Homedepotrebates.com

The timeline behind homedepotrebates.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. N.A. c/o Li Gaoxin Claim Number: FA0805001189819 PARTIES Complainant is Homer TLC, Inc. (“Complainant”), represented by Chet F. Garner, of Fulbright & Jaworski, Texas, USA. Respondent is N.A. c/o Li Gaoxin (“Respondent”), China. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <homedepotrebates.com>, registered with Answerable.com (I) Pvt. Ltd. PANEL 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. Louis E. Condon as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on May 8, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 9, 2008. On May 10, 2008, Answerable.com (I) Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <homedepotrebates.com> domain name is registered with Answerable.com (I) Pvt. Ltd. and that Respondent is the current registrant of the name. Answerable.com (I) Pvt. Ltd. has verified that Respondent is bound by the Answerable.com (I) Pvt. Ltd. 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 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 3, 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@homedepotrebates.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On June 9, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <homedepotrebates.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 <homedepotrebates.com> domain name. 3. Respondent registered and used the <homedepotrebates.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Homer TLC, has used the THE HOME DEPOT mark to in relation to its home-improvement retail stores since as early as 1979. Complainant registered the mark with the United States Patent and Trademark Office (“USPTO”) on January 26, 1982 (Reg. No. 1,188,191). Complainant owns at least 34 other USPTO registrations for marks incorporating “HOME DEPOT.” Complainant also owns the <homedepot.com> domain name; the website that resolves from Complainant’s domain name allows Internet users to view and purchase Complainant’s products online. Respondent registered the <homedepotrebates.com> domain name with Answerable.com (I) Pvt. Ltd. on April 15, 2007. The web page that resolves from the disputed domain name displays over thirty different hyperlinks, some of which link Internet users to home improvement related services competing with Complainant’s business. 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 California Cosmetics, Inc. v. IMC Inc., FA 1174491 (Nat. Arb. Forum May 26, 2008), the panel found “that [Complainant’s USPTO] registration sufficiently satisfies the ownership requirement of Policy ¶ 4(a)(i).” Previous panels have also noted that the mark does not have to be registered in the country of Respondent’s operation to be a valid registration under the Policy; indeed, registration of the mark with any governmental trademark authority satisfies the Policy’s trademark requirements. Therefore, the Panel here concludes that the USPTO registration has sufficiently established Complainant’s rights in the mark under Policy ¶ 4(a)(i). See 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). Complainant contends that Respondent has incorporated the main elements of its THE HOME DEPOT mark in the <homedepotrebates.com> domain name. Complainant asserts that the addition of the generic term “rebates” cannot adequately distinguish the disputed domain name from Complainant’s mark because previous panels have repeatedly concluded that adding descriptive terms does not avoid the likelihood of confusion with a complainant’s mark. In Deutsche Telekom AG v. Spiral Matrix, D2005-1145 (WIPO Jan. 2, 2005), the panel noted that addition of generic terms, including rebates, to the T-MOBILE mark did not prevent confusion among Internet users. The Panel here concludes that the addition of the generic term “rebates” does not distinguish the disputed domain name from the mark. The Panel also concludes that the addition of the generic top-level domain (“gTLD”) “.com” is not relevant in its analysis under Policy ¶ 4(a)(i) because all registered domain names are required to have a top-level domain in order to be active domain names. Moreover, Respondent’s exclusion of the article “the” is an insignificant change and not sufficiently distinguishing to create a domain name distinct from Complainant’s THE HOME DEPOT mark. Notably, in Mega Society v. LoSasso, FA 215404 (Nat. Arb. Forum Jan. 30, 2004), the panel found that “the <megasociety.net> and <megasociety.com> domain names were . . . confusingly similar to Complainant's THE MEGA SOCIETY mark” despite the exclusion of the article “the.” Therefore, the Panel finds that the <homedepotrebates.com> domain name is confusingly similar to Complainant’s THE HOME DEPOT mark pursuant to Policy ¶ 4(a)(i). See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests When Complainant makes a prima facie case of its allegations that Respondent lacks all rights and legitimate interests in the <homedepotrebates.com> domain name, the burden shifts to Respondent. In Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), the panel 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.” The Panel concludes that Respondent has made a prima facie case pursuant to Policy ¶ 4(a)(ii), thereby shifting the burden. See 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.”). Respondent has not responded to the Complaint. The panel in Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) found that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence. Although the Panel may presume that Respondent lacks all rights and legitimate interests in the disputed domain name, the Panel will consider all evidence in the record under Policy ¶ 4(c). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The WHOIS information indicates that Respondent is “N.A. c/o Li Gaoxin.” In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel stated “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. Similarly here, the WHOIS information indicates that Respondent is not commonly known by the <homedepotrebates.com> domain name. Moreover, Complainant has not indicated that it licensed or authorized Respondent to use THE HOME DEPOT mark. Based on this evidence, the Panel holds Respondent is not commonly known by the <homedepotrebates.com> domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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). The disputed domain name resolves to a website where links to unrelated and competing websites are displayed. In TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) the panel found that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services. Like in TM Acquisition Corp., Respondent’s use fails to demonstrate rights and legitimate interests. The Panel concludes that Respondent’s use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ (c)(iii). See 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 Respondent is commercially benefiting from the goodwill associated with the THE HOME DEPOT mark by using a domain name that is confusingly similar to the mark to display links to competing products. The Panel infers that Respondent is receiving click-through fees by redirecting Internet users to competitors’ websites. The Panel finds that such use is capable of creating confusion as to Complainant’s source, sponsorship, affiliation, or endorsement of the website that resolves from the disputed domain name. In G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002), the panel found 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. The Panel, therefore, finds that Respondent’s use is evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). See 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 also finds that Respondent’s use is capable of disrupting Complainant’s business, and therefore is evidence of registration and use in bad faith under Policy ¶ 4(b)(iii). See 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); see also 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).”). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED. Accordingly, it is Ordered that the <homedepotrebates.com> domain name be TRANSFERRED from Respondent to Complainant. Louis E. Condon, Panelist Dated: June 18, 2008 Click Here to return to the main Domain Decisions Page. 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Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.