Home Depot Product Authority, LLC v. Kejimi Agbelusi
Claim Number: FA1612001708530
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Kejimi Agbelusi (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotgarbagedisposal.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 19, 2016; the Forum received payment on December 19, 2016.
On December 21, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <homedepotgarbagedisposal.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 December 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2017 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@homedepotgarbagedisposal.com. Also on December 21, 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 January 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Home Depot Product Authority, LLC is the owner of the famous HOME DEPOT and THE HOME DEPOT trademarks. Home Depot Product Authority, LLC, through its predecessors in interest and licensees, including The Home Depot (collectively “Home Depot”), commenced use of the trademarks HOME DEPOT and THE HOME DEPOT (hereinafter the “HOME DEPOT Marks”) at least as early as 1979 in connection with home improvement retail store services and related goods and services. Since that time, Home Depot has continuously used the HOME DEPOT Marks in commerce in the United States and abroad.
Today, Home Depot is the world’s largest home improvement specialty retailer and the fourth largest retailer in the U.S., with annual worldwide sales of more than $88 billion. Home Depot has more than 2,200 retail stores, including stores in all 50 states, the District of Columbia, Puerto Rico, Guam, the U.S. Virgin Islands, ten Canadian provinces, and Mexico.
In addition to its extensive common law rights, Home Depot owns numerous U.S. federal registrations for its HOME DEPOT Marks, including, among others, the following: THE HOME DEPOT (Reg. Nos. 1,188,191; 1,431,636; 2,825,232; 4,220,687; 4,300,027), THE HOME DEPOT & Design (Reg. Nos. 1,297,161; 1,835,705; 1,872,835; 2,391,201; 4,256,235), HOME DEPOT (Reg. No. 2,314,081), THE HOME DEPOT KIDS WORKSHOP (Reg. No. 2,316,186), THE HOME DEPOT FOUNDATION (Reg. No. 3,650,106), HOME DEPOT FUEL (Reg. No. 3,722,317), ECO OPTIONS THE HOME DEPOT & Design (Reg. No. 3,671,105), GET IT INSTALLED THE HOME DEPOT (Reg. No. 3,885,173); THE HOME DEPOT PRO XTRA & Design (Reg. No. 4,392,280), and THE HOME DEPOT SOLUTIONS CENTER (Reg. No. 4,570,737). These registrations are valid, subsisting and enforceable. The HOME DEPOT Marks are distinctive, well-known and famous marks.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
[a.] The <homedepotgarbagedisposal.com> domain name is confusingly similar to the HOME DEPOT Marks in which Home Depot has trademark rights worldwide.
[i] Home Depot has rights in its trademarks.
The HOME DEPOT Marks have been used in commerce in connection with, among other things, home improvement retail store services since at least as early as 1979. In addition, Home Depot has registered and uses the domain name homedepot.com in connection with the advertising of its products and services on the Internet. Home Depot first registered the homedepot.com domain name in 1992 and has continuously maintained the registration for homedepot.com since that time.
The HOME DEPOT Marks have become highly valuable assets of Home Depot, representing substantial goodwill. The value of these assets has been cultivated as a result of Home Depot’s continuous and exclusive use of the marks for many years, and because of Home Depot’s efforts to promote the mark through the expenditure of substantial sums and careful control of the public perception of both the nature and quality of the goods and services provided in connection with the marks.
It is well established under the Policy that Home Depot’s registration of a mark with federal authority establishes a prima facie case of Home Depot’s rights. See, e.g., Delta Corporate Identity, Inc. and Delta Air Lines, Inc. v. dltaairlines.com and deltaaairlines.com c/o Hanna El Hinn, FA548217 (NAF Oct. 12, 2005), citing Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.”), and Innomed Techs., Inc. v. DRP Servs., FA221171 (NAF Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes complainant's rights in the mark”).
Moreover, while Respondent reportedly resides or otherwise operates in Nigeria, Complainant’s proffered USPTO registration establishes Complainant’s protected rights in its mark, pursuant to Policy ¶4(a)(i). See Capital Bank Corporation v. Ogheneovo Okuma / Capital Concept, FA 1692759 (Forum Oct. 12, 2016) (holding that Complainant’s USPTO registration is sufficient under Policy ¶4(a)(i), even though Respondent reportedly resides in Nigeria); see also 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).
[ii] The <homedepotgarbagedisposal.com> domain name is confusingly similar to the HOME DEPOT Marks.
