Home Depot Product Authority, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2008001910602
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <orderhomedepot.com>, registered with GoDaddy.com, LLC.
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 31, 2020; the Forum received payment on August 31, 2020.
On August 31, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <orderhomedepot.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 1, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 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@orderhomedepot.com. Also on September 1, 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 30, 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 provides home improvement retail services and products. Complainant has rights in the HOME DEPOT trademark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,314,081, registered February 1, 2000). Respondent’s <orderhomedepot.com> domain name is confusingly similar to Complainant’s trademark because it incorporates the entire HOME DEPOT trademark and merely adds the generic term “order” and the “.com” generic top level domain (“gTLD”) to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <orderhomedepot.com> domain name. Respondent is not commonly known by the disputed domain name and could not possibly be commonly known by it since it incorporates a famous trademark. Also, Complainant has not authorized Respondent to use the HOME DEPOT trademark, nor does Respondent have any affiliation or relationship with Complainant. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to redirect Internet users to both third-party websites and at times Complainant’s own website.
Respondent registered and uses the <orderhomedepot.com> domain name in bad faith. Respondent uses the disputed domain to redirect Internet users to third-party websites and sometimes Complainant’s own website presumably for commercial gain. Additionally, Respondent has actual knowledge of Complainant’s rights in the HOME DEPOT trademark based on the fame of the trademark and the fact that the disputed domain redirects to Complainant’s own 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 May 24, 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”).
Complainant asserts rights in the HOME DEPOT trademark based on registration with the USPTO (e.g., Reg. No. 2,314,081, registered February 1, 2000). Registration of a trademark with the USPTO is a valid showing of rights in a trademark. 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). Since Complainant provides evidence of registration of the HOME DEPOT trademark with the USPTO, the Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <orderhomedepot.com> domain name is confusingly similar to Complainant’s trademark because it incorporates the entire HOME DEPOT trademark and merely adds the generic term “order” and the “.com” gTLD. Per Policy ¶ 4(a)(i), the addition of a generic term and a gTLD to a trademark is insufficient to distinguish the disputed domain name from the trademark. See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). Thus, the Panel find that the disputed domain name is confusingly similar to the HOME DEPOT 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 does not have rights or legitimate interests in the <orderhomedepot.com> domain name because Respondent is not commonly known by the disputed domain name and could not possibly be known by the disputed domain name since it contains the famous HOME DEPOT trademark. Additionally, Complainant has not authorized Respondent to use the HOME DEPOT trademark and Respondent is not affiliated with nor has any relationship with the Complainant.
Under Policy ¶ 4(c)(ii), when no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name and when a disputed domain name contains a famous mark it may be assumed a respondent is likely not known by that domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Victoria’s Secret v. Asdak, FA 96542 (Forum Feb. 28, 2001) (“Given the Complainants’ established use of their famous VICTORIA’S SECRET marks it is unlikely that the Respondent is commonly known by either [the <victoriasecretcasino.com> or <victoriasecretcasino.net>] domain name.”). Additionally, lack of authorization to use a trademark or affiliation with a complainant constitutes further showing that a respondent lacks rights in a trademark. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”); see also Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). Here, the WHOIS information lists “Carolina Rodrigues / Fundacion Comercio Electronico” as the registrant and no information suggests that Complainant has authorized Respondent to use the HOME DEPOT trademark. Thus, the Panel find that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the disputed domain to redirect Internet users to third-party websites and sometimes to Complainant’s own website. Use of a disputed domain name to divert Internet users to various third-party websites for a respondent’s own benefit does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (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 Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the resolving webpages for the disputed domain name showing a page that prompts users to install a Chrome extension and Complainant’s own order tracking webpage.
The Complainant also notes that at times the disputed domain name resolves to a pest control website and Complainant contends that Respondent receives some commercial benefit from these various redirects. The Panel agree with Complainant and find that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues that Respondent registered and uses the <orderhomedepot.com> domain name in bad faith because Respondent uses the disputed domain to redirect Internet users to various third-party websites and sometimes to Complainant’s own webpages presumably for commercial gain. Under Policy ¶ 4(b)(iv), use of a disputed domain name to divert Internet users to third-party websites, competing or otherwise, for commercial gain may considered evidence of bad faith registration and use. See Kmart v. Khan, FA 127708 (Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's trademark 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)); see also The Dress Barn, Inc. v. Pham Dinh Nhut, FA1503001611220 (Forum May 15, 2015) (“The Panel agrees that Respondent’s inclusion of various hyperlinks; some of which direct Internet users to competing websites of Complainant, some which direct Internet users to Complainant’s own website, and some of which are unrelated to Complainant’s business; evince bad faith attraction for commercial gain.”).
As noted above, the Complainant provides screenshots of some of the resolving webpages that the disputed domain name redirects to, showing both a page that prompts user to download a browser extension, and Complainant’s own order tracking webpage. Therefore, the Panel find bad faith registration and use under Policy ¶ 4(b)(iv).
Additionally, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the HOME DEPOT trademark based on the fame of the trademark and the fact that the disputed domain name resolves to Complainant’s own website. Per Policy ¶ 4(a)(iii), actual knowledge may be found based on the use made of the trademark and if a trademark is famous and widely known. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The screenshots provided by the Complainant, especially those that resolved to Complainants own website, are clear evidence, and the Panel find bad faith registration and use 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 <orderhomedepot.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: October 7, 2020
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