Home Depot Product Authority, LLC v. Susan Pohlman / Design America
Claim Number: FA1707001740972
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Susan Pohlman / Design America (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotplans.com>, registered with Tucows Domains 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 21, 2017; the Forum received payment on July 21, 2017.
On July 21, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <homedepotplans.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 July 24, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 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@homedepotplans.com. Also on July 24, 2017, 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.
A timely Response was received and determined to be complete on July 27, 2017.
On August 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Home Depot Product Authority, LLC, is the owner of the HOME DEPOT trademarks.
Complainant has rights in the HOME DEPOT marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,431,636, registered Mar. 10, 1987).
Respondent’s <homedepotplans.com> is confusingly similar to Complainant’s HOME DEPOT mark as it wholly appropriates said mark while appending the descriptive term “plans” and the generic top-level-domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in the <homedepotplans.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the HOME DEPOT marks. Respondent failed to use <homedepotplans.com> in connection with a bona fide offering of goods and services or for a legitimate noncommercial or otherwise fair use. Instead, <homedepotplans.com> redirects to a third-party website offering goods and services in competition to those offered by Complainant.
Respondent registered and uses <homedepotplans.com> in bad faith. Respondent utilizes the confusingly similar domain name to offer goods and services in competition with those of Complainant. Respondent had actual knowledge of Complainant’s rights in the HOME DEPOT marks prior to registration of the disputed domain name.
B. Respondent
Although Respondent failed to file a formal response, Respondent nevertheless responded via an email to the dispute resolution provider indicating it consented to transferring the at-issue domain name to Complainant.
Complainant has rights in the HOME DEPOT mark as evidenced by its registration of such mark with the USPTO.
The at-issue domain name is confusingly similar to Complainant’s HOME DEPOT trademark.
Respondent unequivocally consents to transferring the at-issue domain name to 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.
Preliminary Issue: Consent to Transfer
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶4(a)ii or 4(a)iii when a respondent consents to such relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
In the instant case there is a clear indication that Respondent agrees to transfer the at-issue domain name to Complainant. In relevant correspondence Respondent tells the Forum , the instant dispute resolution service provider, that”[w]e purchased this domain years ago in hopes to work with Home Depot for providing home plans to their customers. We will of course relinquish this domain to them...” Therefore, the Panel follows its rationale set out in Homer TLC, Inc. v. Jacek Woloszuk, FA613637 (Forum May 17, 2015), as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name to the complainant.
As more fully discussed in the cases referenced above, as a necessary prerequisite to Complainant obtaining the requested relief, even where Respondent consents to such relief, Complainant must demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. Here, Complainant’s ownership of a USPTO trademark registration for the HOME DEPOT trademark shows its rights in such mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO). Additionally, the at-issue domain name contains Complainant’s entire HOME DEPOT trademark followed by the descriptive term “plans.” The top-level domain name “.com” is appended thereto. The differences between the at-issue <homedepotplans.com> domain name and Complainant’s HOME DEPOT trademark are insufficient to distinguish one from the other for the purposes of the Policy. See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com”; see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
In light of the foregoing, Respondent’s express consent to transfer the confusingly similar at-issue domain name in response to the Complaint compels the Panel to order that Respondent’s <homedepotplans.com> domain name be transferred to Complainant. Furthermore, the Panel finds no reason to provide further analysis regarding paragraph 4(a)(ii) or 4(a)(iii) of the Policy.
Having concluded that Respondent impliedly consents to Complainant’s request that the domain name be transferred to Complainant, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homedepotplans.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 2, 2017
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