Home Depot has used its HOME DEPOT Marks in commerce since at least 1979. As noted above, such long-standing and continuous use gives Home Depot exclusive rights in the HOME DEPOT Marks. ICANN panels have found that, where, as in this case, a domain name incorporates a distinctive mark in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar. See Lowen Corp. v. Henry Chan, D2004-4030 (WIPO August 5, 2004) (finding that the domain name lowensigns.com is confusingly similar to LOWEN).
Furthermore, the addition of the common or generic term “garbage disposal” to Home Depot’s famous HOME DEPOT trademark does not negate the confusing similarity between <homedepotgarbagedisposal.com> and the HOME DEPOT Marks under Policy ¶4(1)(i). See Exxon Mobil Corporation v. MGA Eenterprises Limited, FA0907001273445 (NAF Aug. 26, 2009) (finding that the addition of the terms “travel” and “club,” which have an obvious relationship to Complainant’s [Exxon’s] business, to Complainant’s mark in the disputed domain name <exxontravelclub.com> create a confusing similarity between the disputed domain name and the registered mark); Homer TLC, Inc. v. Whois Guard, FA619597 (NAF Feb. 14, 2006) (finding that the addition of common words to Complainant’s registered mark did not negate the confusing similarity).
Moreover, the addition of a generic top-level domain, such as “.com,” is irrelevant in determining similarity of <homedepotgarbagedisposal.com> to Home Depot’s HOME DEPOT Marks. See, e.g., Delta Corporate Identity, Inc. and Delta Air Lines, Inc, citing Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[t]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”); Thomas B. Hudson v. Ted Machi & Associates, FA133759 (NAF Jan. 21, 2003).
In this case, <homedepotgarbagedisposal.com> is confusingly similar to and incorporates in its entirety the HOME DEPOT Marks. The domain name differs from the HOME DEPOT Marks only by the addition of the generic term “garbage disposal” and the top-level domain, “.com.” These minor differences are insufficient to distinguish <homedepotgarbagedisposal.com> from the HOME DEPOT Marks.
[b.] Respondent Has No Rights or Legitimate Interests in the Domain Name.
Because Home Depot has made a prima facie case in support of its allegations, the burden shifts to Respondent to show that he does have rights or legitimate interests in the Domain Name. See, e.g., Tejon Ranchcorp and Tejon Ranch Co. v. J & L Enterprises, FA524749 (NAF September 20, 2005), citing Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (where complainant has asserted that respondent has no rights or legitimate interests with respect to domain name, respondent must come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent.”), and G.D. Searle v. Martin Mktg., FA118277 (NAF Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent”).
Moreover, Respondent must show he has rights or legitimate interest in respect of the domain name at issue by “concrete evidence.” See Kate Spade, LLC v. Darmstadter Designs, No. D2001-1384 (WIPO Jan. 3, 2002) citing UDRP Policy 4(c)). “Concrete evidence” requires more than personal assertions; it requires documents or third party declarations in support of such assertions. Id. A failure to produce such concrete evidence entitles a panel to conclude that the respondent has no such rights or legitimate interest. Id.
From the evidence discussed below, it is clear that Respondent has no rights or legitimate interest in the <homedepotgarbagedisposal.com> domain name.
[i] Respondent has no relationship with Home Depot.
Respondent has no relationship, affiliation, connection, endorsement or association with Home Depot. Respondent has never requested or received any authorization, permission or license from Home Depot to use the HOME DEPOT Marks in any way.
[ii] Respondent has never been commonly known by the domain name <homedepotgarbagedisposal.com> or by the HOME DEPOT Marks and has never acquired any trademark rights in the same.
There is no evidence in the WHOIS information to suggest that Respondent is known by <homedepotgarbagedisposal.com>. Indeed, given Home Depot’s long-time and extensive world-wide rights in the HOME DEPOT Marks in connection with home improvement retail stores and related goods and services, Respondent could not have rights in the HOME DEPOT Marks unless Home Depot granted them. However, that has not occurred.
[iii] Respondent has not used the domain name in good faith and in connection with a bona fide offering of goods or services.
Use for commercial gain of a domain name that is confusingly similar to the HOME DEPOT Marks to redirect Internet users interested in Home Depot’s goods to a purported informational and retail site containing numerous Amazon.com links is not a legitimate noncommercial or fair use of the domain name. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA96577 (NAF Feb. 27, 2001) (respondent's commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA95407 (NAF Sept. 27, 2000) (“[U]nauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”)
Here, the website that currently resolves from the subject domain name is an online informational site providing information about garbage disposals and also giving the false appearance that it is an online retail site offering to sell garbage disposals, which are the same type of goods sold by Complainant under its HOME DEPOT Marks. Specifically, upon reaching Respondent’s website at <homedepotgarbagedisposal.com>, users are presented with images and reviews of these competing products and a link to the website’s “store” is provided. Upon reaching Respondent’s website at <homedepotgarbagedisposal.com/store/>, users are presented with images of a variety of garbage disposal products, each with a click-button to “Buy Product.” Upon clicking on the link, the Internet user is then connected immediately to Amazon.com, offering garbage disposal goods that directly compete with Home Depot.
