DECISION

 

Home Depot Product Authority, LLC v. James Smith

Claim Number: FA1902001829906

 

PARTIES

Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA.  Respondent is James Smith (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <homedepotdesigncenter.net>, <homedepotdesigncenter.org>, and <homedepot-designcenter.com>, registered with Google LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 14, 2019; the Forum received payment on February 14, 2019.

 

On February 18, 2019, Google LLC confirmed by e-mail to the Forum that the <homedepotdesigncenter.net>, <homedepotdesigncenter.org>, and <homedepot-designcenter.com> domain names are registered with Google LLC and that Respondent is the current registrant of the names.  Google LLC has verified that Respondent is bound by the Google 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 February 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 2019 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@homedepotdesigncenter.net, postmaster@homedepotdesigncenter.org, postmaster@homedepot-designcenter.com.  Also on February 19, 2019, 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 March 13, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant is the world’s largest home improvement specialty retailer and the fourth largest retailer in the United States, with annual worldwide sales of more than $100.9 billion. Complainant has more than 2,200 retail stores in the United States, Canada, and Mexico. Complainant has the rights to trademark registration and rights through the United States Patent and Trademark Office (“USPTO”) to HOME DEPOT (e.g. Reg. No. 2,314,081, registered Feb. 1, 2000) mark. See Compl. Ex. B. Complainant also owns trademark application Nos. 87924985 and 87924988 for the mark THE HOME DEPOT DESIGN CENTER filed on May 17, 2018. Respondent’s domain names are confusingly similar to the marks owned by Complainant. The addition of generic or descriptive terms along with a generic top-level domain (“gTLD”) such as “net”, or “org”, and “.com” are irrelevant in determining the similarity of Respondent’s domain to Complainant’s marks.

 

2.    Respondent has no right or legitimate interests in the domain names because Respondent is not commonly known by the infringing domain names, and Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. Additionally, Respondent does not use the domain names, <homedepotdesigncenter.net>, <homedepotdesigncenter.org>, and <homedepotdesigncenter.com>, to make a bona fide offering of goods or services. Instead, Respondent is using the domain names to divert internet users to a competing vendor for similar services in an attempt to confuse users searching for Complainant’s product. See Compl. Ex. D.

 

3.    Respondent registered the infringing domain names in bad faith. Respondent is advertising kitchen and bath products and consulting and remodeling services that compete with services and products offered by Complainant. See Compl. Ex. D. Further, Respondent registered the domain names just nine (9) days after Complainant applied for the trademark registration for THE HOME DEPOT DESIGN CENTER mark. Finally, Respondent registered the domain names with knowledge of Complainant’s famous mark as shown by Respondent’s use of the domain names to compete with Complainant.

 

B.   Respondent

1.    Respondent did not submit a Response.

 

FINDINGS

1.    Respondent’s <homedepotdesigncenter.net>, <homedepotdesigncenter.org>, and <homedepot-designcenter.com> domain names are confusingly similar to Complainant’s HOME DEPOT and THE HOME DEPOT DESIGN CENTER marks.

 

2.    Respondent does not have any rights or legitimate interests in the <homedepotdesigncenter.net>, <homedepotdesigncenter.org>, and <homedepot-designcenter.com> domain names.

 

3.    Respondent registered or used the <homedepotdesigncenter.net>, <homedepotdesigncenter.org>, and <homedepot-designcenter.com> domain names in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant claims to have rights to the HOME DEPOT mark through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient demonstrate rights in a mark per policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Complainant has provided this Panel with a copy of its USPTO registrations for the HOME DEPOT (e.g. Reg. No. 2,314,081, registered February 1, 2000) mark. See Compl. Ex. B. Therefore, this Panel finds Complainant has rights in the HOME DEPOT mark per Policy ¶ 4(a)(i).

