WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Homer TLC, Inc., v. Yapimas Yapimarket, Dis Tic. Ve Danismanlik A.S.
Case No. D2001-0254
1. The Parties
1.1. The Complainant is Homer TLC, Inc., 1404 Society Drive, Claymont, DE 19703, USA. Complainant’s authorized representative in this proceeding is Steven M. Levy, President, Homer TLC, Inc., 1404 Society Drive Claymont, DE 19703, USA.
1.2. The Respondent is Yapimas Yapimarket, Dis Ticaret ve Danismanlik A.S., Cemil Arslan Guder sok. No 10 Giris kat Gayrettepe, Istanbul, Istanbul 80290 Turkey; represented by Murat Tepecik, General Manager, Yapimas Yapimarket, Dis Tic ve Danismanlik A.S., Istoc 2. Ada No.150-152, Mahmutbey Istanbul, Turkey.
2. The Domain Name and Registrar
2.1. The Domain Name being the subject of this Complaint is <homedepo.com>.
2.2. The Registrar of the Domain Name is Network Solutions, Inc., (NSI), 505 Huntmar Park Drive, Herndon, Virginia, 20170, USA.
3. Procedural History
3.1. The Complaint in respect of the disputed Domain Name was received by the World Intellectual Property Organization Arbitration and Mediation Center (WIPO Center) by email on February 16, 2001, and in hard copy on February 28, 2001. Complainant states that on February 14, 2001 a copy of the Complaint was sent to Respondent by courier and by fax at the address and fax number of the Registrant; and a copy was sent by courier to the Registrar, NSI.
3.2. On February 26, 2001, verification was received from the Registrar, NSI to the effect that the disputed Domain Name is registered in the name of Yapimas Yapimarket, Dis Tic. ve Danismanlik A.S., Cemil Arslan Guder sok. No 10 Giris kat Gayrettepe, Istanbul, Istanbul 80290 Turkish Republic. The Registrant's administrative and billing contact is recorded as Uzunali, Altug (AU216) firstname.lastname@example.org, Yapimas Yapimarket Dis Tic ve Danismanlik AS, Istoc 2. Ada No.150 Ikitelli, Istanbul, Turkish Republic. The Domain Name is in active status and the Network Solutions Inc., Service Agreement Version 5 is in effect.
3.3. On March 1, 2001, WIPO Center determined (and the Administrative Panel has subsequently accepted) that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (Rules) and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules) all as approved by the Internet Corporation for Assigned Names and Numbers (ICANN).
3.4. The Formal Notification of Complaint and Commencement of Administrative Proceeding (with enclosures) was sent by WIPO Center to Respondent and to Respondent's administrative and billing contact on March 1, 2001, by courier, and (without attachments) by fax and email. The Formal Notification was copied to Complainant, to ICANN and to the Registrar, NSI by email.
3.5. A Response was received from Respondent by email on March 16, 2001, and in hard copy on March 23, 2001. Respondent stated that a copy of the Response was sent to Complainant by courier and email on March 16, 2001.
3.6. On March 27, 2001, WIPO Center received from Complainant by email (marked as copied to Respondent by email) a Motion for leave to file a Reply Brief to address issues raised in the Response filed March 16, 2001, accompanied by the said Reply Brief; annex material was sent by courier for forwarding to the Administrative Panel. WIPO Center replied informing Complainant of the Administrative Panel's sole discretion whether to consider any Supplemental Filing.
3.7. On March 27, 2001, Dr. Clive Trotman, having provided the WIPO Center with a Statement of Acceptance and Declaration of Impartiality, was appointed as a single member Administrative Panel and notification was sent by email to Complainant, Respondent and the Administrative Panel. An electronic copy of the Complaint and Response was emailed to the Administrative Panel on March 27, 2001, and the hardcopy of the Case File was sent by courier.
3.8. On March 27, 2001, the Administrative Panel noted the arrival of email messages evidently sent by direct transmission from Complainant and from Respondent respectively. Neither of these messages nor any attachment to them was opened. WIPO Center was informed of the incidents and it contacted Complainant and Respondent by email reminding them of Paragraph 8 of the Rules, prohibiting unilateral communication with the Administrative Panel.
