Home Depot Product Authority, LLC v. Timothy Schultheis
Claim Number: FA1801001768018
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Timothy Schultheis (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <thehomedepothandyman.com>, <yourhomedepothandyman.com>, <thehomedepothandyman.services>, and <thehomedepothandyman.net>, 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.
Vali Sakellarides as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 22, 2018; the Forum received payment on January 22, 2018.
On Jan 23, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thehomedepothandyman.com>, <yourhomedepothandyman.com>, <thehomedepothandyman.services>, and <thehomedepothandyman.net> 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 January 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2018 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@thehomedepothandyman.com, postmaster@yourhomedepothandyman.com, postmaster@thehomedepothandyman.services, and postmaster@thehomedepothandyman.net. Also on January 29, 2018, 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 January 29, 2018.
Additional Submission was received on February 12, 2018.
On February 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Vali Sakellarides 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Home Depot Product Authority, LLC, is the world’s largest home improvement specialty retailer. Complainant, through its predecessors in interest and licensees has used the HOME DEPOT, THE HOME DEPOT and related marks since at least as early as 1979 and has rights in the marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. HOME DEPOT—Reg. No. 3,314,081, registered Feb. 1, 2000; THE HOME DEPOT—Reg. No. 2,825,232, registered Mar. 23, 2004). See Compl. Ex. B. Respondent’s <thehomedepothandyman.com>, <yourhomedepothandyman.com>, <thehomedepothandyman.services>, and <thehomedepothandyman.net> domain names are confusingly similar to Complainant’s marks, as each domain name contains one of the marks in its entirety, and differs only by the addition of generic terms “your” and/or “handyman,” as well as either the “.com,” “.services,” or “.net” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <thehomedepothandyman.com>, <yourhomedepothandyman.com>, <thehomedepothandyman.services>, and <thehomedepothandyman.net> domain names. Although Respondent may have been a contractor that could receive referrals under Complainant’s Pro Referral program, neither Respondent nor his business were permitted to register domain names incorporating the HOME DEPOT marks. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent has used the domain names to redirect to Respondent’s website at the <thehomedepothandyman.com> domain name, which displays Complainant’s logos and marks and offers handyman services in competition with Complainant’s business.
Respondent registered and is using the <thehomedepothandyman.com>, <yourhomedepothandyman.com>, <thehomedepothandyman.services>, and <thehomedepothandyman.net> domain names in bad faith. Respondent offers to sell the names to Complainant for a price in excess of out-of-pocket costs. Additionally, Respondent uses the domain names to advertise its competing services. Further, it is clear Respondent had actual knowledge of Complainant and its rights in the HOME DEPOT marks at the time it registered and subsequently used the domain name.
B. Respondent
Respondent has served as a Home Depot Pro Referred Handyman on Complainant’s Pro Referral Service platform. Respondent created the domain names and associated website in order to promote the relationship with Complainant. Respondent then contacted Complainant and asked it to take a look at the new website which was pointing to the <bayshorehandyman.com> domain name. When Complainant reacted with displeasure, Respondent removed the link and offered to abandon the project and let the domain names expire. Respondent then offered the domain names to Complainant, which said it wanted them.
Respondent claims the domain names do not compete with Complainant’s business, as Complainant does not offer in-house handyman services in its store. Respondent has not tried to pass off as Complainant. At all times, Respondent displayed the Pro Referral Banner to spell out the relationship between it and Complainant.
C. Additional Submissions
In the Complainant’s Additional Submission, filed on February 2, 2018, Complainant claims that Respondent did not present any evidence whatsoever of a legitimate interest in the four domain names and cannot rebut Complainant’s evidence that Respondent registered or used the subject domain names in bad faith.
Complainant claims that Respondent provided in response an uncertified letter with inaccuracies, asserting that Respondent had received referrals for handyman services (along with many other contractors signed up with the Home Depot Pro Referral program), that Respondent was entitled to own the subject domain names and use them to direct customers to the website for its own handyman service and taking advantage of the HOME DEPOT mark for his own monetary gain.
Complainant refutes that it had knowledge of the subject domain names and that Respondent’s use of the domain names to display his own handyman services website originated in Complainant’s legal department. Complainant contacted Respondent to notify him that he was not authorized to register or use domain names incorporating the HOME DEPOT Mark. Complainant is not aware of any prior attempt by Respondent to “invite the Home Depot to look at our new site that was pointing to our BayshoreHandyman.com site.” Respondent refused to transfer the domain names unconditionally unless he was compensated in the amount of $500.
Complainant notes that in Respondent’s response, Respondent admits that it had knowledge of Complainant’s rights in the HOME DEPOT mark prior to his registration of the disputed domain name. In addition, Respondent admits the domain name contains Complainant’s HOME DEPOT mark. Respondent also admits that the domain was used as a marketing tool for Respondent’s own Bayshore Handyman business. Finally, Respondent admits that it sought to sell the subject domain names to Complainant.
