Home Depot Product Authority, LLC v. Angelo Kioussis
Claim Number: FA1805001784554
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Angelo Kioussis (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotsb2018.com>, registered with NameSilo, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 1, 2018; the Forum received payment on May 1, 2018.
On May 1, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <homedepotsb2018.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 May 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 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@homedepotsb2018.com. Also on May 2, 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 May 29, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the world’s largest home improvement specialty retailer.
Complainant has been doing business under the name and mark HOME DEPOT in connection with its home improvement retail store services since 1979.
Complainant holds a registration for the HOME DEPOT service mark which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,314,081, registered February 1, 2000, and renewed February 2, 2010.
Respondent registered the domain name <homedepotsb2018.com> on or about January 8, 2018.
The domain name is confusingly similar to Complainant’s HOME DEPOT mark.
Respondent has not been commonly known by the domain name.
Complainant has not given Respondent license or other permission to use the HOME DEPOT mark.
Respondent is not using the domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
Instead, Respondent uses the domain name to pass itself off as Complainant online and to redirect unsuspecting Internet users to a faux Super Bowl web page and in an attempt to collect email addresses from such users in a process called “phishing.”
Furthermore, upon clicking the “forgotten password” button, Internet users are redirected to a webpage for a Travel Management System, from which Respondent benefits financially.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent’s use of the domain name creates confusion among Internet users as to the possibility of Complainant’s association with it.
Respondent registered the domain name with actual knowledge of Complainant’s rights in the HOME DEPOT mark.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the same domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 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 HOME DEPOT service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration of a mark with the USPTO was sufficient to establish a UDRP complainant’s rights in that mark under Policy ¶ 4(a)(i)).
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <homedepotsb2018.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark. The domain name contains the mark in its entirety, with only the addition of the generic letters “sb” and the digits “2018,” plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum August 10, 2015):
Respondent’s … domain name is confusingly similar to the … mark under Policy ¶ 4(a)(i) because the disputed domain [name] merely adds the letter ‘i’ [to that mark] ....
See also Twentieth Century Fox Film Corp. v Domain Admin, FA 1652313 (Forum January 19, 2016):
Complainant notes that the domain name contains the recognised acronym for its … mark, along with the number ‘24’ … the Panel finds that the … domain name is confusingly similar to the … mark under Policy ¶ 4(a)(i).
Further see Trip Network Inc. v. Alviera, FA 914943 (Forum March 27, 2007) (concluding that the addition of a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). This is because every domain name requires a gTLD.
Under Policy 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the domain name <homedepotsb2018.com>, and that Complainant has not licensed or otherwise authorized Respondent to use the HOME DEPOT mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Angelo Kioussis,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace”). See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <homedepotsb2018.com> domain name to pass itself off as Complainant online and to operate a faux Super Bowl website. This employment of the domain name is neither a bona fide offering of goods and services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that ae respondent’s attempt to pass itself off as a UDRP complainant online was evidence that that respondent had no rights to or legitimate interests in a disputed domain name within the purview of Policy ¶ 4(c)(i) or (iii)).
In addition, Complainant contends that Respondent uses the challenged <homedepotsb2018.com> domain name to “phish” for Internet users’ personal information for its commercial benefit. Use of a domain name to phish for internet users’ personal information is likewise neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum April 30, 2010):
The Panel finds that Respondent’s attempt to “phish” for [Internet] users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses the contested <homedepotsb2018.com> domain name, which we have found to be confusingly similar to Complainant’s HOME DEPOT service mark, to attempt to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002):
Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.
We are also convinced by the evidence that Respondent uses the challenged <homedepotsb2018.com> domain name to attempt to pass itself off as Complainant online in order to operate an illicit phishing scheme. This too stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015):
Respondent uses the … domain [name] to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, under this head of the Policy, it is evident that Respondent knew of Complainant and its rights in the HOME DEPOT mark when it registered the offending <homedepotsb2018.com> domain name. This further demonstrates that Respondent registered the domain name in bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel …here finds actual knowledge through the name used for the domain and the use made of it.
See also Yahoo! Inc. v. Butler, FA 744444 (Forum August 17, 2006) (finding bad faith where a respondent was “well-aware” of a UDRP complainant’s mark at the time of its registration of a confusingly similar domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <homedepotsb2018.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 4, 2018
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