Home Depot Product Authority, LLC v. youtukeji / liwen cui
Claim Number: FA2207002004331
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is youtukeji / liwen cui (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepot-us.com>, registered with NameSilo, 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 July 14, 2022; the Forum received payment on July 14, 2022.
On July 14, 2022, NameSilo, LLC confirmed by e-mail to the Forum that the <homedepot-us.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 July 15, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 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@homedepot-us.com. Also on July 15, 2022, 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 August 10, 2022, 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 uses it’s THE HOME DEPOT trademark in connection with home improvement retail store services. Complainant claims rights in the THE HOME DEPOT trademark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,825,232, registered Mar. 23, 2004). Respondent’s <homedepot-us.com> domain name is identical or confusingly similar to Complainant’s THE HOME DEPOT trademark as it incorporates the trademark in its entirety and adds a hyphen along with the geographic identifier “.us” and the “.com” generic top-level domain (“gTLD”) to form.
Respondent lacks rights or legitimate interests in the <homedepot-us.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed any rights in the THE HOME DEPOT trademark to the Respondent. Respondent does not use the disputed domain name for any bona fide offering of good or services, nor for any legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass off as Complainant and host competing third-party hyperlinks.
Respondent registered and uses the <homedepot-us.com> domain name in bad faith. Respondent uses the confusingly similar nature of the disputed domain name to attract users to a webpage that hosts competing hyperlinks for commercial gain. Respondent’s <homedepot-us.com> domain name is so obviously connected to Complainant’s well-known THE HOME DEPOT trademark that it demonstrates Respondent’s opportunistic bad faith. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the THE HOME DEPOT trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The 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. 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. 2,314,081 HOME DEPOT (word), registered February 1, 2000 for services in class 35; and
No. 1,835,705 THE HOME DEPOT (design), registered May 10, 1994 for services in classes 37, 39 and 42.
The disputed domain name <homedepot-us.com> was registered on March 23, 2022.
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 claims rights in the THE HOME DEPOT mark through its registration with the USPTO (e.g., Reg. No. 2,825,232, registered Mar. 23, 2004). Registration with the USPTO is generally sufficient in demonstrating rights in a trademark under Policy ¶ 4(a)(i). See Synovus Financial Corp. v. Elizabeth Fagin / Wells & Wadw, FA 1601001655021 (Forum Feb. 5, 2016) (finding that Complainant had demonstrated its rights in the SYNOVUS mark through its registration with the USPTO). Therefore, the Panel find that Complainant has rights in the THE HOME DEPOT trademark under Policy ¶ 4(a)(i) based on its registration with the USPTO.
Complainant argues that Respondent’s <homedepot-us.com> domain name is identical or confusingly similar to Complainant’s THE HOME DEPOT trademark. Under Policy ¶ 4(a)(i), the addition of a hyphen to a disputed domain name is generally not sufficient in distinguishing a domain name from a protected trademark. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”). Moreover, the additions of a geographic identify fails to distinguish a disputed domain name. See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”). Finally, the addition of the “.com” gTLD is irrelevant when considering whether a disputed domain name is identical or confusingly similar to a protected mark. See Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). As noted above, Respondent’s <homedepot-us.com> domain name incorporates the tradermark in its entirety and adds a hyphen along with the geographic identifier “.us” and the “.com” gTLD. Therefore, the Panel find that Respondent’s domain name is confusingly similar to Complainant’s trademark pursuant to 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 contends that Respondent lacks rights or legitimate interests in the <homedepot-us.com> domain name because Respondent is not commonly known by the disputed domain name. Without evidence to the contrary, a respondent’s use of a privacy service in a domain name’s WHOIS information supports a finding that a respondent is not commonly known by the disputed domain name pursuant to 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). Further, any information on the record that reveals that a registrant’s name is materially different from the disputed domain name may be used to determine that a respondent is not commonly known by a disputed domain name. See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name.”). Additionally, the fame associated with a complainant’s trademark may create an inferences that a respondent is not commonly known by a disputed a domain name. See Compaq Info. Techs. Group, L.P. v. Express Tech., Inc., FA 104186 (Forum Mar. 13. 2002) (“The Panel finds that due to the distinct nature of Complainant's COMPAQ mark it is not possible for Respondent to be commonly known as <compaqspares.com> pursuant to Policy 4(c)(ii).”). Finally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See 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).”). In the present case, Respondent used a privacy service to shield its identity in the disputed domain name’s WHOIS information. However, the registrar revealed the registrant of the disputed domain name as “youtukeji / liwen cui.” Moreover, past panels have recognized Complainant’s THE HOME DEPOT trademark as famous and widely used, thereby creating a likelihood that Respondent is not commonly known by the disputed domain name. Additionally, there is no evidence to suggest that Respondent was authorized to use the THE HOME DEPOT trademark, nor does Respondent hold trademark registrations that are identical, similar, or in any way related to the Complainant’s trademark. Therefore, the Panel find that Respondent is not commonly known by the disputed domain named under Policy ¶ 4(c)(ii).
The Complainant contends that Respondent does not use the <homedepot-us.com> domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Use of a domain name to sell products or services that compete directly with a complainant’s business does not generally constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Past panels have found that use of a disputed domain name to pass off as a complainant is neither a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Respondent uses Complainant’s trademark in the disputed domain name in order to pass off as Complainant with a false impression of association and misdirects them to a website that offers competing products. The Panel therefore find that Respondent does not use the <homedepot-us.com> domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use within the meaning of Policy ¶¶ 4(c)(i) and (iii).
Complainant contends that Respondent uses it’s THE HOME DEPOT trademark in the <homedepot-us.com> domain name with intent to divert Internet users in bad faith. A respondent’s use of a domain name that is obviously connected to a complainant’s trademark indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use). Further, use of a disputed domain name to offer goods competing with a complaint may illustrate a respondent’s bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Respondent registered and uses the confusingly similar disputed domain name to divert unsuspecting users to Respondent’s own webpage that offer’s products in direct competition with Complainant. The Panel therefore find that respondent uses the <homedepot-us.com> domain name with intent to divert Internet users with a false impression of association with Complainant in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant further argues that Respondent’s registration and use of the <homedepot-us.com> disputed domain name constitutes opportunistic bad faith as the domain name is obviously connected to Complainant’s trademark. Past panels have found evidence of opportunistic bad faith registration and use where it is impossible for the respondent to make any active use of the disputed domain name without creating a false impression of association with the complainant. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”). In this case, Respondent incorporates the entirety of Complainant’s THE HOME DEPOT distinctive trademark in the disputed domain name and purports to offer competing services on the domain name’s resolving webpage. Thus the Panel may find that Respondent registration and use of the disputed domain name constitutes opportunistic bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant asserts that Respondent registered the <homedepot-us.com> domain name with actual knowledge of Complainant’s rights in the THE HOME DEPOT trademark. Use of confusingly similar domain to feature content that is competitive to a complainant demonstrates a respondent’s actual knowledge of a complainant’s rights in a trademark. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark 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”). Respondent fully incorporates Complainant’s THE HOME DEPOT trademark in the disputed domain name and purports to offer competing services to Complainant on the domain name’s resolving webpage. Therefore, the Panel find it obvious that Respondent had actual knowledge in Complainant’s THE HOME DEPOT trademark 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 <homedepot-us.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: August 16, 2022
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