Home Depot Product Authority, LLC v. Alan Goldberg
Claim Number: FA1602001659280
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Alan Goldberg (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotinstallers.com> ('the Domain Name'), registered with GoDaddy.com, LLC.
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.
Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 2, 2016; the Forum received payment on February 2, 2016.
On February 3, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <homedepotinstallers.com> 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 February 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2016 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@homedepotinstallers.com. Also on February 3, 2016, 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 March 21, 2016.
On March 25, 2016 an Additional Submission compliant with Supplemental Rule 7 was received from the Complainant .
On March 28, 2016 an Additional Submission compliant with Supplemental Rule 7 was received from the Respondent.
On March 24, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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
The Complainant's submissions can be summarised as follows:
The Complainant group of companies is the owner of the famous HOME DEPOT trade mark and through its predecessors in interest and licensees commenced use of the trade mark HOME DEPOT at least as early as 1979 in connection with home improvement retail store services and related goods and services, using it in commerce since that time in the USA and abroad. It uses the domain name homedepot.com in connection with the advertising of its products and services on the Internet.
The addition of the generic term 'installers' to the HOME DEPOT mark and the use of the gTLD .com does not negate the confusing similarity between the Domain Name and the Complainant's trade marks as the Domain Name contains the Complainant's mark in its entirety.
Respondent has no rights or legitimate interest in the Domain Name. Respondent has no relationship, affiliation, connection, endorsement or association with the Complainant and has not received any permission to use the HOME DEPOT marks in any way. Respondent is not known by the Domain Name. Given the Complainant's reputation in the HOME DEPOT mark the Respondent could not have rights in that mark unless the Complainant granted them.
The Domain Name resolved to a page that states 'HOME DEPOT INSTALLERS. At Alan Goldberg Contractors we proudly install any products available at the Home Depot.' and gives a phone number. At the top there is a link to 'Our Website' which provides the domain name for the Respondent's web site which offers services competitive to those of the Complainant. It is clear that the Respondent registered the Domain Name with the Complainant's marks in mind in light of the content and the services offered thereon as well as blatant and unauthorised use of the HOME DEPOT marks and this is not use of the Domain Name in connection with a bona fide offering of goods and services. The use of the Domain Name shows the Respondent knew of the Complainant's rights in the HOME DEPOT marks and indicates bad faith. The website features the Complainant's famous mark in a clear attempt by Respondent to create the false impression that Respondent is somehow related to or authorised by the Complainant and to redirect users to another domain further indicating bad faith.
B. Respondent
The Respondent’s Contentions can be summarised as follows:
The Domain Name is neither identical nor confusingly similar to the Complainant's HOME DEPOT mark.
At the time the Domain Name was registered there was no evidence in the 'WhoIs' database or the USPTO register that the Complainant was known as an installer in the Respondent's area. None of the Complainant's trade marks pertaining to the Respondent's scope of services existed at the time the Domain Name was purchased and registered by the Respondent.
The Domain Name getitinstalled.com has no affiliation with the Complainant and was registered before the date the Complainant registered the corresponding mark with the USPTO.
The Complainant did not purchase a domain name similar to the Domain Name until January 2016, 4 years after the Domain Name was registered and used and less than one month before the Complainant filed this dispute.
Respondent has a legitimate interest in the Domain Name as it was used in connection with a bona fide offering of services and the Complainant's raw goods.
Respondent uses the Complainant's products in the creation of his final products and services, namely electrical and constructions projects. Complainant condoned and facilitated the Respondent's activities as a HOME DEPOT tradesperson.
The Respondent has not engaged in any conduct which would be bad faith registration and use under the Policy. Respondent owned and used the Domain Name for the benefit of both parties for 4 years prior to the Complainant's implementation of the Home Depot Installer program in the Respondent's area.
Complainant's substantial delay in taking action is a factor favouring the Respondent indicating that the Respondent's use of the Domain Name has not caused problem for the Complainant.
The Complainant does not have an electrical licence in the service area of the Respondent.
Respondent has not registered the Domain Name to disrupt the business of the Complainant, but to benefit it from Respondent's sales.
Respondent has clearly identified his status and independent relationship to the Complainant on his web site describing his business truthfully to include installation of products purchased from the Complainant's company. The Respondent does not suggest he is a retailer of the Complainant's products. The Respondent's use supports the Complainant's rights in the HOME DEPOT mark by proudly using materials from the Complainant and directing the Respondent's customers to the Complainant's business after 4 years of service as a registered tradesperson of the Complainant through its prorewards/proextra program. Respondent's use of the Domain Name is legitimate and not in bad faith.
