Homer TLC, Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1111001416637
Complainant is Homer TLC, Inc. (“Complainant”), represented by Richard J. Groos of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwhomedepotrebates.com>, registered with Internet.bs Corp.
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 November 21, 2011; the National Arbitration Forum received payment on November 21, 2011.
On November 23, 2011, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <wwwhomedepotrebates.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 November 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 2011 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@wwwhomedepotrebates.com. Also on November 29, 2011, 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 December 30, 2011, 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" 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 makes the following assertions:
1. Respondent’s <wwwhomedepotrebates.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark.
2. Respondent does not have any rights or legitimate interests in the <wwwhomedepotrebates.com> domain name.
3. Respondent registered and used the <wwwhomedepotrebates.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Homer TLC, Inc., began using its HOME DEPOT mark in connection with its home improvement retail store services in 1979. Complainant also uses its HOME DEPOT mark in connection with its credit card services. Complainant owns trademark registrations for its HOME DEPOT mark with the United States Patent and Trademark Office (“USPTO”) and with IP Australia:
Trademark Agency Reg. No. Reg. Date
USPTO 2,314,081 February 1, 2000
IP Australia 921,183 July 22, 2002
IP Australia 921,184 July 22, 2002
Respondent, PPA Media Services / Ryan G Foo, registered the <wwwhomedepotrebates.com> domain name on January 21, 2009. The disputed domain name resolves to a website that host hyperlinks to Complainant’s competitors in the credit card industry.
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. 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.
Policy ¶ 4(a)(i) requires a complainant to demonstrate that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
The Panel chooses to first determine if Complainant own rights in a trademark or service mark that relates to the <wwwhomedepotrebates.com> domain name. Complainant alleges rights in its HOME DEPOT mark and provides evidence of its trademark registrations with the USPTO and IP Australia:
Trademark Agency Reg. No. Reg. Date
USPTO 2,314,081 February 1, 2000
IP Australia 921,183 July 22, 2002
IP Australia 921,184 July 22, 2002
In Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005), and Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005), the panels found that national trademark registrations are sufficient to establish rights in a mark under Policy ¶ 4(a)(i). In Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), and Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), the panels concluded that the complainant is not required to register a mark within the country the respondent resides or operates in order to demonstrate rights under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Complainant’s owns rights in its HOME DEPOT mark for the purposes of Policy ¶ 4(a)(i).
Next, the Panel analyzes whether or not the <wwwhomedepotrebates.com> domain name is identical or confusingly similar to Complainant’s HOME DEPOT mark. Complainant argues that the only differences between the domain name and Complainant’s mark is the additions of the generic term “rebates” and the generic top-level domain (“gTLD”) “.com” and the removal of the period separating the “www” and the domain name. The Panel notes that the disputed domain name also does not contain the space found in Complainant’s mark. In Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), and Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), the panels found that the removal of a space and the addition of a gTLD were irrelevant to a Policy ¶ 4(a)(i) analysis because spaces are impermissible in a domain name and a gTLD is required. In Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002), and Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000), the panels held that the addition of a generic term did not remove a disputed domain name from the realm of confusing similarity. Finally, in Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000), and Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002), the panels concluded that the removal of the period separating the “www” and the domain name did not adequately distinguish the disputed domain name from the complainant’s mark. In accordance with this precedent, the Panel holds that Respondent’s <wwwhomedepotrebates.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark pursuant to Policy ¶ 4(a)(i).
The Panel has determines that both elements of Policy ¶ 4(a)(i) have been satisfied.
