Home Depot Product Authority, LLC v. Hung Nguyen
Claim Number: FA1610001699928
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Hung Nguyen (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotdeals.com>, registered with Name.com, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 26, 2016; the Forum received payment on October 26, 2016.
On October 26, 2016, Name.com, Inc. confirmed by e-mail to the Forum that the <homedepotdeals.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 October 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 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@homedepotdeals.com. Also on October 27, 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 November 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 registered its HOME DEPOT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,314,081, registered Feb. 1, 2000), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s <homedepotdeals.com> domain name is confusingly similar to Complainant’s mark because it merely adds the generic term “deals” and a generic top-level domain (“gTLD”) to the fully incorporated HOME DEPOT mark (less the space).
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise permitted Respondent to use its HOME DEPOT mark in any fashion, and Respondent is not commonly known by the <homedepotdeals.com> domain name. Respondent is using the confusingly similar domain name to offer the same products as Complainant as an online retail store. Respondent using this domain name to directly compete with Complainant cannot be said to be a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent has registered and is using the <homedepotdeals.com> domain name in bad faith. Respondent knew of Complainant’s rights in the HOME DEPOT mark, and is purposely attempting to divert Internet users looking for Complainant. Respondent’s competing use is disrupting Complainant’s business and should be considered to be bad faith under Policy ¶ 4(b)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <homedepotdeals.com> domain name.
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 (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 contends it has registered and has rights in its famous HOME DEPOT mark with the USPTO (Reg. No. 2,314,081, registered Feb. 1, 2000), and that it has rights in the mark under Policy ¶ 4(a)(i). Panels have found that USPTO registration confers rights in a mark, even when the registration is not in the country that a respondent is operating in. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). Thus, the Panel finds that Complainant has rights in its HOME DEPOT mark.
Complainant additionally contends that Respondent’s <homedepotdeals.com> domain name is confusingly similar to its HOME DEPOT mark. Complainant asserts that Respondent has merely added the generic term “deals” and the gTLD “.com” to the fully incorporated HOME DEPOT mark, less the space in the mark. Panels have found that a respondent’s domain name can be confusingly similar to a complainant’s mark when it adds only a common or generic term. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis 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). As such, the Panel finds that the <homedepotdeals.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 (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 (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 has no rights or legitimate interests in the <homedepotdeals.com> domain name. Complainant asserts that it has not licensed or otherwise authorized Respondent to use its HOME DEPOT mark in any fashion, and that Respondent is not commonly known by the disputed domain name. The WHOIS information for the domain name in question lists “Hung Nguyen” as the registrant. Previous panels have inferred that a respondent is not commonly known by a domain name from the WHOIS information and lack of contradicting evidence in the record. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Thus, the Panel finds that Respondent is not commonly known by <homedepotdeals.com>.
Complainant further asserts that Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent is using Complainant’s marks on the resolving website of the disputed domain name to pass itself off as the Complainant, and to divert mistaken internet users to buy competing products from Respondent. Complainant has submitted screen shots of Respondent’s website that it contends demonstrates the domain not being used in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use of the domain name. Panels have held that a respondent attempting to pass itself off as a complainant does violate Policy ¶ 4(c)(i) and (iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Panels have also found that a respondent using a disputed domain name to compete with the complainant does not confer any rights or legitimate interests in the disputed domain name. See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). As such, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.
Complainant has proved this element.
Complainant contends that Respondent has registered and is using the <homedepotdeals.com> domain name in bad faith. Complainant first alleges that Respondent registered the disputed domain name for the primary purpose of disrupting Complainant’s business. Complainant asserts that Respondent’s domain name features the entire HOME DEPOT mark, and that Respondent is purposely attempting to divert Internet users seeking Complainant to buy its products. The resolving website of the disputed domain name offers five different products that allegedly compete with Complainant and its offerings. Panels have defined “competitor” broadly, and consistently held that using a domain name confusingly similar to a complainant’s mark to compete is in bad faith under Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Lambros v. Brown, FA 198963 (Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”). As such, the Panel holds that Respondent’s registration and use of the disputed domain name was in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant additionally argues that Respondent had actual knowledge of its rights in the HOME DEPOT mark when it registered the <homedepotdeals.com> domain name. Complainant asserts that it has spent a substantial amount of money promoting the HOME DEPOT mark, and that it has achieved substantial goodwill and recognition. Complainant also argues that because Respondent competes in the same field of business as Complainant that it should have had actual knowledge. While the UDRP does not recognize constructive notice alone as sufficient grounds to find a respondent in bad faith, prior panels have inferred actual notice based on the fame of the complainant’s mark or the fact that respondent and complainant are competitors. See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration); see also University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”). Therefore, the Panel has determined that Respondent had actual knowledge of Complainant’s HOME DEPOT mark at the time it registered the <homedepotdeals.com> domain name and finds Respondent in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homedepotdeals.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: December 1, 2016
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