Home Depot Product Authority, LLC v. Investor Live / inslive
Claim Number: FA1808001801430
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Investor Live / inslive (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <homedepotcomsurvey.info> and <homedepotcomopinion.info>, 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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on August 15, 2018; the Forum received payment on August 15, 2018.
On August 16, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <homedepotcomsurvey.info> and <homedepotcomopinion.info> domain names (the “Domain Names”) are registered with GoDaddy.com, LLC and that Respondent is the current registrant of both of them. 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 August 16, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of September 5, 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@homedepotcomsurvey.info, and postmaster@homedepotcomopinion.info. Also on August 16, 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 September 10, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name-holder.” The available evidence indicates that both of the Domain Names are registered by the same person or entity. The information submitted to The Forum confirms that both are registered to “Investor Live” and that the registrant organization for both is “inslive.” The WHOIS records submitted as Complaint Exhibit A confirm that the registrant organization is “inslive” and list the Province of Uttarakhand in India as the registrant address for both Domain Names. The Doman Names were registered the same day, May 12, 2018, and the web sites resolving from both of them are identical. On this evidence the Panel finds that both Domain Names are registered to the same person or entity and will proceed as to both of them.
A. Complainant
Complainant is the world’s largest home improvement specialty retailer and the fourth largest retailer in the United States, with annual worldwide sales of more than $100.9 billion. Complainant registered its HOME DEPOT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,314,081) on February 1, 2000. Respondent’s Domain Names are confusingly similar to Complainant’s HOME DEPOT mark in that they incorporate the mark in its entirety, merely adding the generic terms “com;” and “survey” or “opinion;” and the generic top-level domain (“gTLD”) “.info.”
Respondent does not have rights or legitimate interests in the Domain Names. Complainant has not licensed or otherwise authorized Respondent to use its HOME DEPOT mark in any way, and Respondent is not commonly known by either of the Domain Names. Respondent is not using the Domain Names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the Domain Names resolve to websites featuring links to surveys with numerous embedded sponsored advertisements. If clicked, the advertisements connect the user to a page with third party ads.
Respondent registered and is using the Domain Names in bad faith. Respondent attempts to divert Internet users to Respondent’s website and create confusion with Complainant’s mark for Respondent’s commercial gain. Further, Respondent registered the Domain Names with full knowledge of Complainant’s rights in the HOME DEPOT mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 registered its HOME DEPOT mark with the USPTO (Reg. No. 2,314,081) on February 1, 2000. See, Complaint Ex. B. Registration of a mark with a governmental trademark authority such as the USPTO is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i). BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (holding that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).
Respondent’s Domain Names are confusingly similar to Complainant’s HOME DEPOT mark because each incorporates the mark in its entirety, altering it only by adding the generic terms “com,” and “survey” or “opinion;” and the gTLD “.info.” The addition of generic terms and a gTLD is not sufficient to distinguish a Domain Name from a mark. 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)).
For the reasons discussed above, the Panel finds that the Domain Names are identical or confusingly similar to the HOME DEPOT mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) it is not affiliated with or authorized by Complainant to use Complainant’s mark in any way, (ii) it is not commonly known by the Domain Names, and (iii) it is not using the Domain Names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because using a domain name to redirect Internet users interested in a complainant’s goods or services to a purported informational site containing advertisements and links to third-party web sites cannot constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use. These allegations are supported by competent evidence.
