Home Depot Product Authority, LLC v. Domain Admin / Whois Privacy Corp.
Claim Number: FA2102001930645
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotmilitary.com>, registered with Internet Domain Service BS Corp.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 2, 2021; the Forum received payment on February 2, 2021.
On February 3, 2021, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <homedepotmilitary.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 February 3, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2021 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@homedepotmilitary.com. Also on February 3, 2021, 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 March 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant, Home Depot Product Authority, LLC, is one of the largest home improvement retailers in the United States. Complainant has rights in the HOME DEPOT marks through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 2,314,081, registered Feb. 1, 2000). See Compl. Ex. B. Respondent’s <homedepotmilitary.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark, only differing by the addition of the generic term “military” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <homedepotmilitary.com> domain name as it is not commonly known by the disputed domain name, and is neither an authorized user or licensee of the HOME DEPOT mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to host a survey which is used to obtain users’ personal information.
Respondent registered and uses the <homedepotmilitary.com> domain name in bad faith. Respondent uses the disputed domain name to pass itself off as Complainant hosting a survey website which disrupts Complainant’s business and attempts to gain Internet users personal information for commercial gain. Additionally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the HOME DEPOT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is one of the largest home improvement retailers in the United States.
2. Complainant has established its trademark rights in the HOME DEPOT marks through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 2,314,081, registered Feb. 1, 2000).
3. Respondent registered the disputed domain name on August 20, 2012.
4. Respondent uses the disputed domain name to host a survey which is used to obtain users’ personal information.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the HOME DEPOT mark through its registration with the USPTO. Registration of a mark with a trademark agency, such as the USPTO, is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. 2,314,081, registered Feb. 1, 2000). See Compl. Ex. B. Thus, the Panel finds Complainant has rights in the HOME DEPOT mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s HOME DEPOT mark. Complainant argues that Respondent’s <homedepotmilitary.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark, differing only by the addition of the generic word “military” along with the “.com” gTLD. Addition of a generic term along with a gTLD does not necessarily negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. 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”).
(a) Respondent has chosen to take Complainant’s HOME DEPOT trademark and to use it in its domain name, adding the generic word “military“ which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on August 20, 2012;
(c) Respondent uses the disputed domain name to host a survey which is used to obtain users’ personal information;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <homedepotmilitary.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the HOME DEPOT mark. When no response is submitted, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Here, the WHOIS information on record shows that the registrant utilized a privacy service when registering the disputed domain name. See Compl. Ex. A. Additionally, there is nothing within the record to dispute Complainant’s contention that it never authorized Respondent to use the HOME DEPOT mark. Thus, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <homedepotmilitary.com> domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use, but rather uses the disputed domain name to host a survey which appears to be offered by Google. Previous Panels have held that using a disputed domain name to host a survey website does not amount to either a bona fide offer of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Homer TLC, Inc. v. Wang, FA 1336037 (Forum Aug. 23, 2010) (holding that, where a disputed domain name purports to offer Internet users a gift card as compensation for filling out surveys, the respondent’s use of the disputed domain name amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant provides a screenshot of the resolving website for the disputed domain name, noting that the page purports to offer visitors the opportunity to obtain gift cards. See Compl. Ex. D. The Panel then finds Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant argues that Respondent attempts to pass itself off as Complainant to conduct a phishing scheme with the <homedepotmilitary.com> domain name. Using a confusingly similar domain name to conduct a phishing scheme displays a lack of rights and legitimate interests in a domain name under Policy ¶ 4(a)(ii). See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Here, Respondent uses a confusingly similar domain name to obtain personal information from Internet users attempting to reach Complainant’s webpage through a fraudulent survey. See Compl. Ex. D. The Panel therefore finds Respondent lacks rights and legitimate interests in the disputed domain under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered and uses the <homedepotmilitary.com> domain name in bad faith as Respondent uses the disputed domain name to pass itself off as Complainant and host a survey website. Passing off in furtherance of fraud displays bad faith disruption of business per Policy ¶ 4(b)(iii) and attraction for commercial gain per Policy ¶ 4(b)(iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Weight Watchers International, Inc. v. Private Registration / WhoisGuardService.com, FA1412001596215 (Forum Jan. 15, 2015) (“This Panel similarly finds that Respondent has acted in Policy ¶ 4(b)(iv) bad faith here based on use of the domain name for surveys.”). Complainant provides a screenshot of the resolving website for the disputed domain name, which shows Respondent’s use of the disputed domain for a survey which purports to offer Internet users gift cards for completion of the survey. See Compl. Ex. D. Complainant argues that this survey is used to collect personal information from users by suggesting affiliation with Complainant. Thus, the Panel finds bad faith under Policy ¶ 4(b)(iii) and/or (iv).
Secondly, Complainant claims that Respondent registered the <homedepotmilitary.com> domain name with actual knowledge of Complainant’s rights in the HOME DEPOT mark. Per Policy ¶ 4(a)(iii), actual knowledge of a Complainant’s trademark rights is sufficient to establish bad faith, and can be demonstrated by the fame of a mark and the use the Respondent makes of the domain name. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that Respondent must have had previous knowledge of Complainant’s HOME DEPOT mark given that it is one of the largest home improvement retailers in the United States and used the popular mark to establish a disputed domain name to obtain Internet users’ personal information. As the Panel agrees that actual knowledge was present, it finds bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the HOME DEPOT mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homedepotmilitary.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 2, 2021
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