Home Depot Product Authority, LLC v. John M McCarthy Sr
Claim Number: FA1706001737592
Complainant is Home Depot Product Authority, LLC ("Complainant"), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is John M McCarthy Sr ("Respondent"), Nebraska, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <thehomedepotconnectedhome.com> and <homedepotconnectedhome.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 27, 2017; the Forum received payment on June 27, 2017.
On June 28, 2017, GoDaddy.com, LLC confirmed by email to the Forum that the <thehomedepotconnectedhome.com> and <homedepotconnectedhome.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2017 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@thehomedepotconnectedhome.com, postmaster@homedepotconnectedhome.com. Also on June 28, 2017, the Written Notice of the Complaint, notifying Respondent of the email 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 July 21, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is the world's largest home improvement specialty retailer and the fourth largest retailer in the United States, with more than 2,200 retail stores and annual sales of more than $94 billion. Complainant and its predecessors in interest have used HOME DEPOT, THE HOME DEPOT, and related marks continuously since at least 1979. Complainant owns numerous U.S. registrations for the marks and also claims common law rights. Complainant asserts that the marks are well known and famous.
Respondent registered the disputed domain names <thehomedepotconnectedhome.com> and <homedepotconnectedhome.com> in November 2014. Complainant contends that these domain names are confusingly similar to its marks. Complainant notes that it sells various goods and services that are connected with the home, some of which are able to connect to the Internet and be controlled remotely; and therefore the phrase "connected home" is closely related to Complainant's own goods and services. Complainant states that Respondent has no relationship, affiliation, connection, endorsement, or association with Complainant; that Respondent has never received any authorization, permission, or license to use Complainant's marks; and that Respondent is not known by the disputed domain names.
The domain names resolve to a website that advertises home repair services of three companies in the Omaha, Nebraska, and Council Bluffs, Iowa, metro area. Complainant asserts that Respondent receives compensation whenever an Internet user clicks on one of these links.
Complainant contends, on the grounds set forth above, that the disputed domain names are confusingly similar to marks in which Complainant has rights; that Respondent has no rights or legitimate interests in the domain names; and that the domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used 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.").
The disputed domain name <thehomedepotconnectedhome.com> combines Complainant's registered trademark THE HOME DEPOT with the term "connected home," which is closely related to Complainant's own goods and services, omitting the spaces and adding the ".com" top-level domain. The other disputed domain name, <homedepotconnectedhome.com>, does the same with Complainant's HOME DEPOT mark. These modifications do not substantially distinguish the domain names from Complainant's marks. See, e.g., Homer TLC, Inc. v. Elan Maher, FA 1613402 (Forum May 18, 2015) (finding <homedepotvinyl.com> and <homedepotfloors.com> confusingly similar to THE HOME DEPOT). The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
Each of the disputed domain names incorporates Complainant's mark without authorization, and apparently their sole use has been to display links to competing businesses, presumably for commercial gain. Such use does not give rise to rights or legitimate interests. See, e.g., Homer TLC, Inc. v. Above.com Domain Privacy, FA 1563415 (Forum July 3, 2014). Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and have been used in bad faith. Under paragraph 4(b)(iii) of the Policy,
bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent's registration of domain names that combine Complainant's well-known marks with a term related to Complainant's business, together with the use of those domain names to link to commercial websites that compete with Complainant, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. See, e.g., Homer TLC, Inc. v. Above.com Domain Privacy, supra. Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thehomedepotconnectedhome.com> and <homedepotconnectedhome.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 27, 2017
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