3.9. On March 29, 2001, Respondent asked to be allowed to make a further Response. The Administrative Panel advised the Parties through WIPO Center that since Complainant had sent a Supplemental Filing through the Center, the Panel was prepared to receive a further Response that addressed solely the matters raised in Complainant's Supplemental Filing and no other matters; and that the Administrative Panel reserved sole discretion whether to consider such Supplemental Filings. WIPO Center received Respondent's Supplemental Filing on March 30, 2001, by email and forwarded it to the Administrative Panel by email and courier.
3.10. The Administrative Panel through WIPO Center ordered the Respondent to provide certified English translations of the documents in Annex 8 of the Response, relating to registration of the Respondent's trademark; and to provide a document described in the Response as: "17.01.2000 The registration was completed with the number of 102469". These documents were forwarded by WIPO Center to the Administrative Panel by fax on May 29, 2001, and the hard copy followed.
3.11. Complainant was invited to make any submission in reply to Respondent's provision of the additional material referred to in 3.10 above and replied declining to do so.
4. Factual Background
4.1. Complainant, based in the USA, is in the business of selling home improvement materials and services, and through its predecessor in interest and licensee has used the trademarks HOME DEPOT and THE HOME DEPOT since at least as early as 1979. These trademarks are owned by Complainant in more than one hundred countries. According to the list running to 43 pages supplied by Complainant, some of these trademarks pre-date the origin of this dispute and some are more recent. Complainant spends hundreds of millions of US dollars annually on advertising and has worldwide sales in the region of tens of billions of dollars annually.
4.2. Complainant has an Internet web site with the Domain Name <homedepot.com> that has been in operation since 1992.
4.3. Respondent, based in Turkey, supplies shelving systems, window decoration systems, window blinds, tile transfers and numerous other goods and services for the home. Respondent is the owner of the Turkish trademark HOMEDEPO which was first applied for on November 27, 1997, and which on or about December 6, 2000, was confirmed by the Turkish Patent Institute. A formal certificate was issued to run for ten years from November 27, 1997.
4.4. Complainant opposed the registration of Respondent's trademark HOMEDEPO in Turkey.
4.5. Respondent uses the disputed Domain Name, <homedepo.com>, which was registered by Respondent on March 26, 1998.
5. Parties’ Contentions
A. Contentions of Complainant
5.1. The contentions of Complainant include (paragraphs 5.2-5.7 below) that:
5.2. The dispute is properly within the scope of the Uniform Dispute Resolution Policy. The registration agreement, pursuant to which the Domain Name being the subject of this Complaint was registered, incorporates the Policy.
5.3. The disputed Domain Name is confusingly similar to the famous trademarks in which Complainant has rights.
5.4. Respondent has no rights or legitimate interest in the disputed Domain Name.
5.5. Respondent’s registration and use of the disputed Domain Name is in bad faith in terms of the Policy. Complainant and Respondent are direct competitors in the Do-It-Yourself (DIY) and home improvement industries. Respondent has made an illegitimate use of the Domain Name with intent to divert customers to its own website through confusion, thereby disrupting Complainant's business. Respondent has intended to trade on the reputation and goodwill of Complainant. Respondent has tried to sell or otherwise transfer the Domain Name to Complainant for a price far in excess of the costs of registration.
5.6. Complainant has since June 1998 formally opposed Respondent's application to register the trademark HOMEDEPO in Turkey but failed to prevent its registration. Respondent contacted Complainant and since about May 5, 1999, the Parties have engaged in protracted negotiations. Respondent asked for a price of $86,250 or more for a business arrangement that included the transfer of the Domain Name and did not accept offers of $500 and $1736 from Complainant for the Domain Name. Complainant considered that Respondent was using the disputed Domain Name as a bargaining device to force Complainant to enter into a business arrangement with Respondent. The Parties have not reached agreement.