Complainant claims that it has made a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain names. Accordingly, the burden has shifted to the Respondent to prove otherwise (Illycaffe S.p.A. v. Mauro Sergio, FA1291791 (Forum Dec. 16, 2009)). Such a showing must rest on some “concrete evidence,” which requires more than personal assertions (Kate Spade, LLC v. Darmstadter Designs, No. D2001-1384 (WIPO Jan. 3, 2002)).
Complainant points out that Respondent’s name is Timothy Schutheis, and its advertised business was “The Bayshore Handyman.” (Response at ¶ 2-3). Neither Respondent nor its business is known by any name incorporated in the domain name, and Respondent did not have permission to register any domain name incorporating the HOME DEPOT Mark or to refer to himself or its business as any name incorporating the HOME DEPOT Mark. Therefore, Respondent has no rights or interests in the disputed domain name. (Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name)).
Complainant claims that Respondent has not made any assertion of a legitimate interest in the disputed Domain and has shown no concrete evidence of having any right in Complainant’s HOME DEPOT mark. Accordingly, Respondent has not shown any legitimate use to satisfy the requirements of Paragraph 4(c) of the Policy.
Complainant further claims that Respondent admitted that its intent in registering the domain was to promote its “Bayshore Handyman” business. Response at ¶¶ 2-3. Thus, Respondent was aware of Complainant’s prior rights in the HOME DEPOT mark and registered the Domain to capitalize on Complainant’s goodwill in its mark. “There is a legal presumption of bad faith when [Respondent] reasonably should have been aware of Complainant’s trademarks, actually or constructively.” (Digi Int’l v. DDI Sys., FA124506 (Forum Oct. 24, 2002)). Respondent also admitted to requesting compensation for unconditional transfer of the subject domain names. Response at ¶ 4 (“Since the Home Depot has requested the names be handed over I felt this was not right. If they want them let them purchase them.”). The $500 price suggested by Respondent is well in excess of the registration fees for the domain names at issue and is sufficient for a finding of bad faith under the Policy. (Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”)).
Complainant notes that after receipt of the Complaint, Respondent modified the website that is displayed at the subject domain names. (A capture Respondent’s website on January 30, 2018, is attached at Exhibit 1.) Said exhibit shows that Respondent has registered three additional domain names incorporating the HOME DEPOT Mark – homedepotcoin.info, homedepotcoin.club, and thehomedepotcoin.io. All three of these domain names are registered to Respondent. (as shown in WHOIS information for these domain names attached - Exhibit 2.) The first two domain names were registered 3 days before the Complaint was submitted to the Forum on January 22, 2018, and thehomedepotcoin.io domain name was registered the day after the Complaint was submitted to the Forum as shown in Exhibit 2. Respondent had registered the thehomedepothandyman.us domain name well before the Complaint, but it could not be incorporated in this UDRP proceeding. In Radisson Hotels Internation, Inc. v. Yue Mei Wang, FA1504001615349 (Forum June 1, 2015), four domain names were registered by the respondent, “which all infringe on Complainant’s mark, constitut[ing] bad faith under Policy ¶ 4(b)(ii).” Complainant claims that Respondent’s pattern of registering eight domain names, with several after being contacted by Respondent, and one after the Complaint was filed, is further evidence of bad faith.
Finally, Complainant points out, as shown in Exhibit 1, that the Respondent’s website for all four subject domain names now has a “Domain For Sale” banner, seems to be promoting a “Home Depot Crypto Coin,” and states that “The best handyman that money can buy can come from the nations leading home improvement supply company.”, the current website further evidencing an intent to profit from the subject domain names (and other domain names incorporating Complainant’s HOME DEPOT Mark), and to creating an appearance of affiliation between Respondent and Complainant’s business, whether real (“home improvement supply company”) or imaginary (“The Home Depot Crypto Coin”).
Complainant, Home Depot Product Authority, LLC, is a very well-known home improvement specialty retailer. Complainant submitted trademark registration certificates with the United States Patent and Trademark Office (“USPTO”), in particular: HOME DEPOT—Reg. No. 3,314,081, registered Feb. 1, 2000; THE HOME DEPOT—Reg. No. 2,825,232, registered Mar. 23, 2004).
Respondent may have been a contractor that could receive referrals under Complainant’s Pro Referral program but neither Respondent nor his business were permitted to register domain names incorporating the HOME DEPOT marks.
Respondent created the domain names and associated website in order to promote the relationship with Complainant. Respondent then contacted Complainant and asked it to take a look at the new website which was pointing to the <bayshorehandyman.com> domain name. When Complainant reacted with displeasure, Respondent removed the link and offered to abandon the project and let the domain names expire.
