Home Depot Product Authority, LLC v. Domain Administrator
Claim Number: FA1705001733276
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Domain Administrator (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotbackyard.com>, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 25, 2017; the Forum received payment on May 25, 2017.
On May 25, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <homedepotbackyard.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 June 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 2017 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@homedepotbackyard.com. Also on June 1, 2017, 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 June 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, Home Depot Product Authority, uses the HOME DEPOT mark to provide and market products and services. Complainant has rights in the mark based upon registration with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 2,314,081, registered Feb.1, 2000). Respondent’s <homedepotbackyard.com> is identical or confusingly similar as it contains Complainant’s mark in its entirety, merely adding the descriptive term “backyard” and the generic top level domain (“gTLD”) “.com.”
ii) Respondent does not have rights or legitimate interests in the <homedepotbackyard.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted respondent permission or license to use the HOME DEPOT mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, and endorsement of the website.
iii) Respondent has registered and used the <homedepotbackyard.com> domain name in bad faith. Respondent uses the disputed domain name divert Internet users from Complainant to Respondent’s resolving website for commercial gain. Respondent’s timing of registration represents opportunistic bad faith. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the HOME DEPOT marks.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the disputed domain name was created on April 22, 2017.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 claims rights in the HOME DEPOT mark based upon its registration with the USPTO (e.g., Reg. No. 2,314,081, registered Feb.1, 2000). Registration with USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the HOME DEPOT mark per Policy ¶ 4(a)(i).
Complainant asserts that <homedepotbackyard.com> is confusingly similar to the HOME DEPOT mark as it contains the mark in its entirety and adds the descriptive term “backyard” along with the gTLD “.com.” Panels have consistently found that slight differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark or removal of a space, are irrelevant and do not distinguish the domain name from the mark incorporated therein. See Traditional Medicinals, Inc. v. Flippa Chick FA 1006001328702 (Forum July 15, 2010) (“Respondent’s disputed domain name contains Complainant’s SMOOTH MOVE mark in its entirety after removing the space separating the terms of the mark, adds the descriptive terms “herbal tea” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive terms creates a confusing similarity between the disputed domain name and Complainant’s mark.”) Similarly, the addition of a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant and finds that the <homedepotbackyard.com> does not contain changes that would sufficiently distinguish it from the HOME DEPOT mark.
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), 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) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also 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.”).
Complainant argues that Respondent has no rights or legitimate interests in <homedepotbackyard.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the HOME DEPOT mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WHOIS information of record identifies Respondent as “Domain Administrator.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in 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 therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by their failure to use the name for bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that Respondent’s <homedepotbackyard.com> is attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, and endorsement of the website. Panels have found that a domain name confusingly similar to Complainant’s mark in attempt to mislead visitors to thinking the website belongs to Complainant to collect email addresses of visitors is not a legitimate noncommercial or fair use of the domain name or a bona fide offering of goods and services. See Wikimedia Foundation v. Host Master, Above.com Domain Privacy, D2015-0132 (WIPO March 26, 2015) (use of another's trademark without authority in order to attract visitors for the collection of personal data must clearly negate the legitimacy of the operation). Respondent is using Complainant’s registered orange box logo to mislead visitors into thinking it is the official home page for an upcoming, Atlanta-based outdoor green space. Therefore, the Panel agrees that such a use is not in connection with a bona fide offering of goods or services.
Complainant also argues that Respondent attempts to attract Internet users for commercial gain by creating confusion as to the source sponsorship, affiliation, or endorsement of the disputed domain name. Using a confusingly similar domain name to mislead users can evince bad faith registration and use. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use). The Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues Respondent must have had actual knowledge of Complainant’s HOME DEPOT mark and business because Respondent registered the disputed domain name a day after a press report on the upcoming construction of an outdoor green space to bear the name “Home Depot Backyard”, evidence also support a finding of opportunistic bad faith. Respondent registered the domain name using an added descriptive term coupled with Complainant’s HOME DEPOT mark, which is famous and familiar to countless consumers. Actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name; likewise, opportunistic bad faith may also be proven through consideration of the circumstances surrounding the registration. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.); see also 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). Complainant provides evidence of Respondent’s use to collect personal email addresses for commercial gain and registration of <homedepotbackyard.com> within a day of Complainant announcing plans to construct an outdoor green space of the same name. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the HOME DEPOT marks—and further, that Respondent opportunistically registered the disputed domain name—which supports a finding of bad faith under 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 <homedepotbackyard.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 29, 2017
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