Home Depot Product Authority, LLC v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2008001908055
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedpotpro.com>, registered with Media Elite Holdings Limited.
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.
Petter Rindforth, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 11, 2020; the Forum received payment on August 11, 2020.
On August 12, 2020, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <homedpotpro.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 August 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 2, 2020 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@homedpotpro.com. Also on August 13, 2020, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 4, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 name be transferred from Respondent to Complainant.
A. Complainant
The Complainant owns and runs home improvement retail stores throughout the United States and the world. Complainant has rights in the HOME DEPOT trademark through its multiple registrations with the United States Patent and Trademark Office (“USPTO”). (e.g. THE HOME DEPOT Reg. 2,825,232, registered Mar. 23, 2004; HOME DEPOT Reg. 2,314,081, registered Feb. 1, 2000). Respondent’s <homedpotpro.com> domain name is confusingly similar to Complainant’s HOME DEPOT trademark as it incorporates the trademark in its entirety, and only removes one letter from the trademark while adding the generic word “pro” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <homedpotpro.com> domain name, as it is not commonly known by the disputed domain name, is not authorized or licensed to use the HOME DEPOT trademark in the disputed domain name, and uses the disputed domain name to redirect to Complainant’s own official website.
Respondent registered and uses the <homedpotpro.com> domain name in bad faith. Respondent had actual knowledge of Complainant’s rights in the HOME DEPOT trademark when it registered the disputed domain name. Respondent uses the disputed domain name to redirect to Complainant’s official website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the following U.S. trademark registrations:
No. 2,825,232 THE HOME DEPOT (word), registered March 23, 2004 for goods in classes 6, 11 and 16;
No. 4,220,687 THE HOME DEPOT (word), registered October 9, 2012 for services in class 37;
No. 4,300,027 THE HOME DEPOT (word/colour), registered March 12, 2013 for services in classes 35, 37, 42 and 44;
No. 1,297,161 THE HOME DEPOT (design), registered September 18, 1984 for services in class 42;
No. 1,835,705 THE HOME DEPOT (design), registered May 10, 1994 for services in classes 37, 39 and 42;
No. 2,391,201 THE HOME DEPOT (design), registered October 3, 2000 for goods and services in classes 16, 19, 36, 37, 39 and 41;
No. 4,256,235 THE HOME DEPOT (design), registered December 11, 2012 for goods and services in classes 16, 19, 36, 37, 40 and 41; and
No. 2,314,081 HOME DEPOT (word), registered February 1, 2000 for services in class 35.
Complainant is also the owner of several other valid U.S. trademark registrations including the words “THE HOME DEPOT”.
The disputed domain name was registered on October 23, 2019.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant asserts rights to the HOME DEPOT trademark through its multiple registrations with the USPTO. (e.g. THE HOME DEPOT Reg. 2,825, 232, registered Mar. 23, 2004; HOME DEPOT Reg. 2,314,081, registered Feb. 1, 2000). Registration with the USPTO is generally sufficient in establishing rights in a trademark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT trademark). Therefore, the Panel find that Complainant has established rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <homedpotpro.com> domain name is confusingly similar to its HOME DEPOT trademark, as it incorporates a slight misspelling of the trademark, along with the generic word “pro” and the “.com” gTLD. Removing a letter from a trademark, and adding a generic word along with the “.com” gTLD are generally insufficient changes in differentiating a domain name from the trademark it incorporates under Policy ¶ 4(a)(i). See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES trademark because it omitted the letter “e” from the trademark and added the generic top-level domain “.com”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX trademark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel agree with the Complainant’s conclusion that the minor misspelling and word additon makes no signinficant difference. Therefore, the Panel find that the disputed domain name is confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights or legitimate interests in the <homedpotpro.com> domain name, as it is not commonly known by the disputed domain name, and Complainant has not authorized or licensed Respondent to use its HOME DEPOT trademark. Where a response is lacking, WHOIS information listing a privacy service as Respondent may demonstrate that Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). The WHOIS of record in the present case lists Respondent as “Fundacion Privacy Services”, and nothing in the record rebuts Complainant’s assertions that Respondent is not commonly known by the disputed domain name and is not authorized or licensed to use the HOME DEPOT trademark in its domain name. Thus, the Panel find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent lacks rights or legitimate interests in the <homedpotpro.com> domain name because it redirects to Complainant’s official website. Using a disputed domain name to redirect to Complainant’s website generally does not confer rights or legitimate interests under Policy ¶ 4(a)(ii). See Better Existence with HIV v. AAA, FA 1363660 (Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”). Complainant provides a screenshot which allegedly shows the disputed domain name redirects to Complainant’s official website. Based on that, the Panel find that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel note that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant argues that Respondent registered the <homedpotpro.com> domain name in bad faith, as it had actual knowledge of Respondent’s rights in the HOME DEPOT trademark when it registered the disputed domain name. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient to demonstrate bad faith, and may be established by Respondent incorporating Complainant’s registered trademarks, and redirecting the disputed domain name to a website related to Complainant’s products or services, or that use Complainant’s trademarks or logos. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s trademark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the trademark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation). Complainant argues that Respondent must have had actual notice of Complainant’s rights in the HOME DEPOT trademark, as it redirects the disputed domain name’s resolving website to Complainant’s own official website, where the HOME DEPOT trademarks are prominently displayed. The Panel agrees, and find that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the <homedpotpro.com> domain name in bad faith as it uses the disputed domain to redirect to Complainant’s own website. Redirecting a disputed domain name to a complainant’s own website may be a bad faith use under Policy ¶ 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel recall Complainant’s screenshot which allegedly shows the disputed domain name resolving to Complainant’s official website. Therefore, the Panel agrees with the complainant’s conclusion, and find that Respondent registered and uses the disputed domain name in bad faith under 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 <homedpotpro.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: September 11, 2020
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