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Generic Top Level Domain Name (gTLD) Decisions |
Homer TLC Inc. v. Renown
Claim Number: FA0204000112457
PARTIES
Complainant is Homer TLC Inc., Claymont, DE, USA
(“Complainant”) represented by Steven M
Levy, of Homer TLC Inc. Respondent is Renown, Colombo, SRI LANKA (“Respondent”) represented by Zak Muscovitch, a Barrister and Solicitor.
The domain name at
issue is <homedepot.biz>,
registered with Registrars Asia Pty Ltd.
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.
Judge Irving H.
Perluss (Retired) is the Panelist.
Complainant has
standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as
it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel
and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 26, 2002; the Forum
received a hard copy of the Complaint on
April 27, 2002.
On May 3, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting
a deadline of May 23, 2002 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent in compliance
with paragraph 2(a) of the Rules for the Start-up
Trademark Opposition Policy (the “STOP Rules”).
An incomplete
Response was received on June 11, 2002.
The complete Response was received and determined to be complete on June
18, 2002.
Complainant’s
additional submission was received timely on June 11, 2002. Respondent’s additional submission was
received late on June 18, 2002. The
Panel, nevertheless, will consider the additional submissions as it is the
Panelist’s practice to rule on the merits absent prejudice
to the opposing
party.
On July 9, 2002, pursuant to STOP Rule 6(b), the Forum appointed Judge
Irving H. Perluss (Retired) as
the single Panelist.
Transfer of the
domain name from Respondent to Complainant.
A. Complainant
1. Complainant,
Homer TLC, Inc., is a holding company and a wholly owned subsidiary of Home
Depot U.S.A., Inc., which is, in turn, a
subsidiary company of The Home Depot,
Inc.
2. Complainant,
through its predecessors in interest and licensees, commenced use of the marks
HOME DEPOT and THE HOME DEPOT (hereinafter
the “Home Depot Marks”) in
connection with its home improvement products and services at least as early as
1979. In all instances, the words “Home
Depot” are the most distinctive elements of the Home Depot Marks. Since that time, the Home Depot Marks have
been continually used in commerce in a number of countries by Complainant
and/or its predecessors
in interest and licensees. Homer TLC, Inc. is the owner of the Registered Home Depot Marks.
3. Complainant
has prominently used and promoted the Home Depot Marks through extensive
advertising, marketing, and sales of goods and
services related to home
improvement, home décor, home appliances, gardening and landscaping, and building
construction and repair. Complainant’s
worldwide, annual sales under the Home Depot Marks have been in the tens of
billions of U.S. dollars (U.S. $53.55 billion
in fiscal year 2001) and its
advertising expenses to promote the Home Depot Marks have been extensive,
reaching into the hundreds
of U.S.
dollars each year.
4. In
addition to retail locations in the United States, Canada, Mexico, Puerto Rico,
Argentina, and Chile, Complainant has marketed
its products and services
internationally under the Home Depot Marks through its website at
<homedepot.com>, which receives
in excess of 4 million visits each day,
and through its Export Division.
Complainant’s website has been in operation since 1992. Complainant is also the owner of
approximately 120 country-level and other top-level domain names in the form of
<homedepot.[ ]> in approximately
70 different countries.
5. The
disputed domain name <homedepot.biz>
is confusingly similar to the Home Depot Marks in that Respondent has
registered the identical words “Home Depot.”
Given the expected prominence of the dot-biz domain space, there will
undoubtedly be a high number of instances of customers typing
<homedepot.biz> into their
Internet browsers expecting to reach Complainant’s website. Under these circumstances, the only
conclusion that can be reached is that the <homedepot.biz>
domain is confusingly similar to Complainant’s Home Depot Marks.
6. Respondent
apparently owns and operates a well-known “football club” (i.e., soccer) in Sri Lanka, Respondent’s country of domicile. The Respondent is engaged in the training of
football players and the participation in football competitions. A search of the trademark registry of Sri
Lanka revealed no trademark registrations or pending applications in the name
of Respondent
which include the words “Home Depot.” Complainant itself owns two trademark registrations in Sri Lanka
for its “Home Depot” marks.
Furthermore, an inspection of Respondent’s business and premises
conducted in-person by Complainant’s investigator on April 23, 2002,
revealed
that no signs or other indicia exist at those premises which include the words
“Home Depot.”
7. Prior
to its registration of the disputed domain name, Respondent apparently did not
make any use of the name “Home Depot” and Respondent
is not currently using
such name or is commonly known by any name which includes the words “Home
Depot.
8. Respondent
has not made, and is currently not making, any bona fide offering of goods or
services in connection with the words “Home
Depot” or any other legitimate use
of such name and has obtained no rights in the name.
