Homer TLC, Inc. v. WhoisGuard c/o WhoisGuard Protected
Claim Number: FA0601000619597
Complainant is Homer TLC, Inc. (“Complainant”), represented by Carrie L. Johnson, 2100 IDS Center, 80 South Eighth Street, Minneapolis, MN 55402. Respondent is WhoisGuard c/o WhoisGuard Protected (“Respondent”), 8939 S. Sepulveda Blvd, Westchester, CA 90045.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <homedepotrealty.com>, registered with Enom, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 5, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 6, 2006.
On January 6, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <homedepotrealty.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 January 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 31, 2006 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@homedepotrealty.com by e-mail.
On February 6, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
On February 6, 2006, Respondent submitted a late and deficient Response. Although Respondent questions Complainant’s claim to <homedepotrealty.com> and opines that the words “Home” and “Depot” are generic, he indicates a willingness to turn over the domain name for $17.76, his costs. In a subsequent email to the Forum on February 7, 2006, Respondent references a site <homedepotsucks.com> where he says the decision was in favor of the registrant. In an email of February 8, 2006, Respondent indicates that “The Home Depot is more than welcome to the domain name.” On February 10, 2006, Complainant filed a timely Reply in accordance with the Forum’s Supplemental Rule #7. Complainant challenged the timeliness of the Responses and, in the alternative, requested the Panel to consider its Reply that Complainant is involved in real estate activities and that the decision in Homer TLC, Inc. v. Greenpeople, FA 550345 (Nat. Arb. Forum Oct. 25, 2005) is not applicable to this matter. Respondent’s submissions were received after the deadline for response and not in hard copy; therefore, the Responses are not in compliance with ICANN Rule 5(a). The Panel has chosen not to consider these Responses in its Decision.
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."
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <homedepotrealty.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark.
2. Respondent does not have any rights or legitimate interests in the <homedepotrealty.com> domain name.
3. Respondent registered and used the <homedepotrealty.com> domain name in bad faith.
B. Respondent failed to submit a sufficient Response in this proceeding.
Complainant, Homer TLC, Inc., operates over 2000 retail stores under the name “Home Depot” in the United States, Mexico, and Canada. Complainant has used its HOME DEPOT mark in connection with its products and services since 1979, and has registered this mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,314,081; issued February 1, 2000).
The disputed domain name, <homedepotrealty.com>, was registered in the name of Vance Remele on December 23, 2004. At that time, the <homedepotrealty.com> domain name directed Internet users to Mr. Remele’s commercial real estate sales website. When Complainant contacted Mr. Remele on December 20, 2005 regarding his use of the <homedepotrealty.com> domain name, the WHOIS record for this domain name was changed, listing Respondent as the registrant. At that time, Mr. Remele’s realty website was taken down. Internet users who access the <homedepotrealty.com> domain name are now taken to an “under construction” web page with no active content.
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 sufficient 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.”).
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.
Registration of the HOME DEPOT mark with the USPTO is sufficient to establish Complainant’s rights in the mark, pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <homedepotrealty.com> domain name incorporates Complainant’s HOME DEPOT mark without the spaces and with the addition of the word “realty,” a term unrelated to Complainant’s business. The mere removal of spaces from Complainant’s mark does not negate the fact that Respondent’s domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).
Furthermore, even if Complainant has no connection to the real estate business, Respondent’s <homedepotrealty.com> domain name is still confusingly similar to Complainant’s HOME DEPOT mark. The addition of common words to Complainant’s registered mark does not negate the confusingly similar nature of the <homedepotrealty.com> domain name to Complainant’s mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to the complainant’s marks and likely to mislead Internet users into believing that products and services offered by the respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered); see also 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name, the burden shifts to Respondent to prove that it does have rights or legitimate interests. Respondent, however, has failed to respond to the Complaint. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) ( “Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). Complainant has presented a prima facie case. Thus, the Panel will consider whether an evaluation of the evidence demonstrates rights or legitimate interests under Policy ¶ 4(c).
The Panel finds that Respondent's previous use of the
confusingly similar <homedepotrealty.com> domain name, to operate
a commercial home realty website, is 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).
See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert
Internet users seeking Complainant's website to a website of Respondent and for
Respondent's benefit is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).”); see also Seiko Kabushiki Kaisha v. CS into Tech,
FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking
for products relating to the famous SEIKO mark, to a website unrelated to the
mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i),
nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The WHOIS database entry for <homedepotrealty.com> currently contains no information implying that Respondent is commonly known by this name. Additionally, Complainant asserts that Respondent is neither affiliated with Complainant nor commonly known by the <homedepotrealty.com> domain name. Respondent has failed to respond to the Complaint and provide any evidence that it has rights or legitimate interests in the <homedepotrealty.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent previously used the disputed domain name in connection with a commercial home realty website. The Panel finds that Respondent was trading off of the valuable goodwill associated with Complainant's HOME DEPOT mark. Such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
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 <homedepotrealty.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 14, 2006
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