Policy ¶ 4(a)(ii) requires a complainant to demonstrate that a respondent lacks rights and legitimate interests in respect of the disputed domain name. In order to demonstrate rights and legitimate interests, Policy ¶ 4(c) provides three elements that a respondent may satisfy: (i) a respondent is making a bona fide offering of goods or services; (ii) a respondent is commonly known by the disputed domain name; or (iii) a respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <wwwhomedepotrebates.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel concluded that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel also held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The first prong of the Panel’s Policy ¶ 4(c) analysis is to determine if Respondent is commonly known by the <wwwhomedepotrebates.com> domain name. Complainant argues that Respondent is not commonly known by the disputed domain name and Respondent did not respond to this case and did not present any evidence that it is commonly known by the domain name. The WHOIS information for the disputed domain name identifies the registrant as “PPA Media Services / Ryan G Foo,” which the Panel notes is not similar to the <wwwhomedepotrebates.com> domain name. Complainant asserts that Respondent is not related, affiliated, connected, endorsed, or associated with Complainant. Complainant claims that Respondent does not have authorization or license to use Complainant’s HOME DEPOT mark. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), and Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panels determined that a respondent is not commonly known by a disputed domain name if the WHOIS information is not similar to the disputed domain name, the complainant did not authorize the respondent to use the complainant’s mark, and the respondent fails to present any evidence in support of a commonly known by finding. Consequently, the Panel holds that Respondent is not commonly known by the <wwwhomedepotrebates.com> domain name pursuant to Policy ¶ 4(c)(ii).
The second prong of the Panel’s Policy ¶ 4(c) analysis is whether or not Respondent makes a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <wwwhomedepotrebates.com> domain name. Complainant contends that Respondent uses the disputed domain name to host hyperlinks resolving to websites of Complainant’s competitors in the credit card industry. Complainant presents a screen shot of the resolving website that supports this contention. In Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), and ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), the panels found that the respondent did not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name when the respondent hosted competing hyperlinks. Thus, the Panel determines that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <wwwhomedepotrebates.com> domain name.
As the Panel concludes that Respondent failed to meet any of the Policy ¶ 4(c) elements, the Panel holds that Complainant has satisfied Policy ¶ 4(a)(ii).
Policy ¶ 4(a)(iii) requires a complainant to demonstrate that a respondent registered and uses a disputed domain name in bad faith. Policy ¶ 4(b) establishes four different avenues for a complainant to demonstrate bad faith registration and use: (i) the respondent registered the domain name for the purpose of selling the disputed domain name for more than the respondent’s out-of-pocket costs; (ii) the respondent registered and uses the disputed domain name as a part of a pattern to prevent the complainant from reflecting its mark in a corresponding domain name; (iii) the respondent registered and uses the disputed domain name for the purpose of disrupting the complainant’s business; or (iv) the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website.
As Complainant presents no arguments or evidence under Policy ¶¶ 4(b)(i) and (ii), the Panel chooses to bypass its bad faith registration and use analysis under these paragraphs.
Policy ¶ 4(b)(iii) requires the Panel to analyze if Respondent’s registration and use disrupts the business of Complainant. Complainant contends that Respondent registered and uses the <wwwhomedepotrebates.com> domain name for the purpose of hosting hyperlinks that resolve to Complainant’s competitors in the credit card industry. In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), and Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), the panels found that a respondent’s hosting of competing hyperlinks disrupts a complainant’s business and is evidence of bad faith registration and use. Based on this precedent, the Panel finds that Respondent registered and uses the <wwwhomedepotrebates.com> domain name in bad faith for the purposes of Policy ¶ 4(b)(iii).
Policy ¶ 4(b)(iv) instructs the Panel to decide whether or not Respondent is attempting to commercially gain by creating confusion as to Complainant’s affiliation with the disputed domain name and resolving website. Complainant asserts that Respondent commercially benefits from the competing hyperlinks by receiving a click-through fee each time an Internet user clicks on one of the hyperlinks. The Panel found that Respondent’s <wwwhomedepotrebates.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), and TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003), the panels held that a respondent’s registration and use of a confusingly similar domain name to host competing hyperlinks that the respondent receives click-through fees for was in bad faith. Thus, the Panel holds that Respondent registered and uses the <wwwhomedepotrebates.com> domain name in bad faith under Policy ¶ 4(b)(iv).
While not a specific provision of Policy ¶ 4(b), Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the HOME DEPOT mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, in Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006), and Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006), the panels determined that a panel may nonetheless find that a respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if the respondent is found to have had actual notice of the complainant’s trademark rights. The Panel agrees with this precedent and determines that Respondent had actual notice of Complainant’s rights in the HOME DEPOT mark and registered and uses the <wwwhomedepotrebates.com> domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel determines that Complainant has sufficiently demonstrated Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwhomedepotrebates.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 13, 2012
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