Home Depot Product Authority, LLC v. Dimas Setiawan / RIZDI
Claim Number: FA1801001769711
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Dimas Setiawan / RIZDI (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepot24.com> (“Domain Name”), registered with Hostinger, UAB.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 30, 2018; the Forum received payment on January 30, 2018.
On Feb 02, 2018, Hostinger, UAB confirmed by e-mail to the Forum that the <homedepot24.com> domain name is registered with Hostinger, UAB and that Respondent is the current registrant of the name. Hostinger, UAB has verified that Respondent is bound by the Hostinger, UAB 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 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 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@homedepot24.com. Also on February 5, 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.
A timely Response was received and determined to be complete on February 5, 2018.
On February 7, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 registered the HOME DEPOT mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,431,636, registered Mar. 10, 1987). Respondent’s <homedepot24.com> domain name is confusingly similar to the HOME DEPOT mark as it appends the numbers “24” and the “.com” generic top-level-domain (“gTLD”) to Complainant’s wholly incorporated mark.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the HOME DEPOT Mark. 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 offers a number of different home goods for sale in direct competition with Complainant. Further, the embedded advertisements direct Internet users to a page with third-party advertisements offering products competitive with Complainant’s for Respondent’s presumed commercial gain.
Respondent registered and uses the Domain Name in bad faith. Respondent advertises products and services that compete directly with products and services offered by Complainant. Respondent had actual knowledge of Complainant’s rights in the HOME DEPOT mark prior to registration of the Domain Name.
B. Respondent
Respondent is a student from a small school and was required to create a website for a student project. Respondent initially attempted to register the domain names <homestay.com>, <homesupplier.com> or <homedepot.com>, but each were unavailable. The Domain Name is not used for a bad purpose, only for a student project and Respondent has deleted the content from the website.
Complainant holds trademark rights for the HOME DEPOT mark. The Domain Name is confusingly similar to Complainant’s HOME DEPOT mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <homedepot24.com> 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.
The Response was provided in Indonesian. Paragraph 11(a) of the Rules provides that “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The language of the Registration Agreement is English and the website to which the Domain Name redirected to was also in English. The proper language of the proceeding is English and the Panel declines to determine otherwise.
While Paragraph 11(b) of the Rules provides the Panel with authority to order that the Response be translated into English, it has not been necessary to make such an order. The Panel has used a machine translation service to review the Response and summarize its contents above.
Complainant has rights in the HOME DEPOT mark based upon registration with the USPTO (e.g. 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. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Complainant contends that the Domain Name is identical or confusingly similar to the HOME DEPOT mark as it contains the HOME DEPOT mark in its entirety and merely adds the number “24” and the gTLD “.com”. The Panel finds that the Domain Name is confusingly similar to the HOME DEPOT mark; see Thom Browne, Inc. v. Huili Zhang, FA 1358629 (Forum Dec. 22, 2010) (finding that, “The addition of the gTLD ‘.net’ also has no effect on the Policy ¶ 4(a)(i) analysis.”). 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).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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) and 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the HOME DEPOT mark. Respondent has not relationship, affiliation, connection, endorsement or Association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. 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, Respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that Respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Dimas Setiawan / RIZDI” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
Respondent submits that he does not speak English well and that the Domain Name was registered as part of a school project. Respondent has provided no evidence to support these assertions which are contradicted by the fact that the Domain Name, until recently, redirected to an English-language webpage that contained references to Complainant, home improvement articles in English and advertised home appliances and furniture for sale in direct competition with Complainant. Respondent’s use of the Domain Name for a commercial website selling furnishings (or advertising products for sale by third parties, for which it is likely to receive revenue) under Complainant’s HOME DEPOT mark does not amount 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). See American International Group, Inc. v. Walter Busby d/b/a AIG Mergers and Acquisitions, FA0304000156251 (Forum May 30, 2003) and CliC Goggles, Inc. v. Ernesto Duarte, FA1006001327834 (Forum July 13, 2010) (“The Panel finds that using a variation on Complainant’s mark to redirect Internet users to a site not affiliated with Complainant but offering similar competing products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).”)
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent had actual knowledge of Complainant’s HOME DEPOT mark since the Domain Name resolved to a website that advertised for sale goods that competed directly with Complainant and used Complainant’s HOME DEPOT mark to do so. The Panel agrees and notes that the commercial content of the website does not support Respondent’s contention that the Domain Name was registered as part of a school project. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting Respondent's contention that it did not register the disputed domain name in bad faith since the panel found that Respondent had knowledge of Complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent did have actual knowledge of Complainant’s HOME DEPOT mark, demonstrating (in the absence of rights or legitimate interests of its own), registration in bad faith under Policy ¶ 4(a)(iii).
Complainant claims that Respondent gains a commercial benefit by offering advertisements on its website for goods that competed with Complainant. 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).”). See also Computerized Security Systems, Inc. d/b/a SAFLOK v. Bennie Hu, FA0305000157321 (Forum Jun. 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to 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 evidence and finds that Respondent acted in bad faith when registering and using the Domain Name.
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 <homedepot24.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: February 13, 2018
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