5.7. The remedy requested by Complainant is that the disputed Domain Name be transferred to Complainant.
B. Contentions of Respondent
5.8. The contentions of Respondent include (paragraphs 5.9 - 5.15 below) that:
5.9. The trademark HOMEDEPO was registered legitimately in Turkey by Respondent, therefore the corresponding Domain Name <homedepo.com> is held legitimately.
5.10. The disputed Domain Name <homedepo.com> is not confusingly similar to Complainant's Domain Name <homedepot.com> and "depo" is a word in the Turkish language.
5.11. Complainant's trademarks are not famous. Complainant does not have trading stores outside North and South America.
5.12. Respondent is not a DIY stockist as is Complainant and Respondent is not a competitor of Complainant. Respondent supplies shelving systems, window decoration systems, tile transfers and other merchandise and is a marketing and consultancy service provider.
5.13. There are no similarities between Respondent's trademarks and business presentation and those of Complainant; or between Respondent's website which shows its Turkish connotations, and Complainant's website.
5.14. Respondent negotiated with Complainant in good faith and Respondent's accounts of the costs broadly associated with the Domain Name were true.
5.15. Respondent denies the Complaint and requests that the remedy sought be refused.
6. Discussion and Findings
Jurisdiction of Administrative Panel
6.1. The registration Agreement between the Registrar and the Respondent, at Section 8 Domain Name Dispute Policy, states:
"If you reserved or registered a domain name through us, you agree to be bound by our current domain name dispute policy that is incorporated herein and made a part of this Agreement by reference."
Paragraph 4 (a) of the Policy states:
"You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
6.2. Complainant has made the relevant assertions as in 6.1 above. This dispute is properly within the scope of the Domain Name Dispute Policy and the Administrative Panel has jurisdiction to decide the dispute.
6.3. This dispute has been argued strenuously by both Parties. The Parties each contravened Paragraph 8 of the Rules by attempting to send communications directly to the Administrative Panel. The Complainant contravened Paragraph 12 of the Rules by sending an unsolicited Reply Brief to WIPO Center in reply to the formal Response. Supplemental Filings are not provided for except by request of the Administrative Panel in its sole discretion (Rules, 12). In the interests of natural justice the Administrative Panel agreed to receive an equivalent further Response from the Respondent through WIPO Center while reserving sole discretion as to whether to consider or act on Supplemental Filings. The Administrative Panel has noted the contents of the unsolicited Supplementary Filings of both Parties and concludes that they should not have been sent and that they added nothing of substance that could not have been included in the Complaint and Response in chief.
6.4. Respondent contravened Paragraph 11 (b) of the Rules (Language of Proceedings) since key documents were provided in Turkish without an English translation and could not be understood or located. The Administrative Panel required Respondent to remedy the deficiency and offered Complainant the right of reply.
Whether the Domain Name is Identical or Confusingly Similar to a Trademark
6.5. The Domain Name subject to Complaint is <homedepo.com>. Respondent submits a number of arguments to the effect that <homedepo.com> is not confusingly similar to <homedepot.com>, including a dictionary reference showing the word "depo" to be in use in the Turkish language, the history and intentions of Respondent in registering the Domain Name, Respondent's stated good intentions and the use of the disputed Domain Name in a different geographical market from Complainant's.
6.6. This Proceeding must focus on whether the disputed Domain Name is confusingly similar to Complainant's trademarks. Changes to a Domain Name, whether by deletion or insertion, and whether small or large, are generally insufficient to escape a finding of confusing similarity (Blackboard Inc. v. Cupcake Patrol, Case No. D2000-0811; Telia AB v. Alex Ewaldsson and Birgitta Ewaldsson, Case No. D2000-0599; Infospace.com Inc. v. Infospace Technology Co. Ltd., Case No. D2000-0074; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, Case No. D2000-0102; AltaVista Company v. S.M.A., Inc., Case No D2000-0927).
6.7. The word "depot" is commonly pronounced "depo" with the final letter "t" being silent. In that respect the words "depo" and "homedepo" are pronounced identically to "depot" and "homedepot". The words "depo" and "homedepo" spell Complainant's trademarks phonetically as they would be spoken or memorized and the degree of confusing similarity despite a change of spelling is high. The Administrative Panel finds on the facts that "homedepo.com" is confusingly similar to "homedepot.com" and to Complainant's trademarks in terms of Paragraph 4 (a) (i) of the Policy.
