Home Depot Product Authority, LLC v. FAG / yiming liu
Claim Number: FA1901001827397
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is FAG / yiming liu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <home-depot-com-survey.com>, registered with NameSilo, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 29, 2019; the Forum received payment on January 29, 2019.
On January 29, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <home-depot-com-survey.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 30, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 2019 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@home-depot-com-survey.com. Also on January 30, 2019, 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 February 21, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 has used the trademarks HOME DEPOT and THE HOME DEPOT since 1979 in connection with home improvement retail store services and related goods and services. Complainant has rights in the HOME DEPOT trademark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,314,081, registered Feb. 1, 2000).
Respondent’s <home-depot-com-survey.com> domain name is confusingly similar to Complainant’s HOME DEPOT trademark, as it incorporates the trademark in its entirety; merely adding the generic top-level domain (“gTLD”) “.com” and the generic term “survey.”
Respondent has no rights or legitimate interests in the <home-depot-com-survey.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the HOME DEPOT trademark in any manner. 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, the disputed domain name resolves to a page that hosts pay-per-click advertisements to third-party websites that compete with Complainant’s business.
Respondent registered and is using the <home-depot-com-survey.com> domain name in bad faith. Respondent uses the disputed domain name to divert users to a third party website that competes with Complainant’s business. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights in the HOME DEPOT trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the following U.S. trademark registrations:
No. 2,825,232 THE HOME DEPOT (word), registered March 23, 2004 for goods in classes 6, 11 and 16;
No. 4,220,687 THE HOME DEPOT (word), registered October 9, 2012 for services in class 37;
No. 4,300,027 THE HOME DEPOT (word/colour), registered March 12, 2013 for services in classes 35, 37, 42 and 44;
No. 1,297,161 THE HOME DEPOT (design), registered September 18, 1984 for services in class 42;
No. 1,835,705 THE HOME DEPOT (design), registered May 10, 1994 for services in classes 37, 39 and 42;
No. 2,391,201 THE HOME DEPOT (design), registered October 3, 2000 for goods and services in classes 16, 19, 36, 37, 39 and 41;
No. 4,256,235 THE HOME DEPOT (design), registered December 11, 2012 for goods and services in classes 16, 19, 36, 37, 40 and 41; and
No. 2,314,081 HOME DEPOT (word), registered February 1, 2000 for services in class 35.
Complainant is also the owner of several other valid U.S. trademark registrations including the words “THE HOME DEPOT”.
The disputed domain name was registered on September 28, 2018.
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 rights in the HOME DEPOT trademark based upon registration of the trademark with the USPTO (e.g. Reg. No. 2,314,081, registered Feb. 1, 2000). Registration of a trademark with the USPTO is sufficient to establish rights in that trademark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel therefore holds that Complainant’s registration of the HOME DEPOT trademark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <home-depot-com-survey.com> domain name is confusingly similar to the HOME DEPOT trademark, as it incorporates the trademark in its entirety; merely adding the gTLD “.com” and the generic term “survey.” The Panel notes that the gTLD “.com” is not only added as the traditional address ending of the domain name, but in fact is also a part of the disputed domain name. However, addition of a gTLD and/or a generic term to a complainant’s trademark is not sufficient to overcome a confusingly similar analysis 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).). Further, the addition of hyphen does not overcome a confusingly similar analysis under Policy ¶ 4(a)(i). See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").
In this case, <home-depot-com-survey.com> is very similar to Complainants own domain name, used for Complainant’s official web site: <homedepot.com>, and if the additions of “com” and “survey” have any influence on the similarity consideration, it is the Panels conclusion that these additions only even more clearly refer to Complainant’s web site, goods and services.
The Panel therefore agrees that the disputed domain name is confusingly similar to Complainant’s HOME DEPOT trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 that Respondent has no rights or legitimate interests in the <home-depot-com-survey.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the HOME DEPOT trademark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from complainant to use its mark may be evidence that respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies the owner of the disputed domain name as “FAG / yiming liu” and no information on record indicated Respondent was authorized to register a domain name with Complainant’s mark.
The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <home-depot-com-survey.com> domain name.
Complainant further argues that Respondent’s lack of rights and legitimate interests in the <home-depot-com-survey.com> domain name is demonstrated by its failure to use the disputed domain name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant instead contends that the name resolves to a website which is being used to hosts pay-per-click advertisements to third-party websites that compete with Complainant’s business. Use of a disputed domain name to commercially benefit from competing, pay-per-click links is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel therefore determines that Respondent does not have rights or legitimate interests in the <home-depot-com-survey.com> domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant claims that Respondent registered and is using the <home-depot-com-survey.com> domain name in bad faith. Specifically, Complainant argues Respondent diverts users away from Complainant’s business to the disputed domain name’s resolving website where it hosts links to competing websites. Use of a disputed domain name to feature competing hyperlinks may be evidence of bad faith under Policy ¶ 4(b)(iii). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”).
The Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Complainant argues that bad faith is demonstrated by Respondent’s actual and constructive knowledge of Complainant’s right in the HOME DEPOT trademark prior to registering the <home-depot-com-survey.com> domain name. However, 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."). Having said that, the Panel however agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”).
As shown by Complainant, the HOME DEPOT trademark is well known in the related business area, and protected by several U.S. national trademark registrations in the name of Complainant. As also noted above, the disputed domain name is created with a clear reference to Complainant’s trademark and official web site, obviously with the goal to make a false impression of being the link to an official customer survey provided by Complainant. The Panel finds Respondent’s actual knowledge constitutes bad faith per 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 <home-depot-com-survey.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: February 23, 2019
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