Home Depot Product Authority, LLC v. Shi Lei
Claim Number: FA2205001997183
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Shi Lei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotssurvey.com>, registered with DNSPod, Inc.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 20, 2022; the Forum received payment on May 20, 2022.
On May 22, 2022, DNSPod, Inc. confirmed by e-mail to the Forum that the <homedepotssurvey.com> domain name is registered with DNSPod, Inc. and that Respondent is the current registrant of the name. DNSPod, Inc. has verified that Respondent is bound by the DNSPod, Inc. 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 May 26, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of June 15, 2022 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@homedepotssurvey.com. Also on May 26, 2022, the Chinese and English language 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 June 23, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
On June 27, 2022, the Panel issued a Procedural Order to Complainant to provide evidence that Complainant has right in the relevant trademarks. On June 28, 2022, Complainant submitted an Additional Submission in response to the Panel’s Procedural Order.
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.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings shall be conducted in English.
A. Complainant
i) Complainant is a home improvement retail company. Complainant claims rights in the HOME DEPOT mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,314,081 registered February 1, 2000). The disputed domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s mark, differing only through the addition of the letter “s” with the phrase “survey” following it and the “.com” generic top-level domain (“gTLD”).
ii) Respondent
lacks rights or legitimate interests in the disputed domain name. Respondent is
not commonly known by the disputed domain name, nor has Complainant authorized
Respondent to use the HOME DEPOT mark in any way.
Additionally, Respondent fails to use the disputed domain name in connection
with a bona fide offering of goods or services or for a legitimate
noncommercial or fair use. Instead, Respondent uses the disputed domain name to
resolve to a webpage that hosts third-party surveys.
iii) Respondent registered and uses the disputed domain name in bad faith.
Respondent uses the disputed domain name to pass off as Complainant. Respondent
had actual knowledge of Complainant’s rights in the HOME DEPOT mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on November 11, 2021.
2. Complainant has established rights in the HOME DEPOT mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,314,081 registered February 1, 2000).
3. The disputed domain name resolves to a site hosting links that direct visitors to third party websites offering products that give the appearance of being associated with Complainant.
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 claims rights in the HOME DEPOT mark through its registration with the USPTO (e.g., Reg. No. 2,314,081 registered February 1, 2000). As Complainant has provided evidence of registration with the USPTO and the assignment documents showing the transfer of the pertinent trademark rights to Complainant in its Additional Submission, the Panel finds Complainant has rights in the HOME DEPOT mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <homedepotssurvey.com> is confusingly similar to Complainant’s HOME DEPOT mark because it wholly incorporates Complainant’s mark and is merely followed by the letter “s” and the term “survey” before also adding the “.com” gTLD. The addition of a generic or descriptive phrase and gTLD generally fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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”).
Complainant argues Respondent
lacks rights or legitimate interest in the disputed domain name as Respondent
is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the HOME
DEPOT mark or register domain names using Complainant’s mark. Where a
response is lacking, WHOIS information may be used to determine whether a
respondent is commonly known by the disputed domain name under Policy ¶
4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a
respondent has no rights or legitimate interests in a disputed domain name
where the complainant asserted it did not authorize the respondent to use the
mark, and the relevant WHOIS information indicated the respondent is not
commonly known by the domain name). Additionally, lack of authorization to use
a complainant’s mark may indicate that the respondent is not commonly known by
the disputed domain name. See Emerson Electric Co. v. golden humble / golden
globals, FA 1787128 (Forum
June 11, 2018) (“lack of evidence in the record to indicate a respondent is
authorized to use [the] complainant’s mark may support a finding that [the]
respondent does not have rights or legitimate interests in the disputed domain
name per Policy ¶ 4(c)(ii)”). The WHOIS information lists the registrant as “Shi
Lei.” Nothing in the records rebuts that Respondent has been given license or
consent to use the HOME DEPOT mark or register a domain name using Complainant’s
mark. Therefore, the Panel finds Respondent is not commonly known by the
disputed domain name nor authorized to use the mark.
Complainant contends that the use of the disputed domain name does not
qualify as a bona fide offering or legitimate noncommercial or fair use.
Complainant asserts that the disputed domain name resolves to a site hosting
links to third party surveys. Since this can generate revenue for the holder of
a domain name, it cannot be noncommercial; further, it does not qualify as a bona
fide offering. See Longo Brothers Fruit Markets Inc. v. John
Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“Respondent has
not used the domain name in connection with a bona fide offering of goods or
services, nor has Respondent made legitimate noncommercial or fair use of the disputed
domain name. Respondent is intentionally attempting to divert Internet users to
its malware scam/survey website via the disputed domain and is therefore not
making legitimate noncommercial, or fair use of the disputed domain pursuant to
Policy ¶ 4(a)(ii).”).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 argues that Respondent registered and uses the disputed domain name in bad faith because Respondent is using the disputed domain name which entirely incorporates and is confusingly similar to the HOME DEPOT mark, to lead Internet users to a website with links that direct visitors to third party websites offering products that give the appearance of being associated with Complainant. Complainant has provided a screenshot of the disputed domain name’s resolving website. The Panel finds that Respondent registered and uses the disputed domain name in bad faith by directing Internet users to a website that appears to be associated with or relevant to Complainant per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant contends that Respondent had actual knowledge of Complainant’s
rights in the HOME DEPOT mark at the time of registering the disputed domain
name. Complainant points to its trademark registrations along with the fact
that Respondent impersonates Complainant through the disputed domain name as
well as the overall fame of Complainant’s mark. The Panel infers, due to the
notoriety and the manner of use of the disputed domain name that Respondent had
actual knowledge of Complainant’s right in the HOME DEPOT mark at the time of
registering the disputed domain name, which supports a finding of bad faith registration
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 <homedepotssurvey.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: June 29, 2022
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