Whether Respondent Has Rights or Legitimate Interests in Respect of the Domain Name
6.8. Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, Paragraph 4 (a) (ii)).
6.9. Complainant asserts that it has no connection or affiliation with Respondent, that Respondent has no rights or legitimate interest in the Domain Name <homedepo.com> and that Complainant has not in any way authorized Respondent to use a Domain Name that conflicts with Complainant's trademarks.
6.10. Complainant's trademarks, whilst famous, are not strong marks, being composed of the ordinary words "home" and "depot", with or without the article "the". Where ordinary words are used as trademarks, small differences can be distinguishing (Gateway, Inc. v. Pixelera.com, Inc., Case No. D2000-0109). Complainant has documented the objections it made to the Turkish Patent Institute in opposing the registration of the trademark HOMEDEPO. That dispute has been decided under Turkish administration and the trademark HOMEDEPO is validly held by Respondent in Turkey. Respondent provides documentary evidence in the form of a certificate that it legitimately holds Turkish trademark number 97 017892 HOMEDEPO that was applied for under Turkish law on November 27, 1997 and was granted to run for ten years from that date. Complainant's dissatisfaction with the Turkish decision in respect of the Turkish trademark registration does not concern the present Proceeding.
6.11. Paragraph 4 (c) (i) of the Policy recognizes the following as supporting a Respondent's rights or legitimate interests in a Domain Name: "before any notice to you of the dispute, your 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". Respondent has submitted evidence including high-quality color brochures, advertising materials, stationery and a print of its website to the effect that it has been engaged in a bona fide offering of goods or services. Respondent's business validly uses the trademark HOMEDEPO granted under Turkish law and uses the essentially identical Domain Name <homedepo.com> that is in dispute.
6.12. In summary with respect to Paragraph 4 (a) (ii) of the Policy the Administrative Panel finds that the Respondent validly holds the trademark HOMEDEPO and has rights or legitimate interests in respect of the corresponding Domain Name. Furthermore Respondent is using the Domain Name in connection with a bona fide offering of goods or services. Complainant has failed to prove its case under Paragraph 4 (a) (ii) of the Policy and the Decision on this point is given in favor of the Respondent.
Whether Domain Name Has Been Registered and Is Being Used in Bad Faith
6.13. The question of bad faith (Policy, Paragraph 4 (a) (iii)) is moot, however for completeness the Administrative Panel has considered the Complaint under this limb of the Policy and with respect to the guidelines (which are without limitation) presented in Paragraph 4 (b).
6.14. The evidence is that Respondent adopted the disputed Domain Name for the purpose of trade and not primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant or a competitor for a profit. Respondent's later negotiations over a more comprehensive business arrangement, or refusal to accept certain offers for a Domain Name legitimately held, do not contravene Paragraph 4 (b) (i).
6.15. There is no evidence that Respondent has engaged in a pattern of registering domain names to prevent their legitimate registration in the terms of Paragraph 4 (b) (ii).
6.16. On the balance of evidence the Administrative Panel is not persuaded that the primary intention behind the registration of the disputed Domain Name was the disruption of the Complainant's business within the terms of Paragraph 4 (b) (iii).
6.17. The activities contemplated under Paragraph 4 (b) (iv) of the Policy are that "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location". In the light of the overall Decision inevitable following the finding in 6.12 above the content and use of the disputed Domain Name are now matters outside the scope of this Administrative Proceeding.
6.18. In conclusion, Complainant has failed to satisfy Paragraph 4 (a) (ii) of the Policy and therefore has not succeeded in proving all three elements of Paragraph 4 (a) of the Policy. The Decision is given in favor of the Respondent.
The Decision of the Administrative Panel is that Respondent has rights or legitimate interests in the disputed Domain Name <homedepo.com>; the disputed Domain Name <homedepo.com> shall remain with the Respondent and shall not be transferred to the Complainant.
Clive N. A. Trotman
Dated: June 8, 2001