Home Depot Product Authority, LLC v. Stephen pizarro / pizarro and sons
Claim Number: FA1802001770562
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Stephen pizarro / pizarro and sons (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotbuildingmaterials.com>, registered with Launchpad.com Inc.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 6, 2018; the Forum received payment on February 6, 2018.
On Febuary 6, 2018, Launchpad.com Inc. confirmed by e-mail to the Forum that the <homedepotbuildingmaterials.com> domain name is registered with Launchpad.com Inc. and that Respondent is the current registrant of the name. Launchpad.com Inc. has verified that Respondent is bound by the Launchpad.com Inc. 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 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 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@homedepotbuildingmaterials.com. Also on February 7, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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
Complainant is a home improvement retail store that offers home installation goods and services. Complainant has rights in the HOME DEPOT mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,314,081, registered Feb. 1, 2000). Respondent’s <homedepotbuildingmaterials.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark as Respondent adds the generic terms “building” and “materials” as well as the “.com” generic top level domain (“gTLD”) to Complainant’s mark.
Respondent has no rights or legitimate interests in the <homedepotbuildingmaterials.com> domain name as Respondent has no relationship with Complainant and is not commonly known by the disputed domain name. Furthermore, Respondent attempts to pass itself off as Complainant and sell competing goods and services as well as redirecting users to Complainant’s competitors and this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and used the <homedepotbuildingmaterials.com> domain name in bad faith. Respondent uses the <homedepotbuildingmaterials.com> domain name to compete with Complainant or Complainant’s business. Additionally, Respondent had actual knowledge of Complainant’s rights in the HOME DEPOT mark at the time Respondent registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <homedepotbuildingmaterials.com> 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.
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 to have rights in the HOME DEPOT mark through trademark registrations with the USPTO. Registering a mark with the USPTO is sufficient to establish rights in said mark pursuant to Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum Jul. 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Here, Complainant provides copies of its USPTO registrations for the HOME DEPOT mark (e.g., Reg. No. 2,314,081, registered Feb. 1, 2000). The Panel finds Complainant has sufficiently demonstrated its rights in the HOME DEPOT mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <homedepotbuildingmaterials.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark as Respondent adds generic terms and a gTLD to the mark. Such changes to a complainant’s mark does not negate any confusing similarity between the disputed domain name and said mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). As Complainant contends, Respondent adds the terms “building” and “materials” and a “.com” gTLD to Complainant’s mark. The Panel finds Respondent’s <homedepotbuildingmaterials.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues Respondent has no rights or legitimate interests in the <homedepotbuildingmaterials.com> domain name as Respondent has no relationship with Complainant and is not commonly known by the disputed domain name. In the event a respondent fails to submit a response to UDRP proceedings, panels have used WHOIS information to determine whether respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum Jun. 9, 2015) (concluding that the respondent was not commonly known by the <amazondevice.org>, <amazondevices.org> and <buyamazondevices.com> domain names under Policy ¶ 4(c)(ii), as the pertinent WHOIS information identified “Timothy Mays,” “Linda Haley,” and “Edith Barberdi” as registrants of the disputed domain names). Here, WHOIS information for the disputed domain name identifies Respondent as “Stephen Pizarro / Pizzaro and sons.” The Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use at the <homedepotbuildingmaterials.com> domain name as Respondent is passing off as Complainant to sell competing goods and services. Using a disputed domain name to pass itself off and sell competing goods and services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also 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).”). As Complainant contends, Respondent’s disputed domain name resolves to a website that features a variety of household and home installation goods and services that compete with Complainant’s home improvement business. Therefore, the Panel finds Respondent’s attempts to pass itself off and sell competing good is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Complainant claims users who click on pictures at Respondent’s <homedepotbuildingmaterials.com> domain name are redirected to third party sites that offer competing goods and services. Featuring competing hyperlinks and redirecting users to complainant’s competitors at a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshots of Amazon and EBay that Complainant claims are the resolving websites from Respondent’s hyperlinks on the disputed domain name. The Panel finds Respondent’s redirection of use through competing hyperlinks is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant argues Respondent uses the <homedepotbuildingmaterials.com> domain name to directly compete with Complainant and Complainant’s business by advertising competing goods and services. Offering competing goods and services at a disputed domain name may indicate bad faith registration and use per Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant contends Respondent’s disputed domain name features and advertises home and home installation goods and services in direct competition with Complainant’s home improvement business. Therefore, the Panel finds Respondent registered and used the <homedepotbuildingmaterials.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant argues that in light of the goods and services offered at the <homedepotbuildingmaterials.com> domain name, Respondent knew of Complainant’s rights in the HOME DEPOT mark at the time Respondent registered the disputed domain name. While constructive notice is generally regarded as insufficient to support a finding of bad faith, actual knowledge of a complainant’s rights in a mark prior to registration constitutes bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant contends Respondent offers competing goods and services at the disputed domain name. The Panel finds Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <homedepotbuildingmaterials.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: March 8, 2018
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