The Respondent requests that the Panel make a finding of reverse domain name hijacking as the Complainant registered an almost identical domain name to the Domain Name on January 12, 2016 almost 4 years after the Respondent registered the Domain Name the Complainant's homedepotinstaller.com domain name which was simply the singular form of the Domain Name and currently redirects to a web site launched on February 3, 2016. The Complainant neither notified the Respondent nor did they issue a cease and desist notification to the Respondent in regards to homedepotinstallers.com at any time between May 7, 2012 and January 12, 2016. The Respondent never authorised the Complainant to complete this registration. Instead the Complainant proceeded in bad faith to deceitfully register homedepotinstaller.com unbeknownst to the Respondent and filed this unsubstantiated UDRP Complaint a few weeks later in an attempt to hijack the Domain name at the expense of Respondent's business.
C. Additional Submissions
a) The Complainant's additional and new submissions can be summarised as follows:
The Respondent has not presented any evidence of a legitimate interest in the Domain Name and cannot rebut Complainant's evidence that Respondent registered or used the Domain Name in bad faith.
If it were correct that being a frequent customer and a member of Complainant's loyalty rewards program for professionals gave the Respondent the legitimate right to use the Complainant's mark in the Respondent's Domain Name then each of the millions of Complainant's customers would have such rights and Complainant would lose the ability to control its trade marks.
Respondent admits that as a Pro Rewards/Pro Xtra customer since 2011 he has knowledge of the Complainant's rights in the HOME DEPOT mark prior to his registration of the Domain Name, that the Domain Name contains the Complainant's mark and that the Domain Name was used as a marketing tool for Respondent's own competing business venture.
The likelihood that Internet users will confuse the Domain Name with the Complainant's mark HOME DEPOT is not eliminated or diminished by the addition of the word 'installers', it is increased.
The 'WhoIs' database merely provides information on registrants and registrars of registered domain names and would not contain information on whether Complainant offered installation services in any particular geographic area, but Complainant is certain it is the only owner of a US registration for HOME DEPOT covering installation services filed in September 2011 and with a first use date of 1979, being well in advance of the date the Domain Name was registered. Complainant’s use of its HOME DEPOT mark is neither generic nor descriptive and is fully entitled to the protection of the law. Whether the Respondent thought the Complainant was well known in his geographical location for installation services has no import in this dispute and does nothing to rebut Complainant’s prima facie showing that Respondent lacks any right or legitimate interest in the Domain Name.
Respondent's business name is Alan Goldberg Contractors, not Home Depot Installers. Here Respondent has provided no concrete evidence of having any rights in Complainant's HOME DEPOT mark.
Respondent registered the Domain Name after the Complainant acquired its rights in the HOME DEPOT mark and admits that his intent in registering the Domain Name was to promote his business which includes the installation of the Complainant's products. It is therefore undeniable that the Respondent was aware of the Complainant's rights when he registered the Domain Name and registered it to capitalise on Complainant's goodwill in its mark.
After receipt of the Complaint the Respondent modified its website to a 'Website Coming Soon' holding page.
Even if the Respondent can permissibly offer services relating to the installation of the Complainant's product he has no right to register or use HOME DEPOT formative domain names.
Respondent has not established Complainant brought this claim in bad faith or with intent or knowing disregard of any legitimate interests of the Respondent. It is because of Respondent's wrongful registration of the Domain Name that Complainant was unable to register both the plural and singular forms of homeinstaller.com/homeinstallers.com. Complainant has not engaged in domain name reverse hijacking.
The Respondent's additional and new submissions can be summarised as follows:
Complainant has used tactics to misrepresent and divert attention or obfuscate substantial facts and points made by the Respondent.
On the grounds that the Complainant is not legally authorised in the State of California to perform installation services it is impossible for the Respondent to carry out a competing business venture.
Out of the cases cited by the Complainant ten of them only resulted in a transfer status because the Respondent failed to respond, in other words judgement in default. The four remaining cases either lacked valid testimony or involved domain names that were exact verbatim copies of the Complainant's mark.
At the time the Complainant initiated this dispute the Domain Name did resolve to a live web page which depicted the Respondent with his truck and had no similarity to the Complainant or its marks. Acting in good faith the Respondent updated his web site to include a disclaimer clearly stating no association or affiliation with the Complainant. Complainant has attached a hard copy exhibit stating there was a coming soon page on Respondent's web site on March 24, 2016, however the attachment clearly reads 'March 25, 2016' a date on which the Respondent's web site containing the aforementioned disclaimer which only shows bad faith on the Complainant's part for submitting misleading evidence.