9. Respondent
has made an illegitimate, bad faith use of the <homedepot.biz> domain name with the intent, for commercial
gain, to misleading divert consumers seeking the Complainant on the
Internet. Considering the worldwide
fame of the Home Depot Marks and the extensive use of the <homedepot.biz> domain name, Respondent knowingly registered
the domain name with prior knowledge of the fame of Complainant’s Home Depot
Marks with
the intent to benefit from Complainant’s reputation and the goodwill
associated with the Home Depot Marks.
10. Respondent,
through its President and administrative contact, Mr. Vincent Peeris, using the
same address as that listed for the <homedepot.biz>
domain, has registered numerous generic domains such as <amateursex.biz>,
>freeporn.biz>, <gay.biz>, and <shoes.biz>. He also owns <nakedlive.com>,
<buff.net>, and other names.
Complainant was unable to locate any content on any websites
incorporating these domains. From this
evidence, it is charged that Respondent’s intention is to stockpile these
domains and later sell them at whatever profit
it can realize.
11. Respondent
has gone beyond generic domains and has also registered the following domains
(in the dot.biz and other top-level domain
spaces) that are identical copies of
well-known trademarks which are the property of the stated owners:
Respondent’s Representative
Domain Lawful
Trademark Owner TM
Registration
<britneyspears.biz> Britney Spears, New York,
New
York, USA US
2302300
<sprint.biz> Sprint Communications Company,
Overland
Park, Kansas US
1104943
<dvds.biz> Indigita Corporation,
Irvine,
California,
USA US
2241767
<freebies.biz> Freebies Publishing, Santa
Barbara,
California,
USA US
1807431
<americanstock
exchange.com> American Stock Exchange LLC US 0876068
12. The evidence thus demonstrates that
Respondent has engaged in a pattern of registering well-known trademarks as
<dot.biz> and
<dot.com> domains for the purpose of holding them
hostage from their rightful owners.
Specifically, Respondent has registered the <homedepot.biz> domain name in order to prevent Complainant
from reflecting its Home Depot Marks in a corresponding <dot.biz> domain
name. As a result, Respondent’s actions
will disrupt the business of Complainant since it will be unable to rightfully
use its Home Depot
Marks in the <dot.biz> space which is becoming very
popular with customers. Further, by using
the <homedepot.biz> domain
name, Respondent intends to attempt to attract and divert, for commercial gain,
Internet users to a website, by creating a
likelihood of confusion with
Complainant’s Home Depot Marks as to the source, sponsorship, affiliation, or
endorsement of the goods
and services to be offered on Respondent’s
website. Finally, Respondent is not
making a legitimate noncommercial or fair use of the <homedepot.biz> domain.
B. Respondent
1. Respondent
concedes that the disputed domain name is substantially similar to the
Complainant’s registered trademarks.
2. Respondent,
Renown SC, is a popular football club in Sri Lanka and in Asia.
3. In
Sri Lanka, football (soccer) clubs are often community-based social organizations
as well. As is becoming more common with football
clubs on the Indian
sub-continent and throughout Asia, Respondent has expanded its community
involvement into fundraising ventures.
The aims of these community ventures, such as cyber cafes, are to generate
income to financially support the club and to improve the
local community.
4. Two
years at the Renown SC Annual General Meeting, the club decided to expand into
Internet ventures in order to assist local Sri
Lankans with becoming more
computer literate and to help raise money for the club.
5. The
club started acquiring domain names as <few.com> and
<registername.com> with the goal being to build businesses around
domain
names that could intuitively attract Internet traffic or alternatively, lend themselves
easily to an on-line business. In
addition, several generic names were registered because these could be resold
at a profit without infringing on any person’s intellectual
property rights.
6. Domains
relating to several market segments for future development were acquired, as
the club was uncertain as to which business model
would receive the most
support from club members and investors.
7. At
its annual general meeting, the club decided to acquire “.biz domains” that
especially related to the real estate market since
the club was about to go
on-line with a real estate site which allows customers in the South Asian
region to buy and sell homes on-line.
8. The
club registered two domains for this purpose:
<homedepot.biz> and
<forsalebyowner.biz>, since both of them were generic domains and would
easily lend themselves to the on-line real estate
business.
9. Respondent
targeted these two domains since both of them were generic domains and ideal
for Respondent’s site. Both names
consist of common English language words and are not fanciful or unique. Both are somewhat descriptive of the nature
of the services offered.
10. The
disputed domain name consists of two common English words, and, accordingly, is
a generic domain name.
