Home Depot Product Authority, LLC v. Mo Asad
Claim Number: FA1710001756384
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Mo Asad (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homerepairdepot.net>, registered with GoDaddy.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically October 31, 2017; the Forum received payment October 31, 2017.
On October 31, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <homerepairdepot.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 31, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@homerepairdepot.net. Also on October 31, 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 November 22, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Contentions in this Proceeding:
Complainant, Home Depot Product Authority, LLC., is the world’s largest home improvement specialty retailer and the fourth largest retailer in the U.S. Complainant, uses the HOME DEPOT marks to provide and market its products. 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). See Compl. Ex. B. Respondent’s <homerepairdepot.net> is confusingly similar as it contains Complainant’s mark in its entirety, merely adding the descriptive term “repair” between the two words in the mark and the generic top level domain (“gTLD”) “.net.”
Respondent has no rights or legitimate interests in the <homerepairdepot.net> 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 to make a legitimate non-commercial or fair use. Rather, Respondent is using the disputed domain name to redirect Internet users and offer goods and services that attempt to directly compete with Complainant.
Respondent registered and used the <homerepairdepot.net> domain name in bad faith. Respondent uses the disputed domain name to divert Internet users from Complainant to Respondent’s resolving website for commercial gain. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the HOME DEPOT marks.
Respondent’s Contentions in Response in this Proceeding:
Respondent filed no Response. Respondent registered the <homerepairdepot.net> domain name September 14, 2017. See Compl. Ex. A.
Complainant established rights and legitimate interests in the disputed domain name and the mark contained within it in its entirety.
Respondent has no such rights or legitimate interests.
Respondent registered a confusingly similar disputed domain name containing the protect mark of Complainant in its entirety.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 or Confusingly Similar:
Complainant’s rights in the HOME DEPOT mark are based upon its registration with the USPTO (e.g., Reg. No. 2,314,081, registered Feb. 1, 2000). See Compl. Ex. B. Registration with the 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)). The Panel finds that Complainant has rights in the HOME DEPOT mark pursuant to Policy ¶ 4(a)(i).
Next, Complainant asserts that <homerepairdepot.net> is confusingly similar to the HOME DEPOT mark as it contains the mark in its entirety and adds the descriptive term “repair” along with the gTLD “.net.” Such 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, 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 finds that the <homerepairdepot.net> domain name does not contain changes that distinguish it from the HOME DEPOT mark and it is confusingly similar to the mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark and contains the mark in its entirety; Complainant satisfied the elements of ICANN 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), and then the burden of proof shifts to Respondent to show it does have such 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 <homerepairdepot.net> as Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the HOME DEPOT mark in any way. Where a response is not filed, 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 “Mo Asad.” 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 is not commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evidenced by failure to use the name for bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that Respondent’s <homerepairdepot.net> is attempting to redirect Internet users to Respondent’s website to sell products and services that directly seek to compete with Complainant. The use of a confusingly similar domain name to sell products or services in competition with the complainant who owns that mark does not give rise to any legitimate interest in the domain name See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Respondent’s website directly advertises home repair services identical to those of Complainant. See Compl. Ex. D. Therefore, the Panel finds that such use is not in connection with a bona fide offering of goods or services.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing in its entirety Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant 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 evidence 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). Respondent is advertising repair services that compete with identical services offered by Complainant and is using Complainant’s HOME DEPOT mark to do so. See Compl. Ex. D. The Panel finds that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Lastly, Complainant argues Respondent must have had actual knowledge of Complainant’s HOME DEPOT mark and business because 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. 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.) Respondent’s website prominently features the color orange to advertise its handyman repair services, a color famously associated with Complainant and Complainant’s services. Moreover, Respondent specifically uses white lettering on an orange background, mimicking the famous Home Depot logo. See Compl. Ex. D. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the HOME DEPOT marks, which supports a finding of bad faith under Policy ¶ 4(a)(iii), based on the nominal use of name and color and based on the use made of the disputed domain name.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <homerepairdepot.net> domain name be TRANFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 4, 2017.
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