Myhomedepot.com

The timeline behind myhomedepot.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Homer TLC, Inc. v. homegroup c/o Domain Administrator Claim Number: FA0804001178676 PARTIES Complainant is Homer TLC, Inc. (“Complainant”), represented by Chet F. Garner, of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is homegroup c/o Domain Administrator (“Respondent”), New York, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <myhomedepot.com>, registered with Enom, Inc. PANEL 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. Bruce E. Meyerson as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on April 16, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 17, 2008. On April 17, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <myhomedepot.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 April 23, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 13, 2008 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@myhomedepot.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On May 20, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <myhomedepot.com> domain name is confusingly similar to Complainant’s THE HOME DEPOT mark. 2. Respondent does not have any rights or legitimate interests in the <myhomedepot.com> domain name. 3. Respondent registered and used the <myhomedepot.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Homer TLC, Inc., through its licensee Home Depot USA, Inc., operates over 2,200 Home Depot retail stores in the United States, Canada, Mexico, and China. Complainant also offers credit card services to its customers. Complainant owns 34 federal registrations with the United States Patent and Trademark Office (“USPTO”) for trademarks using “home depot,” including Complainant’s registration of the THE HOME DEPOT mark with the USPTO on January 26, 1982 (Reg. No. 1,188,191). Respondent registered the <myhomedepot.com> domain name on October 31, 2004. On the website that resolves from the disputed domain name, there is a listing of headings including, among others, Credit Car, Remodeling, Basement Waterproofing, and Credit Card Rewards, that redirect Internet users to third-party websites. DISCUSSION 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. Identical and/or Confusingly Similar Complainant registered the THE HOME DEPOT mark with the USPTO. In Janus International Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002), the panel held that registration of a mark is prima facie evidence of validity, creating “a rebuttable presumption that the mark is inherently distinctive." The Panel finds that Complainant’s USPTO registration establishes Complainant’s rights to the mark under Policy ¶ 4(a)(i). 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 [or] have acquired secondary meaning.”). Complainant contends that the <myhomedepot.com> domain name is confusingly similar to Complainant’s mark. The disputed domain name wholly incorporates Complainant’s mark, and differs from the mark by the addition of the possessive pronoun “my,” the addition of the generic top-level domain (“gTLD”) “.com,” and the deletion of the article “the.” Previous panels have concluded that the addition of generic words, including possessive pronouns to a mark, does not distinguish the disputed domain name for the purposes of confusing similarity under Policy ¶ 4(a)(i). See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”). Moreover, all registered domain names are required to have a top-level domain; thus Respondent’s addition of the gTLD “.com” is not relevant for distinguishing the mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Finally, deleting a non-essential term of the mark does not distinguish the disputed domain name. See Buffalo News v. Barry, FA 146919 (Nat. Arb. Forum Mar. 31, 2003) (finding the respondent's <bufalonews.com> domain name confusingly similar to Complainant's THE BUFFALO NEWS mark). Therefore, the Panel finds that the <myhomedepot.com> domain name is confusingly similar to Complainant’s THE HOME DEPOT mark pursuant to Policy ¶ 4(a)(i). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant’s initial burden is to show that Respondent does not have rights or legitimate interests in the domain name in dispute. The panel in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) held 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 “concrete evidence that it has rights to or legitimate interests in the domain name at issue.” Here, Complainant has made a prima facie case pursuant to Policy ¶ 4(a)(ii), thereby shifting the burden to Respondent. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). Although Respondent has not responded to the Complaint, thus allowing the Panel to presume that Respondent does not have any rights or legitimate interests in the disputed domain name, the Panel nevertheless will consider all evidence in the record under Policy ¶ 4(c). Complainant asserts that Respondent is not commonly known by the disputed domain name because it has not authorized Respondent to use its THE HOME DEPOT mark and the WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the panel found no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed 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). Complainant also contends that Respondent’s use of the <myhomedepot.com> domain name to redirect Internet users to related and unrelated websites, generating click-through fees for Respondent, fails to demonstrate rights or legitimate interests in the disputed domain name. The Panel finds that Respondent’s use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial use under Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Complainant asserts that Respondent is attempting to attract Internet users to its commercial website, creating a likelihood of confusion with the THE HOME DEPOT mark as to the source, sponsorship, affiliation, or endorsement of the website that resolves from the <myhomedepot.com> domain name. The Panel finds Respondent’s use of the disputed domain name to display links to competing and unrelated third-party websites is evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). See American Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain). By displaying links competing with Complainant’s business, Respondent’s use of the disputed domain name is also capable of disrupting Complainant’s business, which is evidence of registration and use in bad faith under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <myhomedepot.com> domain name be TRANSFERRED from Respondent to Complainant. Bruce E. Meyerson, Panelist Dated: June 2, 2008 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.