddy Software, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
26, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 28, 2005.
On
April 27, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <1800homedepot.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy Software, Inc. has verified that Respondent is
bound by the Go Daddy Software, Inc. registration agreement and has thereby
agreed to resolve domain name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
May 2, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 23, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@1800homedepot.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 27, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Honorable Paul
A. Dorf (Ret.) 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." 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:
1. Respondent’s <1800homedepot.com>
domain name is confusingly similar to Complainant’s HOME DEPOT and THE HOME
DEPOT marks.
2. Respondent does not have any rights or
legitimate interests in the <1800homedepot.com> domain name.
3. Respondent registered and used the <1800homedepot.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Homer TLC, Inc., is the world's largest home improvement retailer and second
largest retailer in the United States.
Complainant operates over 1,800 retail stores in the United States,
Canada and Mexico and employs over 325,000 people. In addition, Complainant has worldwide sales in the tens of
billions of U.S. dollars each year.
Complainant,
through its predecessor in interest and licensee, commenced use of its HOME
DEPOT and THE HOME DEPOT marks in connection with its products and services
since at least as early as 1979.
Complainant has registered the HOME DEPOT mark (Reg. No. 2,314,081
issued February 1, 2000) and THE HOME DEPOT mark (Reg. Nos. 1,431,636 issued
March 10, 1987; 1,188,191 issued January 26, 1982; 1,152,625 issued April 28,
1981; 2,422,760 issued January 23, 2001; 2,482,264 issued February 13, 2001;
2,492,817 issued September 25, 2001; and 2,852,232 issued March 23, 2004) with
the United States Patent and Trademark Office.
Complainant’s
main website is operated at the <homedepot.com> domain name.
Respondent
registered the <1800homedepot.com> domain name on August 30,
1999. During a telephone call between
Complainant and Respondent, Respondent admitted that he registered the disputed
domain name to use it in connection with a home improvement business. In addition, Respondent attempted to sell
the disputed domain name registration to Complainant for as much as $150,000
U.S. dollars. Complainant does not
explicitly state how the domain name is being utilized.
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."
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.
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.
Complainant has
established rights in the HOME DEPOT and THE HOME DEPOT marks with the United
States Patent and Trademark Office and through its continued use of the marks
in commerce over the last twenty-six years.
See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption
that they are inherently distinctive and have acquired secondary meaning.”); see
also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions
have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive and that a respondent has the burden of refuting
this assumption).
Respondent’s
<1800homedepot.com> domain name is confusingly similar to
Complainant’s HOME DEPOT and THE HOME DEPOT marks because the domain name
simply adds the generic or descriptive prefix “1800.” The adding of numbers is not sufficient to distinguish
Respondent’s domain name from Complainant’s marks pursuant to Policy ¶
4(a)(i). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that adding the suffixes “502” and “520” to the ICQ
trademark does little to reduce the potential for confusion); see also Gorstew
Ltd. v. Berkshire Trust, FA 95430 (Nat. Arb. Forum Oct. 20,
2000) (finding that the <1800beaches.com> is confusingly similar to
Complainant’s BEACHES mark); see also Omnitel Pronto Italia
S.p.A. v. Bella,
D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested
<omnitel2000.com> domain name is confusingly similar to the OMNITEL
trademark).
Thus, the Panel
finds that Complainant satisfied Policy ¶ 4(a)(i).
Respondent
failed to contest Complainant’s assertions that Respondent lacks rights and
legitimate interests in the disputed domain name. Because Complainant’s evidence and arguments are unopposed, the
Panel is permitted to accept all reasonable inferences made in the Complaint as
true. See 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.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that the complainant’s
allegations are true unless clearly contradicted by the evidence).
Additionally,
Complainant has submitted a prima facie case to the Panel, thereby
shifting the burden to Respondent.
Respondent’s failure to fulfill its burden means that Respondent has
failed to invoke any circumstances that could demonstrate rights or legitimate
interests in the domain names. See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once the complainant asserts that the respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to the
respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent failed to invoke any circumstance which could demonstrate any rights
or legitimate interests in the domain name); see also G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”).
In the WHOIS
contact information, Respondent lists its name and administrative contact as
“Montauk Asset Management.” However,
since Respondent failed to respond to the Complaint, there has not been any
affirmative evidence provided to the Panel showing that Respondent was ever
commonly known by the disputed domain name.
Moreover, Complainant’s first use of the HOME DEPOT and THE HOME DEPOT
marks in commerce and is registration of the marks predates Respondent’s
registration of the domain name. Thus,
the Panel concludes that Respondent has not been commonly known by the domain
name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (finding that “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” is one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also RMO, Inc. v.
Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a
showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail”); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where a respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name).
Respondent
offered to sell the <1800homedepot.com> domain name registration
to Complainant for an amount in excess of its out-of-pocket expenses. Such use is not a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii).
Thus, the Panel finds that Respondent lacks rights and legitimate
interests in the domain name under Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684
(Nat. Arb. Forum Mar. 4, 2003) (“The respondent’s lack of rights and legitimate interests in the domain
name is further evidenced by the respondent’s attempt to sell its domain name
registration to Complainant, the rightful holder of the RED CROSS mark.”); see
also Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May
27, 2003) (holding that under the circumstances, a respondent’s apparent
willingness to dispose of its rights in the disputed domain name
suggested that it lacked rights or legitimate interests in the domain name); see
also Cruzeiro Licenciamentos Ltda v.
Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate
interests do not exist when one holds a domain name primarily for the purpose
of marketing it to the owner of a corresponding trademark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
offered to sell the <1800homedepot.com> domain name registration
to Complainant for $150,000. The Panel
finds that, because Respondent has purportedly not used the domain name for any
purpose, Respondent registered the domain name primarily for the purpose of
selling the domain name registration to Complainant for more than its
out-of-pocket costs directly related to the domain name. Thus, Respondent registered and used the
domain in bad faith under Policy ¶ 4(b)(i).
See Grundfos A/S v. Lokale,
D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name
in any context other than to offer it for sale to the complainant amounts to
registration and use of the domain name in bad faith); see also Little Six, Inc v. Domain For Sale, FA
96967 (Nat. Arb. Forum Apr. 30, 2001) (finding a respondent’s offer to sell the
domain name at issue to the complainant was evidence of bad faith); see also
Matmut v. Tweed, D2000-1183 (WIPO
Nov. 27, 2000) (finding bad faith under Policy paragraph 4(b)(i) where the
respondent stated in communication with the complainant, “if you are interested
in buying this domain name, we would be ready to sell it for $10,000”).
Furthermore,
Respondent registered the <1800homedepot.com> domain name with
actual or constructive knowledge of Complainant’s rights in the HOME DEPOT and
THE HOME DEPOT marks due to Complainant’s registration of the marks with the
United States Patent and Trademark Office.
Moreover, the Panel infers that Respondent registered the disputed
domain name with actual knowledge of Complainant’s rights in the marks due to
Respondent’s admission that it chose the domain name to use it in connection
with a home improvement business, which is Complainant’s business. Thus, the Panel finds that Respondent
registered and used the domain name in bad faith pursuant to Policy ¶
4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”); see also Ty Inc. v. Parvin,
D2000-0688 (WIPO Nov. 9, 2000) (finding that the respondent’s registration and
use of an identical and/or confusingly similar domain name was in bad faith
where the complainant’s BEANIE BABIES mark was famous and the respondent should
have been aware of it).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <1800homedepot.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
June 10, 2005
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