11. Where
a domain name is generic, the first person to register it in good faith is
entitled to the domain name.
12. Generic
and descriptive words and phrases will generally not be transferred to a
Complainant even where a Complainant has a registered
trademark.
13. Common
words and descriptive terms are legitimately subject to registration as domain
names on a “first come, first served” basis.
14. Complainant
is not a major company recognized all over the world. It has retail locations only in the United States, Canada,
Mexico, Puerto Rico, Argentina, and Chile.
15. The
Complainant indicated that its website, <homedepot.com>, is targeted at
the international market, but it ships its products
only to clients in the U.S.
and their site is only targeted in the U.S., not the whole world.
16. While
Complainant might be a major company in the United States, and recognized as
such by Americans, it does not operate at all in Sri Lanka or
anywhere in Asia. It is entirely
unknown in Sri Lanka, in particular.
17. Even
though Respondent claims to have a trademark in Sri Lanka, there is no company
in Sri Lanka named “Home Depot” and no one in
South Asia knows about Home Depot
at all.
18. Complainant
is required to prove “bad faith registration” and “bad faith use” of the
disputed domain name. Complainant has
not proven either. As far as “bad faith
use” is concerned, the Respondent has not yet done anything that would
constitute “use” of the domain name.
19. Respondent
has partnered with a web development company to develop the on-line real estate
business.
20. Respondent
never knew about the Complainant when it registered the domain name. The Complainant simply has no worldwide
reputation and its mark is not so fanciful as to prevent another person from
using it in association
with completely different wares, especially in a
country where the Complainant does no business.
21. Respondent
never contacted the Complainant to sell the disputed domain name. It appears that the Complainant is reluctant
to let anyone use a similar domain name, notwithstanding that the extension of
available
TLD’s (i.e. <.biz>,
<.info>) was specifically intended to enable people to register names
that were already taken in other TLD’s
such as <.com> and <.net>.
C. Complainant’s
Additional Submission
1. Respondent
admits that the disputed domain name <homedepot.biz> is identical
to the Complainant’s trademark HOME DEPOT.
2. Respondent
has failed to submit any evidence which proves it owns or is the beneficiary of
a trade or service mark identical to the
domain name <homedepot.biz>.
Consequently, Respondent has failed to prove any right or legitimate
interest in the domain pursuant to STOP Policy ¶4(c)(i).
3. Respondent
has submitted a rather far-fetched and unsupported story about being a Sri
Lankan football (soccer) club that has a side
business of registering domain
names in order “to assist local Sri Lankans with becoming more
computer-literate and to help raise
money for the club.” While Respondent has admitted registering
domain names for the purpose of “building on-line businesses” or alternatively,
selling
the domain names to “raise start-up capital,” Respondent failed to show
that it used or made demonstrable preparations to use the
domain name <homedepot.biz> before receiving
notice of this dispute. Consequently,
Respondent has failed to prove any right or legitimate interest in the domain
pursuant to STOP Policy ¶4(c)(ii).
4. Respondent
has failed to prove that it, or an associated business or organization, has
been commonly known by the domain name.
As a result, Respondent has failed to prove any right or legitimate
interest in the name pursuant to STOP Policy ¶4(c)(iii).
5. In
light of the fact the Respondent cannot demonstrate that it has any legitimate
rights or interests in the domain <homedepot.biz>,
the Respondent must be deemed to have acted in bad faith.
6. Respondent
claims that it “targeted” the domain name <homedepot.biz>
because it is made up of “generic” or “common English words.” While the words “home” and “depot” are in
English language dictionaries, the combination of the two words is not in the
dictionary
and is neither generic nor common.
Complainant’s trademark is distinctive and famous and is a suggestive,
clever brand name which requires the customer to exercise a
degree of
imagination in order to identify Complainant’s services of operating retail
stores selling home-improvement goods and services.
7. Respondent’s
assertion that it “didn’t know about the Complainant at all when it acquired
the <homedepot.biz>” is
difficult to believe. Respondent had
constructive knowledge of Complainant’s trademark rights because Complainant
owns two registrations for its mark in
Sri Lanka. Moreover, Respondent obviously is very familiar with U.S. culture
and businesses as evidenced by its registration of such domain names
as
<britneyspears.biz>, <sprint.biz>, and
<americanstockexchange.com>. In
light of these facts and the fame of the HOME DEPOT mark, there can be little
question but that Respondent knew of Complainant’s
rights and acted in bad
faith pursuant to STOP Policy ¶4(b) when it registered the disputed domain
name.
8. Respondent
has offered no evidence to rebut the presumption of bad faith.
