Home Depot Product Authority, LLC v. richard garyson / vanillacc
Claim Number: FA1801001765644
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas. Respondent is richard garyson / vanillacc (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mythdhr-homedepot.org>, registered with GoDaddy.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 5, 2018; the Forum received payment on January 5, 2018.
On January 8, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mythdhr-homedepot.org> 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 January 8, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 2018 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@mythdhr-homedepot.org. Also on January 8, 2018, 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 February 1, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant registered the THE HOME DEPOT and HOME DEPOT marks with the United States Patent and Trademark Office (“USPTO”) (e.g. THE HOME DEPOT—Reg. No. 1,431,636, registered Mar. 10, 1987; HOME DEPOT—Reg. No. 2,314,081, registered Feb. 1, 2000). Respondent’s <mythdhr-homedepot.org>[1] domain name is confusingly similar to Complainant’s marks as it adds the generic pronoun “my” and the letters ”thdhr” as well as the “.org” generic top-level-domain (“gTLD”) to Complainant’s HOME DEPOT trademark.
2. Respondent has no rights or legitimate interests in the <mythdhr-homedepot.org> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the marks.
3. Respondent also does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent’s domain name resolves to a page purporting to offer information about Complainant’s history and hiring needs, with pay-per-click hyperlinks and links to third party websites for the presumed benefit of the Respondent.
4. Respondent registered and uses the <mythdhr-homedepot.org> domain name in bad faith. Respondent uses the domain name to direct Internet users to third party commercial websites. Respondent misleads and attracts Internet users for Respondent’s commercial gain via passing off behavior.
5. Respondent had actual knowledge of Complainant’s rights in the THE HOME DEPOT and HOME DEPOT marks prior to registration of the <mythdhr-homedepot.org> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the THE HOME DEPOT and HOME DEPOT marks. Respondent’s domain name is confusingly similar to Complainant’s THE HOME DEPOT and HOME DEPOT marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <mythdhr-homedepot.org> domain name and that Respondent registered and uses the 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 (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 has rights in the THE HOME DEPOT and HOME DEPOT marks based upon registration with the USPTO (e.g. THE HOME DEPOT—Reg. No. 1,431,636, registered Mar. 10, 1987; HOME DEPOT—Reg. No. 2,314,081, registered Feb. 1, 2000). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark.”). Accordingly, the Panel finds that Complainant has established rights in the THE HOME DEPOT and HOME DEPOT marks.
Next, Complainant argues that Respondent’s <mythdhr-homedepot.org> domain name is confusingly similar to Complainant’s mark as it adds the generic pronoun “my” and the letters ”thdhr” as well as the “.org” gTLD to Complainant’s HOME DEPOT trademark. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See BBY Solutions, Inc. v Best Buy Online / M/S Best Buy Online, FA 1620654 (Forum July 2, 2015) (“The addition of the generic word ‘my’… does not prevent a finding that the disputed domain name and mark are identical or confusingly similar.”); see also Twentieth Century Fox Film Corporation v Domain Admin / PrivacyProtect.org / Denis Ferulev, FA 1652313 (Forum Jan. 19, 2016) (“Complainant notes that the domain name contains the recognised acronym for its FAMILY GUY mark, along with the number ‘24’ … the Panel finds that the <fg24.biz> domain name is confusingly similar to the FAMILY GUY mark under Policy ¶ 4(a)(i).”); see also ADESA, Inc. v. James Louis, FA 1736761 (Forum July 19, 2017) (“[T]he Panel finds that Respondent’s <adesa.org> domain name is identical to Complainant’s ADESA mark.”). The Panel therefore finds that the <mythdhr-homedepot.org> domain name is confusingly similar to the THE HOME DEPOT and HOME DEPOT marks under Policy ¶4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <mythdhr-homedepot.org> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <mythdhr-homedepot.org> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “richard garyson / vanillacc” as the registrant. Moreover, there is no evidence in the record to show that Respondent has ever been legitimately known by the THE HOME DEPOT and HOME DEPOT marks. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant has further provided evidence that Respondent has never been legitimately affiliated with Complainant, has never been known by the <mythdhr-homedepot.org> domain name prior to its registration, and Complainant has not given Respondent permission to use the domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <mythdhr-homedepot.org> domain name under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent doesn’t use the domain name for any bona fide offering of goods or services or a legitimate noncommercial or fair use because it attempts to pass off as Complainant for its own commercial gain. Passing off can show a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Complainant has provided evidence Respondent uses the resolving website of the <mythdhr-homedepot.org> domain name to offer information about Complainant’s history and hiring needs, with numerous embedded sponsored advertisements that Complainant asserts will cause Internet users to believe they lead to additional information about Complainant’s hiring needs. Complainant further asserts that the embedded advertisements, if clicked, instead connect the user to a page with third-party ads for the presumed commercial benefit of Respondent. The Panel therefore finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges Respondent disrupts Complainant’s business because of the registration and use of a confusingly similar domain name to resolve to a website with links unrelated to Complainant. Use of a domain name containing a mark of which a complainant has rights to resolve to third-party links has been found to constitute bad faith pursuant to Policy ¶ 4(b)(iii). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). Complainant asserts that Respondent’s website purports to link to further information related to Complainant; however, when Internet users click on the link, they are redirected to third-party websites unrelated to Complainant. The Panel agrees with Complainant and finds Respondent registered and uses the <mythdhr-homedepot.org> domain name in bad faith per Policy ¶ 4(b)(iii).
Next, Complainant claims that Respondent commercially benefits by offering advertisements on the resolving webpage for the <mythdhr-homedepot.org> domain name. Commercially benefitting by offering advertisements can show bad faith registration and use under Policy ¶ 4(b)(iv). See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”). Complainant has provided evidence that Respondent uses the confusingly similar domain name to direct Internet users to third-party commercial websites. The Panel agrees with Complainant’s evidnece and finds that Respondent acted in bad faith when registering and using the <mythdhr-homedepot.org> domain name.
Lastly, Complainant contends Respondent had actual knowledge of Complainant’s rights in the THE HOME DEPOT and HOME DEPOT marks prior to registration of the <mythdhr-homedepot.org> domain name. The non-exclusive nature of Policy ¶ 4(b) allows for the consideration of additional factors in an analysis for bad faith. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Actual knowledge of a complainant’s rights in a mark prior to registration of a domain name utilizing the mark is indicative of bad faith. 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.”); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). The Panel agrees with Complainant’s argument that the fact Respondent redirects Internet users to Complainant’s own websites is evidence that Respondent had actual knowledge of Complainant’s trademark rights. Thus, the Panel holds Respondent registered and uses the <mythdhr-homedepot.org> domain name in bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <mythdhr-homedepot.org> domain name be TRANSFERRED from Respondent to Complainant
Bruce E. Meyerson, Panelist
Dated: February 5, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page