Relating to domain name hijacking after Complainant filed this complaint a Senior Recruiter from Home Depot Installer relations proceeded to reach out to Respondent with a solicitation to join their newly formed Home Dept. 'installer team as an authorised service provider.
The Complainant group of companies is the owner of the HOME DEPOT trade mark and, through its predecessors in interest and licensees, commenced use of the trade mark HOME DEPOT at least as early as 1979 in connection with home improvement retail store services and related goods and services using it in commerce since that time in the USA and abroad. It uses the domain name homedepot.com in connection with the advertising of its products and services on the Internet.
Registered May 2012, the Domain Name resolved to a page that stated 'HOME DEPOT INSTALLERS' and then in much smaller writing against a photograph of the Respondent and his truck, so quite difficult to read, 'At Alan Goldberg Contractors we proudly install any products available at the Home Depot.' ('the Former Wording') and giving a phone number. At the top there is a link to 'Our Website' which offered the Respondent's installation services which are not authorised or connected to the Complainant. After notice to the Respondent of this dispute the disclaimer 'We are not affiliated with the Home Depot' was added and although bigger than the Former Wording, it is still substantially smaller than 'HOME DEPOT INSTALLERS' and is again difficult to read especially 'Home Depot' which is grey against a grey area of the photograph. The site attached to the Domain Name was also changed to a 'Coming soon' page. Respondent has been a member of Complainant's loyalty rewards program for professionals since 2011. Recently the Respondent was sent an e mail from the Complainant's installer relations department offering information on becoming an authorised service provider. The Respondent appears to have not, in fact, become such an authorised service provider.
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.
Apart from the .com suffix which is not taken into account for the purposes of the Policy, the Domain Name consists of the Complainant's HOME DEPOT registered trade mark and the generic word "installers." It is commonly accepted under the Policy that the addition of an ordinary generic word does not serve to distinguish a domain name from a Complainant's mark. See Broadcom Corp v Domain Depot FA 96854 (Nat. Arb. Forum Apr 23 2001) (finding the broadcomonline.com domain name is confusingly similar to the complainant's BROADCOM mark); see also Jerry Damson Inc. v Tex Intl Prop. Assocs., FA 916991 (Nat.Arb.Forum Apr 10, 2007) ("The mere addition of a generic top-level domain ("gTLD") ".com" does not serve to adequately distinguish the Domain Name from the mark.") The Panelist finds that the Domain Name is confusingly similar to the Complainant's registered trade mark HOME DEPOT for the reasons given above and as such the Complainant satisfies para 4(a) (i) of the Policy. The first use in commerce and first trade mark registration of HOME DEPOT by the Complainant precedes the registration of the Domain Name by the Respondent and need not be for the same goods and services for which the Respondent is using the mark for the purposes of this limb of the Policy, but, in any event, these latter considerations are more properly considered in the second and third limbs of the Policy test covered below.
Respondent argues that he has a legitimate interest in the Domain Name as he says it was used in connection with a bona fide offering of services and the Complainant's raw goods. He says that he uses the Complainant's products in the creation of his final products and services, namely electrical and construction projects. He maintains that he has clearly identified his status and independent relationship to the Complainant on his web site describing his business truthfully to include the installation of products purchased from the Complainant's company. The Respondent says he does not suggest he is a retailer of the Complainant's products. He says his use supports the Complainant's rights in the HOME DEPOT mark by proudly using materials from the Complainant and directing the Respondent's customers to the Complainant's business. He says that after the Complainant acting in good faith he updated web site to include a disclaimer clearly stating no association or affiliation with the Complainant.
He also argues that the Complainant condoned and facilitated the Respondent's activities as a HOME DEPOT tradesperson as he has been enrolled for 4 years as a registered tradesperson of the Complainant through its prorewards/proextra program. He produced evidence that after Complainant filed this complaint a Senior Recruiter from Home Depot's installer relations department contact him explaining the Complainant was looking for service providers to become authorised service providers for the Complainant.
It appears the Complainant has approached the Respondent to become an authorised installer, but Respondent has not become so authorised. There is no record of the criteria for becoming such an authorised supplier in the evidence, but such an offer is likely to include detail as to how the Respondent can use the Complainant's marks once licensed. It seems clear that membership of a loyalty rewards program will not ordinarily confer a licence to use a trade mark and there is no evidence of such a licence. The Panelist agrees with the Complainant that all the Complainant's customers in loyalty programs cannot by virtue simply of that fact have the right to use the Complainant's trade mark in a domain name and without restriction. It seems the Respondent is under a misapprehension that he has authorisation or tacit authority to use the Complainant's trade marks, but there is no evidence of permission, agreement or acquiescence. Delay can be a factor in UDRP cases sometimes if by passage of time it becomes hard to decide the case, but delay in itself is not acquiescence or a ground for denial of transfer under the Policy if all other limbs of the Policy are otherwise satisfied. It seems it is possible for service providers like the Respondent to become an authorised installer of the Complainant's products, but no agreement has been reached between the Complainant and Respondent to make the Respondent an authorised service provider to the Complainant.
