Home Depot Product Authority, LLC v. Tu Pham Ngoc
Claim Number: FA1602001662977
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Justin S. Haddock of King & Spalding LLP, Texas, USA. Respondent is Tu Pham Ngoc (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotlocations.org>, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 26, 2016; the Forum received payment on February 26, 2016.
On February 26, 2016, NameSilo, LLC confirmed by e-mail to the Forum that the <homedepotlocations.org> 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 February 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2016 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@homedepotlocations.org. Also on February 29, 2016, 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 23, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant has 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 on February 1, 2000). Respondent’s <homedepotlocations.org> domain name is confusingly similar to the HOME DEPOT mark because it contains the mark, less the space, with only the additions of the generic word “locations” and the generic top-level domain (“gTLD”) “.org.”
ii) Respondent is not commonly known by the <homedepotlocations.org> domain name, because Complainant’s longstanding use of the HOME DEPOT mark precludes as much and because Respondent lacks Complainant’s permission to use the mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website displays the HOME DEPOT mark along with links purporting to redirect to locations of Complainant’s retail stores and sponsored advertisements and links.
iii) Respondent uses the <homedepotlocations.org> domain name in bad faith because the resolving website hosts advertisements and links to third party websites including competitors of Complainant. Respondent registered the <homedepotlocations.org> domain name in bad faith because it did so with constructive or actual knowledge of Complainant’s rights in the HOME DEPOT mark.
B. Respondent
Respondent did not submit a Response in this proceeding. The Panel notes that the <homedepotlocations.org> domain name was created on February 25, 2014.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims it has rights in the HOME DEPOT mark through its registration with the USPTO (e.g., Reg. No. 2,314,081, registered on February 1, 2000). Accordingly, the Panel finds that Complainant has rights in the HOME DEPOT mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant argues that Respondent’s <homedepotlocations.org> domain name is confusingly similar to the HOME DEPOT mark because it contains the mark, along with the word “locations” and the gTLD “.org.” The Panel notes that the domain also differs from the HOME DEPOT mark in that it lacks the space between the words of the mark. Complainant urges that “locations” is a generic term, which does not negate confusingly similarity. As the Panel agrees, it finds the <homedepotlocations.org> domain name is confusingly similar to the HOME DEPOT mark according to Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the <homedepotlocations.org> domain name, because Complainant’s longstanding use of the HOME DEPOT mark precludes as much and because Respondent lacks Complainant’s permission to use the mark. The Panel notes that the available WHOIS information lists “Tu Pham Ngoc” as Registrant. Accordingly, the Panel finds that Respondent is not commonly known by the <homedepotlocations.org> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant maintains that Respondent fails to use the <homedepotlocations.org> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website displays the HOME DEPOT mark along with links purporting to redirect to locations of Complainant’s retail stores and sponsored advertisements and links. Complainant contends that Respondent collects fees when Internet users click on the provided links. As the Panel finds the evidence submitted by Complainant to support its allegations is sufficient, it finds that Respondent fails to use the <homedepotlocations.org> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant alleges that Respondent uses the <homedepotlocations.org> domain name in bad faith because the resolving website hosts advertisements and links to third party websites including competitors of Complainant. Complainant contends that Respondent collects fees when Internet users click on the provided links. As the Panel finds the evidence submitted by Complainant to support its allegations is sufficient, it finds that Respondent uses the domain name in bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant claims that Respondent registered the <homedepotlocations.org> domain name in bad faith because it did so with constructive or actual knowledge of Complainant’s rights in the HOME DEPOT mark. Complainant argues that Respondent had constructive knowledge based upon Complainant’s multiple USPTO registrations of the HOME DEPOT and related marks. Complainant further argues that Respondent had actual knowledge as demonstrated through Respondent’s use of the domain name, which include direct references to Complainant’s business. The Panel infers and finds from the notoriety of Complainant's mark and the manner of use of the disputed domain name by Respondent that Respondent registered the <homedepotlocations.org> domain name with actual, and not merely constructive, knowledge of Complainant’s rights in the HOME DEPOT mark, and that Respondent did so in bad faith. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); but see Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homedepotlocations.org> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 31, 2016
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