 

Additionally, Complainant argues that Respondent’s domain names, <homedepotdesigncenter.net>, <homedepotdesigncenter.org>, and <homedepotdesigncenter.com>, are confusingly similar to Complainant’s HOME DEPOT marks. Specifically, Complainant argues that the disputed domain names incorporate Complainant’s HOME DEPOT mark and include the descriptive or generic terms “design center.” The addition of a descriptive or generic term to a famous mark does not negate the confusingly similarity between domain names and a complainant’s mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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). Furthermore, the addition of a gTLD is irrelevant in determining the similarity of the infringing domains. See MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”). Here, Respondent’s changes to Complainant’s HOME DEPOT mark was adding the gTLD “.com”, “.org”, and “.net” and additional terms to the HOME DEPOT mark. Therefore, the Panel finds that Respondent’s <homedepotdesigncenter.net>, <homedepotdesigncenter.org>, and <homedepotdesigncenter.com> domain names are confusingly similar to Complainant’s HOME DEPOT mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that 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 does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant states that Respondent has no rights or legitimate interests in the <homedepotdesigncenter.net>, <homedepotdesigncenter.org>, and <homedepotdesigncenter.com> domain names because Respondent is not commonly known by the disputed domain name nor authorized to use Complainant’s HOME DEPOT mark. Where there is not response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ (c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Furthermore lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name. 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). The Panel notes that the WHOIS information identifies Respondent as “James Smith” and there is nothing in the record to suggest that Respondent is authorized to use the HOME DEPOT marks. Thus, the Panel finds Respondent is not commonly known by the <homedepotdesigncenter.net>, <homedepotdesigncenter.org>, and <homedepotdesigncenter.com> domain names per Policy ¶ 4(c)(ii).

 

Next, Complainant argues that Respondent is using the domain names to divert internet users to a competing vendor for similar services in an attempt to confuse users searching for Complainant’s product. Using a confusingly similar domain name that resolves in a webpage that directly competes with a complainant fails to indicate a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant provides a screenshot of the resolving webpage, which displays the title “The Bath & Kitchen Showplace” along with various kitchen appliances and lists of manufacturers. See Compl. Ex. D. As such, the Panel holds that Respondent’s competing use of the domain names provide evidence of Respondent’s lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and/or (iii).

 

Registration and Use in Bad Faith

Complainant contends that respondent registered and used the <homedepotdesigncenter.net>, <homedepotdesigncenter.org>, and <homedepotdesigncenter.com> domains in bad faith. Complainant argues that Respondent is advertising products that compete with Complainant’s products and services using confusingly similar domain names to divert and direct internet users away from Complainant’s domain and instead toward Respondent’s domain. Offering competing services or products under a confusingly similar domain name can evidence bad faith. See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). As noted above, Complainant provides a screenshot of the resolving webpage, which displays the title “The Bath & Kitchen Showplace” along with various kitchen appliances and lists of manufacturers. See Compl. Ex. D. Thus, the Panel finds that Respondent registered the infringing domains in bad faith under Policy ¶ 4(b)(iv).

 

Complainant claims that Respondent registered the domain names just nine (9) days after Complainant applied for the trademark registration for THE HOME DEPOT DESIGN CENTER mark, and thus registered the domain names opportunistically. A finding of opportunistic bad faith can support a finding of bad faith under Policy ¶ 4(a)(iii). See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website). As such, the Panel finds that Respondent opportunistically registered the domain names in bad faith under Policy ¶ 4(a)(iii).

 

Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the HOME DEPOT mark at the time of registering the <homedepotdesigncenter.net>, <homedepotdesigncenter.org>, and <homedepotdesigncenter.com> domain names. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent’s knowledge can be inferred given Respondent’s use of the domain names to compete with Complainant along with the general fame associated with the HOME DEPOT mark. The Panel agrees with Complainant and find that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <homedepotdesigncenter.net>, <homedepotdesigncenter.org>, and <homedepot-designcenter.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  March 26, 2019