The information furnished to The Forum by the registrar and shown in the WHOIS report for the Domain Names submitted as Complaint Exhibit A identify “Investor Live” as the registrant and “inslive” as the registrant organization of both Domain Names. These names bear no resemblance to either Domain Name. UDRP panels have consistently held that WHOIS information showing a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant states that Respondent is not affiliated with it in any way, and that it has never authorized Respondent to use its HOME DEPOT mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complaint Exhibit D contains screenshots of the web sites resolving from both Domain Names. As stated in the Multiple Domain Names analysis above, they are identical. On the first page they purport to list surveys about the goods and services of a number of businesses, including Wegmans, McDonalds, Burger King, Kroger, and Home Depot. The second page contains a block containing the words “Opinion Survey” printed in white on an orange background, the same orange color featured by Complainant in its advertising. The title of the page resolving from both Domain Names states in bold letters at the top, “Home Depot Survey at www.homedepot.com/survey & Opinion,” which is a misleading variation of the Domain Name. The page then discusses the opportunity for the user to begin a survey about Complainant, but off to the right-hand side of the page are purported links to surveys about the other businesses listed on the first page. Complainant alleges that clicking on these links redirects the user to a page which features ads from and further links to third party advertisers. See, Complaint Exhibit E. The third page of the Exhibit D web site features a picture of a typical Home Depot Store. The Exhibit D web site is obviously intended to, and does, convey the impression that it is a Complainant site, or one affiliated, sponsored or endorsed by Complainant. This obviously deceptive and disingenuous practice cannot under any circumstances be deemed to be in good faith. Using a domain name to offer generic links to various services has been held by UDRP panels not to qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum August 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product of service on your web site or location.
The evidence of Respondent’s use of the Domain Names set forth above in the rights and legitimate interests analysis also supports a finding of bad faith use and registration. Respondent registered and is using the Domain Names to attract, for commercial gain, Internet users to its web sites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of their web sites as described in Policy ¶ 4(b)(iv).
Respondent is obtaining commercial gain from its use of the Domain Names and their resolving web sites. When a visitor to these sites clicks on one of the links which appear there, Respondent receives compensation from the various website owners who are forwarded from the site. Most likely, Respondent receives compensation based upon the number of hits the web site owners get from being linked to its web site. See AllianceBernstein LP v. Texas International Property Associates - NA NA, Case No. D2008-1230 (WIPO, 2008), and Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, 2007), (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
In, AllianceBernstein, supra, the respondent registered the domain name <allaincebernstein.com>, which was almost identical to complainant’s ALLIANCEBERNSTEIN mark. The domain name led to a search directory website with links to third party vendors, including competitors of Complainant. Id. The panel inferred that the respondent received click-through fees by directing users to various commercial websites through these links and found that the respondent’s use was for commercial gain and was a bad faith use of the domain name under Policy ¶ 4(b)(iv). Id.
In Brownells, supra, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed. Id. The respondent’s website offered pay-per-click links to hunting equipment and related items. Id. The panel found that the links were provided purely for respondent’s commercial gain. Id.
Here, Respondent’s generation of click-through fees from its Domain Names results from pay-per-click links and by itself constitutes commercial gain. Furthermore, and similar to the facts in AllianceBernstein and Brownells, Respondent’s use of the Domain Names and the resolving web sites results in a commercial gain for others by forwarding visitors to third parties. Just as commercial gain was sought by the respondents in the abovementioned cases, commercial gain was sought by Respondent here for itself and the various website owners who are forwarded from the links at the Domain Names. There is no other rational explanation for Respondent having registered and maintained the Domain Names and resolving them to a pay-per-click site with commercial links. Respondent’s use of the Domain Names is commercial because the various companies forwarded from the websites benefit from the subsequent interest and purchases of those who visit the site. UDRP Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See, Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO, 2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Secondly, given the world-wide notoriety of Complainant and its mark, the length of time it has been in business, and the fact that Respondent's web sites display the HOME DEPOT mark along with other widely-recognized features associated with Complainant, e.g., the orange color, the format, font and style of printed material, and the frequent references to Complainant, by name on the web pages, it is obvious that Respondent had actual knowledge of Complainant and its HOME DEPOT mark when it registered the Domain Names on May 12, 2018. See, Complaint Exhibit A for date of registration. The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name is 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).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <homedepotcomsurvey.info> and <homedepotcomopinion.info> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: September 12, 2018
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