D. Respondent’s Additional Submission
1. The
Complainant alleges that the Respondent “submitted a rather far-fetched and
unsupported story about being a Sri Lankan football
(soccer) club.” Press articles of verification have been
submitted.
2. Complainant
alleges that its use of “depot” is a suggestive, clever brand name. The fact is that “depot” is used in
connection with many businesses from office supplies <officedepot.com> to
puzzles <puzzledepot.com>.
3. Complainant
alleges that the Respondent has not “offered an explanation however improbable
as to why Sri Lankan, Indian or South Asian
business or consumers would want to
or more importantly, be able to use an English language domain name to conduct
this kind of business,
which is local in nature.” The fact is that the national languages of India, Pakistan, and
Sri Lanka are different and it therefore would be difficult to develop
sites
for each market. That is why the
Respondent is using an English language domain name. Furthermore, English is a common language for business in Sri
Lanka and India as a result of its British heritage.
4. In
its supplementary Complaint, the Complainant does not rebut the Respondent’s
allegation that the Complainant only operates in very
few countries thereby precluding
a finding of popularity or fame on a worldwide scale.
5. Complainant
did not rebut the Respondent’s allegation that the Complainant’s website is
only for American customers.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the following
three elements to obtain an order
that a domain name should be transferred:
(1) the domain
name is identical to a trademark or service mark in which the Complainant has
rights; and
(2) the Respondent
has no rights or legitimate interests in respect of the domain name; and
(3) the domain
name has been registered or is being used in bad faith.
Due to the common
authority of the ICANN policy governing both the Uniform Domain Name Dispute
Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel will exercise
its discretion to rely on relevant UDRP precedent where applicable.
STOP
Policy ¶4(a)(i)
Under the STOP
proceedings, a STOP Complaint may only be filed when the domain name in dispute
is identical to a trademark or service
mark for which a Complainant has
registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed
domain name that is identical to a trademark or service mark in which
a
Complainant asserts rights. The
existence of the <.biz> generic top-level domain (gTLD) in the disputed
domain name is not a factor for purposes of determining
that a disputed domain
name is not identical to the mark in which the Complainant asserts rights.
Unlike domain name
disputes brought under the UDRP, STOP claims require that the disputed domain
name be identical to a trademark or
service mark in which the Complainant holds rights. A domain name that is merely confusingly
similar to a mark cannot be transferred through a STOP claim (although the
holder of a non-identical but similar mark could bring a UDRP
complaint when
the domain name eventually clears any other pending STOP complaints). See,
Commonwealth Bank v. Rauch, FA 102729 (Nat. Arb. Forum Feb. 23, 2002)
(finding that the Complainant failed to establish rights in
<cominvest.biz> pursuant
to STOP Policy ¶4(a)(i) because its COMMINVEST
mark was not identical to “cominvest” or <cominvest.biz>).
Here, the evidence
is conclusive that Complainant has had for many years numerous worldwide
registrations for the mark HOME DEPOT
(including two in Sri Lanka since 1995)
which are identical to the disputed domain name. The Panel so finds and concludes.
Under STOP Policy
¶4(c), the Respondent may demonstrate its rights or interests by proving:
i. The
Respondent is the owner or beneficiary of a trade or service mark that is
identical to the domain name;
or
ii. Before
any notice to the Respondent of the dispute, its use of, or demonstrable
preparations to use, the domain name or a name corresponding
to the domain name
in connection with a bona fide offering of goods or services;
or
iii. The
Respondent (as an individual, business, or other organization) has been
commonly known by the domain name, even though it has
acquired no trademark or
service mark rights.
Respondent has
submitted no evidence whatsoever to establish that it falls within ¶4(c)(i) or
¶4(c)(iii), and the Panel finds and
concludes that Respondent has not so
demonstrated.
With respect to
¶4(c)(ii), Respondent contends that it has made demonstrable preparations to
use the subject domain name in connection
with the purchase and sale of homes
in Asia. It has submitted a partnership
agreement executed on April 10, 2002, with a GlenRo Color Lab to develop a real
estate website.
The Panel believes
this is not a sufficient showing of “demonstrable preparations to use” before
notice of the dispute so as to comply
with ¶4(c)(ii), and it is so found and
concluded. See Twentieth Century Fox
Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (finding
the Respondent’s assertion that she registered the domain name
<foxstudios.biz>
in order to get a website address for her planned dance
studios was insufficient to establish that she had rights or interests in
respect to the domain name at issue).
Herein,
however, lies the “rub.”
STOP
Policy ¶4(b) provides four non-exclusive examples of circumstances that, if
proven, will satisfy the bad faith requirement of
STOP Policy ¶4(a)(iii).