Recently, Respondent has used the domain names to redirect to Respondent’s website at the <thehomedepothandyman.com> domain name, which displays Complainant’s logos and marks and offers handyman services in competition with Complainant’s business.
Respondent offered to sell the domain names to Complainant for a price in excess of out-of-pocket costs. Additionally, Respondent has used the domain names to advertise its competing services.
In his response, Respondent admitted its actual knowledge of Complainant and its rights in the HOME DEPOT marks at the time it registered and subsequently used the domain name.
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.
Complainant claims rights in the HOME DEPOT and THE HOME DEPOT marks based upon registration of the marks with the USPTO (e.g. HOME DEPOT—Reg. No. 3,314,081, registered Feb. 1, 2000; THE HOME DEPOT—Reg. No. 2,825,232, registered Mar. 23, 2004). See Compl. Ex. B. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the HOME DEPOT and THE HOME DEPOT marks with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <thehomedepothandyman.com>, <thehomedepothandyman.services>, and <thehomedepothandyman.net> domain names are confusingly similar to the THE HOME DEPOT mark, as the names each name contains the mark in its entirety and merely adds the descriptive term “handyman” and the “.com,” “.services,” or “.net” gTLD. Complainant also claims the <yourhomedepothandyman.com> domain name is confusingly similar to the HOME DEPOT mark as it contains the mark in its entirety, plus the terms “your” and “handyman” and the “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The Panel notes each domain name also omits the spacing in the HOME DEPOT marks. The Panel therefore determines the disputed domain names are confusingly similar to the HOME DEPOT and THE HOME DEPOT marks per Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the <thehomedepothandyman.com>, <yourhomedepothandyman.com>, <thehomedepothandyman.services>, and <thehomedepothandyman.net> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the HOME DEPOT marks in a domain name.
WHOIS information supports the finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies Respondent as “Timothy Schultheis,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s marks. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by any of the disputed domain names.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <thehomedepothandyman.com>, <yourhomedepothandyman.com>, <thehomedepothandyman.services>, and <thehomedepothandyman.net> domain names is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the name resolves to a competing website. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). 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).”). Specifically, Complainant contends that the domain names initially all redirected to the website resolving from the <thehomedepothandyman.com> domain name, which advertised the handyman services of a business called “Doitallman.com,” and displayed Complainant’s marks and logos. See Compl. Ex. D. Complainant claims that after it contacted Respondent regarding the domain names, Respondent modified the website to advertise its services as “The Bayshore Handyman” rather than the “Home Depot Handyman” but continued to offer handyman services in competition with Complainant’s business, effectively sidestepping Complainant’s Pro Referral program. See Compl. Ex. E.
The Panel therefore determines that Respondent does not have rights or legitimate interests in the disputed domain names.
Complainant claims Respondent’s offer to sell the <thehomedepothandyman.com>, <yourhomedepothandyman.com>, <thehomedepothandyman.services>, and <thehomedepothandyman.net> domain names for an amount in excess of out of pocket expenses indicates the names were registered and used in bad faith. Where a domain name is offered for sale to a complainant for an amount in excess of estimated out-of-pocket costs, bad faith registration can be presumed per Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Complainant contends that all four domain names currently redirect to a website which displays a message offering to sell the domains to Complainant. See Compl. Ex. F. The Panel therefore finds Respondent’s offer to sell the domain names indicates the names were registered and used in bad faith per Policy ¶ 4(b)(i).
Complainant claims Respondent’s use of the disputed domain names to offer services which are directly competitive with those offered by Complainant indicates Respondent registered and used the domain name in bad faith. Use of a domain name to compete with and disrupt a complainant’s business is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services). Complainant claims Respondent uses the at-issue domain names to advertise remodeling and installations services, which compete with identical services offered by Complainant. See Compl. Exs. D and E. The Panel therefore finds Respondent registered and used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant also contends Respondent registered the <thehomedepothandyman.com>, <yourhomedepothandyman.com>, <thehomedepothandyman.services>, and <thehomedepothandyman.net> domain names with actual knowledge of Complainant's rights in the HOME DEPOT marks. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.").
The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of 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 further asserts that the obvious link between Complainant and the handyman services and explicit references to Complainant advertised and included on the various versions of Respondent’s websites indicates it had actual knowledge of Complainant’s rights. See Compl. Exs. D–F. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the names in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thehomedepothandyman.com>, <yourhomedepothandyman.com>, <thehomedepothandyman.services>, and <thehomedepothandyman.net> domain names be TRASFERRED from Respondent to Complainant.
Vali Sakellarides, Panelist
Dated: 20 February, 2018
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