The Panelist has had an opportunity to review the Respondent's web site. It was not clear to the Panelist upon a quick review of the site as it originally appeared without a disclaimer whether it was a site authorised by the Complainant or not. The Complainant's mark HOME DEPOT appears very prominently, much more prominently that the actual name of the Respondent's business Alan Goldberg Contractors. The wording containing the name of the Respondent’s business was much smaller and much more difficult to read and it remained so after the disclaimer was used and the disclaimer itself was much smaller and also difficult to read. The Respondent does not appear to be commonly known as 'Home Depot Installers' but has a very different trading name. Further, despite the contentions of the Respondent that he is using the name honestly and descriptively and directing people to the Complainant it appears undisputed that the web site in fact diverts users by means of a link at the top of the site attached to the Domain Name to the Respondent's business which is unconnected to the Complainant. The Domain Name leads with the Complainant’s trade mark in its entirety and the site connected to the Domain Name prominently uses the Complainant's marks so as to make it unclear as to the provenance of the site connected to the Domain Name. As such the web site must be considered to be misleading and the Panelist finds that Respondent has attempted to represent himself as connected with or authorised by the Complainant by his use of the Domain Name and prominent use of the Complainant's HOME DEPOT mark on his web site when he was not. Previous panels have also found that use by a respondent of a confusingly similar domain name to a well-known mark of the Complainant to attract Internet users to a competing web site does not constitute a bona fide offering of goods and services nor a legitimate or non-commercial fair use. See Alcon Inc. v ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) The Respondent maintains that because the Complainant does not have a relevant licence in the state where the Respondent is based then his use is not competing. Competing is not geographically defined and it seems clear the Complainant does offer installation services. As such the Panelist finds that Respondent has used the Domain Name in a confusing manner on the Internet in relation to competing services and, in light of the findings below on bad faith, lacks rights or legitimate interests in the Domain Name.
Respondent does not deny actual knowledge of the Complainant and its business. Having found that the Respondent's web site is confusing and misleading panelist believes that the Respondent has intentionally attempted to attract for commercial gain internet users to his web site by creating a likelihood of confusion as to the source or endorsement of his web site by unduly prominent use of the Complainant's marks under Para 4(b)(iv) of the Policy and also causing disruption to the Complainant a competitor within the ordinary and non- geographically limited meaning of that term under Para 4(b) (iii) of the Policy. See DatingDirect.com Ltd. v Aston, FA 593977 (Nat. Arb. Forum Dec. 28 2005)('Respondent is appropriating Complainant's mark to divert Complainant's customers to Respondent's competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy 4(b)(iii). Also Asbury Auto, Group, Inc v Tex, Int'l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent's use of the domain name to advertise car dealerships that competed with the Complainant's business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith registration and use pursuant to Policy 4(b)(iv). See also MathForum.com, LLC v Weiguang Huang, D2000-0743 (WIPO Aug.17, 2000) (finding bad faith under Policy 4(b)(iv) where the respondent registered a domain name confusingly similar to the Complainant's mark and the domain name was used to host a commercial web site that offered similar services offered by the Complainant under its mark). Accordingly,the panelist finds that the Domain Name has been registered and used in bad faith under Policy 4(a)(iii).
Reverse Domain Name HIjacking
Given the above findings that the Complainant has satisfied all the limbs of
the Policy the Panelist finds the Complainant has not indulged in any domain
name reverse hijacking. See World Wrestling Fed'n Entm't, Inc. v Ringside
Collectibles, D2000-1306 (WIPO Jan, 24, 2001) (Because complainant has
satisfied all of the elements of the Policy respondent’s allegation of reverse
domain name hijacking must fail') see also Gallup Inc v PC+s.p.r.l., FA
190461 (Nat. Arb. Forum Dec 2, 2003)(finding no reverse domain name hijacking where
complainant prevailed). The contentions re the evidential copy of the Respondent's
site used by the Complainant could be explained as a cached copy on the Complainant's
network of the previous version of the site, there is no definitive evidence as
to how this occured. The Complainant is entitled to register domain names
containing its mark plus generic terms and states it registered the singular
homeinstaller.com when the Domain Name itself was not available which would
appear reasonable since the distinctive part of the Domain Name is its own
trade mark.
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 <homedepotinstallers.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: April 7, 2016
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