To
establish bad faith under the STOP Policy, a Complainant need only prove either registration or use of the domain name in bad faith, not both as the UDRP
requires.
STOP
claims differ from UDRP claims in one very significant and fundamental
way. Unlike the UDRP, under STOP when a
registrant (Respondent) registers a domain name for which an IP claim was
previously filed, the
registrant is notified of the potential for trademark infringement
before being allowed to proceed with the registration. One Panel has recognized that registration
of a domain name despite such notice in appropriate circumstances, could
“almost preclude
any possibility of registration in good faith of a domain
name. . . .” Gene Logic, Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4,
2002) (finding bad faith where Respondent registered the <genelogic.biz>
domain name “with
full knowledge that his intended business use of this domain
name was in direct conflict with a registered trademark of a known competitor
in exactly the same field of business”).
In this
Panel’s view, Complainant has gone much farther and has established
Respondent’s bad faith registration under STOP Policy
¶4(b)(ii).
Under
UDRP ¶4(b)(ii), a Complainant may demonstrate Respondent’s bad faith by showing
that Respondent registered the domain name for
the purpose of preventing
Complainant from registering domain names that reflect its mark(s), provided
Respondent has engaged in
a pattern of such conduct. Under STOP Policy ¶4(b)(ii), the Complainant may similarly prove
bad faith by showing the Respondent registered the domain name for
the purpose
of preventing Complainant from registering domain names reflecting its
mark(s). However, under the STOP
provision, there is no “pattern” of conduct requirement. Thus, Panels have found bad faith under STOP
Policy ¶4(b)(ii) when only one domain name was at issue and no prior history of
trademark
infringement was established.
See Peachtree Software v. Scarponi,
FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy
¶4(b)(ii), noting that it was reasonable to conclude
Respondent registered
<peachtree.biz> with the intent to prevent Complainant from reflecting
its PEACHTREE mark in a corresponding
domain name, given Respondent’s knowledge
of Complainant’s mark and Respondent’s lack of rights or interest in the mark).
But
here, the Panel finds substantive evidence and, thus, concludes that Respondent
has engaged in a pattern of conduct (even though
a “pattern” is not required)
for the purpose of preventing Complainant and others with registered trademarks
from requesting domain
names that reflect their marks.
What
other explanation can there be by virtue of the registration by Respondent of
such domain names utilizing well-known trademarks
as <britneyspears.biz>
and <sprint.biz>?
Respondent
simply is not credible in its claim of naďveté and lack of actual knowledge of
Complainant’s famous and distinctive mark.
Indeed, in any event, because of the registration of Complainant’s mark
in 1995 in Sri Lanka, Respondent is chargeable with constructive
bad faith.
In
Interstellar
Starship Services, LTD. v. Epix, Inc. (9th Cir. 1999) [1999] USCA9 357; 184 F.3d 1107,
1111, it was said:
“However, ISS
became aware of the ‘EPIX’ trademark when it applied for its own registration
of ‘EPIX.’ Adopting a designation with
knowledge of its trademark status permits a presumption of intent to
deceive. See Brookfield, 174 F.3d
15 1059 (citing Official Airline Guides,
Inc. v. Goss[1993] USCA9 3170; , 6 F.3d 1385 (9th Cir. 1993)). In turn, intent to deceive is strong
evidence of a likelihood of confusion. Sleekcraft,
559 F.2d at 354.”
But,
says Respondent, the words “home” and “depot” are generic and it has been held that, where a domain name is
generic, even an offer for sale by Respondent will not establish bad
faith. See John Fairfax Publ’n. Pty Ltd. v. Domain Names 4U, D2000-1403
(WIPO Dec. 13, 2000) (finding legitimate interests and no bad faith
registration where the Respondent is a seller of
generic domain names); see also Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11,
2000) (finding no bad faith where the domain name involves a generic term and
there is no direct
evidence that Respondent registered the domain name with the
intent of capitalizing on Complainant’s trademark interest).
The
difficulty facing Respondent which it cannot overcome is that even though
“home” and “depot” separately are generic, together
they are not. The Panel agrees with Complainant that its trademark
requires a customer to exercise his imagination to identify Complainant’s
stores
selling home-improvement goods and services.
Moreover,
the purported use by Respondent is not a non-trademark use which would be
permissible. Cf. Alpha
Technologies v. Swarthmore Associates L.L.C., FA 112449 (Nat. Arb.
Forum June 19, 2002).
DECISION
Based
on the above findings and conclusions, it is decided that the domain name <homedepot.biz> registered by
Respondent RENOWN shall be, and the same is, hereby transferred to
Complainant Homer TLC, Inc.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated: July 17, 2002
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