Homer TLC, Inc. v. D-Max Limited
Claim Number: FA1303001491787
Complainant is Homer TLC, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is D-Max Limited (“Respondent”), Kentucky, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <homedepow.com>, <homedpepot.com>, <thehomedipot.com>, and <thehomedopot.com>, registered with Fabulous.Com Pty Ltd.
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 A. Einhorn as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 26, 2013; the National Arbitration Forum received payment on March 26, 2013.
On March 27, 2013, Fabulous.Com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <homedepow.com>, <homedpepot.com>, <thehomedipot.com>, and <thehomedopot.com> domain names are registered with Fabulous.Com Pty Ltd and that Respondent is the current registrant of the names. Fabulous.Com Pty Ltd has verified that Respondent is bound by the Fabulous.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 April 2, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2013 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@homedepow.com, postmaster@homedpepot.com, postmaster@thehomedipot.com, and postmaster@thehomedopot.com. Also on April 2, 2013, 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 April 30, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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 names be transferred from Respondent to Complainant.
A. Complainant
i. Respondent has not been commonly known by the disputed domain names.
ii. Respondent is using the disputed domain names to redirect unsuspecting Internet users through a link which forwards to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
i. Respondent has listed some of the disputed domain names for sale.
ii. Respondent is a recalcitrant, serial cyber squatter.
iii. Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant.
iv. Respondent has registered and used the disputed domain names to attract and mislead consumers for its own profit.
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.”).
Complainant, Homer TLC, Inc., dba Home Depot contends that it is a retail store that operates out of warehouse-style buildings selling products such as home appliances, tools, hardware and lumber, building materials, paint, plumbing, flooring, garden supplies, and plants. Complainant argues that it is the owner of trademark registrations with the USPTO for the THE HOME DEPOT mark (e.g., Reg. No. 1,188,191, registered January 26, 1982) and for the HOME DEPOT mark (Reg. No. 2,314,081, registered February 1, 2000). The Panel notes that Respondent appears to reside within the United States. Thus, the Panel concludes that Complainant’s registrations with the USPTO sufficiently prove its rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s <homedepow.com>, <homedpepot.com>, <thehomedipot.com>, and <thehomedopot.com> domain names are confusingly similar to Complainant’s THE HOME DEPOT and HOME DEPOT marks because they differ by only a single character from Complainant’s mark. The Panel notes that Respondent’s <homedepow.com>, <thehomedipot.com>, and <thehomedopot.com> domain name substitute a letter in Complainant’s mark. The Panel finds that the substitution of letters in Respondent’s disputed domain names does not distinguish the domain names from Complainant’s mark under Policy ¶ 4(a)(i). The Panel also notes that Respondent adds an extra letter “p” to Complainant’s mark in Respondent’s <homedpepot.com> domain name. The Panel holds that the addition of an extra letter does not differentiate Respondent’s domain name from Complainant’s HOME DEPOT mark under Policy ¶ 4(a)(i). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the addition of the letter “c” to the complainant’s SAFLOK mark does not distinguish the <saflock.com> domain name from the mark under Policy ¶ 4(a)(i)). Consequently, the Panel finds that Respondent’s <homedepow.com>, <homedpepot.com>, <thehomedipot.com>, and <thehomedopot.com> domain names are confusingly similar to Complainant’s THE HOME DEPOT and HOME DEPOT marks pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent has not been commonly known by the disputed domain names. The Panel notes that the WHOIS information identifies “D-Max Limited” as the registrant of the disputed domain name. Complainant argues that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant contends that it has not given Respondent permission to use Complainant’s mark in a domain name. The Panel notes that Respondent does not provide additional evidence that it is commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant contends that Respondent is using the disputed domain names to redirect unsuspecting Internet users through a link which forwards to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel notes that Respondent’s disputed domain names list hyperlinks such as “Home Depot,” “Kitchen Accessories,” “General Electric Gas Furnace,” and others. Complainant asserts that Respondent presumably receives pay-per-click fees from these linked websites. Accordingly, the Panel finds that Respondent’s use of the disputed domain names to feature links, including competing links, is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Thus, Complainant has also satisfied policy ¶ 4(a)(ii).
Complainant claims that Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant. Complainant argues that Respondent’s efforts divert consumers and disrupt Complainant’s business. The Panel determines that Respondent’s use of the disputed domain names to feature links, including competing links, disrupts Complainant’s business under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant asserts that Respondent has registered and used the disputed domain names to attract and mislead consumers for its own profit. Complainant argues that Respondent likely receives revenue for each misdirected Internet user. The Panel holds that Respondent’s use of the domain names to provide links, including competing links, attracts Internet users for Respondent’s own commercial gain, showing bad faith use and registration of the domain names pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant asserts that Respondent is a recalcitrant, serial cyber squatter. Complainant argues that searches through the NAF UDRP decision database reveal that Respondent has engaged in an ongoing pattern of such behavior. LinkedIn Corporation v. D-Max Limited, FA 1413956 (Nat. Arb. Forum Dec. 10, 2011); U.S. Auto Parts Network, Inc. v. D-Max Limited, FA 1433959 (Nat. Arb. Forum May 2, 2012); Vanguard Trademark Holdings USA LLC v. D-Max Limited, FA 1466780 (Nat. Arb. Forum Nov. 22, 2012). The Panel finds that Respondent’s prior UDRP proceedings resulting in findings of bad faith and transfer evidence bad faith use and registration under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Thus, Complainant has also satisfied 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 <homedepow.com>, <homedpepot.com>, <thehomedipot.com>, and <thehomedopot.com> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: May 14, 2013
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