Upon information and belief, Respondent receives compensation each time a searcher clicks on one of these links or sponsored advertisements, which constitutes use of the domain for commercial gain. Respondent’s use of the <homedepotgarbagedisposal.com> domain name is also commercial because the various companies linked to the web site through these sponsored ads benefit from subsequent interest and purchases. ICANN panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See Focus Do It All Group v. Athanasios Sermbizis, D2000-0923 (WIPO October 6, 2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Respondent’s use moreover cannot be characterized as fair use. See Ford Motor Company v. Greg Lane, FA 1467377 (NAF Dec. 14, 2012) (refusing to apply nominative fair use doctrine where respondent used domain name incorporating complainant’s mark to redirect to website promoting repair services of products offered by complainant’s competitors; holding that such use was not “in connection with a bona fide offering of goods or services”).
Respondent’s use of the domain name is not legitimate because it diverts Home Depot’s customers and potential customers to a website containing Amazon.com links that direct the users to a product page on Amazon’s website. See id. (finding that Respondent’s domain name which linked visitors to a directory of regional competitors was not a legitimate use). See also Homer, TLC Inc. v. Kang, FA573872 (NAF Nov. 22, 2005) (“Respondent’s use of ‘a’ domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering . . . or a legitimate noncommercial or fair use . . . .”). Such use of Home Depot’s trademark is clearly confusing and deceptive to consumers. As such, Respondent’s website at <homedepotgarbagedisposal.com > is not used or maintained in good faith and in connection with a bona fide offering of goods or services.
[c.] Respondent Registered and Used the Domain Name in Bad Faith.
There are at least three pieces of evidence that show Respondent had knowledge of Home Depot’s trademark rights, yet proceeded to register and use the <homedepotgarbagedisposal.com> domain name in bad faith: (1) Respondent used Home Depot’s trademarks in his domain name and on his website to divert visitors to competitors; (2) the content on Respondent’s website at the disputed domain name; and (3) Respondent is deemed to have constructive knowledge of Home Depot’s trademark rights at the time Respondent registered and began using the subject domain name.
(1) As described above, Respondent is using the <homedepotgarbagedisposal.com> domain name, which entirely incorporates and is confusingly similar to the HOME DEPOT Marks, to direct Internet users to a website with links that direct visitors to third party websites offering goods that directly compete with Home Depot. Such use is concrete evidence of bad faith registration and use. See, e.g., Homer TLC, Inc. v. Unitedeurope Consulting, FA 1110103 (NAF Feb. 8, 2008) (“Respondent’s use of the disputed domain name to advertise links to third-party competitors is evidence of registration and use in bad faith under Policy ¶4(b)(iii)”), and S. Exposure v. S. Exposure, Inc., FA 94864 (NAF July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
(2) Furthermore, it is clear that Respondent registered the subject domain name with the HOME DEPOT Marks in mind in light of the obvious link between Home Depot and the goods described and seemingly offered for sale on Respondent’s website. See Exhibit E. See MIVA, Inc. v. WhoIs Privacy Inc., citing Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (because link between complainant’s mark and content advertised on respondent’s website obvious, respondent “must have known about the complainant’s mark when it registered the subject domain name”).
(3) In addition, Respondent is deemed to have constructive knowledge of Home Depot’s rights in the HOME DEPOT Marks pursuant to multiple federal U.S. trademark registrations for the HOME DEPOT Marks. “There is a legal presumption of bad faith when [Respondent] reasonably should have been aware of Complainant’s trademarks, actually or constructively.” See Digi Int’l v. DDI Sys., FA124506 (NAF Oct. 24, 2002); see also Thomas B. Hudson v. Ted Machi & Associates, Claim No. FA133759 (NAF Jan., 2003) (“Respondent must be held to be on constructive notice of Complainant’s service mark . . . .”); Assante Holdings, Inc. v. Kevin Baker, Claim No. FA109384 (NAF May 20, 2002) (“Respondent was on notice as to Complainant’s rights in its PERSONAL CFO mark when it registered the disputed domain name because Complainant’s mark is on the Principal Register of the United States Patent and Trademark Office. Registration of the disputed domain name despite this notice is evidence of bad faith registration.”).
Any use by Respondent of the HOME DEPOT Marks, even as a domain name, is an infringement of Home Depot’s long-held rights under trademark law. As the panelist in C-Line Products, Inc. v. Ralco Consulting c/o Robert Lebeaux pointedly noted, a potential domain name registrant:
would be well-advised to heed the oft-repeated admonition, such as that of Scott W. Pink, in his treatise, The Internet & E-Commerce Legal Handbook (2001), where at page 110, he states: “Once you have decided on the TLDs and ccTLDs, you will want to select the second level of the domain, the words that signify your unique address. In doing so, you should first conduct both a domain name search to make sure the particular domain is available as well as a trademark search to make sure your choice of a domain name does not potentially infringe on another person or entity’s trademark rights.” C-Line Products, Inc. v. Ralco Consulting c/o Robert Lebeaux, Claim No. FA187608 (NAF October 20, 2003) (Emphasis supplied).
Respondent knew of Home Depot’s rights in the HOME DEPOT Marks. His registration and infringing use of the <homedepotgarbagedisposal.com> domain name, despite having such knowledge, indicates bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, a person using the registrant’s contact email claimed not to own the domain name any more. It is likely the new owner failed to update the registrant’s email address in light of the Registrar’s verification of the domain’s ownership.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 uses the HOME DEPOT mark in connection with retail home improvement products and services. Complainant registered the HOME DEPOT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,314,081, registered Feb. 1, 2000), which establishes its rights in the mark. Registration of a trademark with a governmental authority (such as the USPTO) establishes Complainant’s rights to its mark under Policy ¶4(a)(i), even if the registration is not within Respondent’s home country. See generally Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)). Complainant has rights in the HOME DEPOT mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <homedepotgarbagedisposal.com> is confusingly similar to the HOME DEPOT mark because it incorporates the mark in its entirety, omits the space, adds the phrase “garbage disposal” which relates to products Complainant sells, and adds the “.com” gTLD. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Likewise, a space is a prohibited character in a domain name and its omission must be disregarded under a Policy ¶4(a)(i) analysis. Adding a related, descriptive phrase does not affect a Policy ¶4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist 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); Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (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)). Adding the phrase “garbage disposal” leaves the domain name confusing because Complainant sells garbage disposals. The <homedepotgarbagedisposal.com> domain name is confusingly similar to the HOME DEPOT mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has 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 claims Respondent has no rights or legitimate interests in <homedepotgarbagedisposal.com>. Respondent is not commonly known by the disputed domain name. The WHOIS shows “Kejimi Agbelusi” is the Respondent. There is no obvious connection to the disputed domain name. Respondent has no relationship with Complainant which would allow Respondent to register the HOME DEPOT mark in a domain name. In the absence of any information to the contrary, this Panel concludes Respondent is not commonly known by the disputed domain name because of the WHOIS information. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Complainant has met its burden under Policy ¶4(c)(ii).
Complainant claims Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the <homedepotgarbagedisposal.com> domain name. The domain name resolves to a website displaying Amazon.com links and which purports to be a retail informational site (no evidence was submitted on whether or not this was a bona fide reviewing site, so the Panel assumes it was). The site also links to other sites that sell the garbage disposals reviewed (which obviously competes with Complainant’s various garbage disposals). Presumably, Respondent commercially gains by the click through links (otherwise, why would Respondent bother?). It does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use to use Complainant’s mark to generate traffic for an unrelated review site. See H-D Michigan Inc. v. Buell, FA 1106640 (Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Respondent’s domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and used <homedepotgarbagedisposal.com> in bad faith. Respondent uses Complainant’s mark to generate internet traffic to Respondent’s domain name. Respondent’s domain name redirects to websites which sell competing products. This scheme clearly disrupts Complainant’s business by a competitor within the meaning of Policy ¶4(b)(iii). Respondent presumably commercially benefits from the referral links to the selling web sites when confused people “click though.” This constitutes bad faith registration and use under Policy ¶4(b)(iv). See Univ. of Texas Sys. v. Smith, FA 1195696 (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)); see also Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Respondent registered and uses the domain name in bad faith under both Policy ¶¶4(b)(iii) and (iv).
Complainant claims the domain was registered with the full HOME DEPOT mark, and the resolving website appears to offer Complainant’s competitors’ goods for sale. The evidence submitted requires this conclusion. Respondent had actual knowledge of Complainant’s mark based upon the totality of the circumstances (see Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”)). The Panel concludes Respondent had Complainant in mind when registering the disputed domain name and when subsequently using it to complete with Complainant. This constitutes bad faith registration and use of the domain name under both Policy ¶4(b)(iii) (which only covers competitors) and the penumbra of Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <homedepotgarbagedisposal.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, January 20, 2017
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