Home Depot Product Authority, LLC v. Jetley, Ishan
Claim Number: FA2105001945507
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Jetley, Ishan (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotcenter.com>, registered with Network Solutions, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 18, 2021; the Forum received payment on May 18, 2021.
On May 23, 2021, Network Solutions, LLC confirmed by e-mail to the Forum that the <homedepotcenter.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 May 24, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 2021, 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@homedepotcenter.com. Also on May 24, 2021, 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 June 18, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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
Home Depot is the world’s largest home improvement specialty retailer and the sixth largest retailer in the United States. Complainant has rights in the HOME DEPOT mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,297,161, registered September 18, 1984). Respondent’s <homedepotcenter.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark as it merely adds the generic word “center” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.
Respondent lacks rights or legitimate interests in the <homedepotcenter.com> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the HOME DEPOT mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses it to pass off as Complainant.
Respondent registered and uses the <homedepotcenter.com> domain name in bad faith. Respondent uses the disputed domain name to pass off as Complainant. Additionally, Respondent had actual knowledge of Complainant’s rights to the HOME DEPOT mark prior to registering the disputed domain name based on Respondent’s use of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Home Depot Product Authority, LLC (“Complainant”), of Atlanta, GA USA. Complainant is the owner of domestic and international registrations for the mark HOME DEPOT, and variations thereof, consisting of the family of Home Depot marks. Complainant has used the mark continuously since at least as early as 1979, in connection with home improvement retail store services, related goods and products, and gift cards.
Respondent is Ishan Jetley (“Respondent”), of Los Angeles, CA, USA. Respondent’s registrar’s address is listed as Herndon, VA, USA. The Panel notes that the <homedepotcenter.com> domain name was registered on or about September 20, 2002.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the HOME DEPOT mark through Complainant’s registration of the mark with the USPTO (e.g., Reg. No. 1,297,161, registered September 18, 1984). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). 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 here finds Complainant has demonstrated rights in the HOME DEPOT mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <homedepotcenter.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark as it merely adds the generic word “center” and the gTLD “.com” to Complainant’s mark. Adding a generic word and a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The Panel here finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
Rights or Legitimate Interests
The Panel notes that 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”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <homedepotcenter.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the HOME DEPOT mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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 to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. 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 for the disputed domain name lists the registrant as “Jetley, Ishan,” and Respondent provides no evidence to indicate that Respondent was authorized to use the HOME DEPOT mark. The Panel here finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <homedepotcenter.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses it to pass off as Complainant. Passing off as a complainant may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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, Complainant provides screenshots showing the disputed domain name resolves to a website that features ticket and venue information and the HOME DEPOT logo. Complainant argues such use of Complainant’s trademarks is clearly intended to confuse and deceive consumers into believing they have reached an official website of a venue owned by Complainant, namely the Home Depot Center sports complex, which now operates under a different name. The Panel here finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant contends Respondent registered and uses the <homedepotcenter.com> domain name in bad faith as Respondent uses the disputed domain name to pass off as Complainant. Using a disputed domain name to pass off as a complainant can demonstrate bad faith per Policy ¶ 4(b)(iv). See The Prudential Insurance Company of America v. Henrique Bryan Souza / DATAMIX ENSINO DE INFORMATICA, FA 1718308 (Forum Apr. 3, 2017) (finding bad faith where the respondent used the disputed domain name to resolve to a website upon which the respondent imitated the complainant’s mark, logo, and color scheme to create a “strikingly similar” website). The Panel notes again that Complainant provides screenshots showing the disputed domain name resolves to a website that features ticket and venue information and the HOME DEPOT logo. The Panel here finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant also contends Respondent registered the <homedepotcenter.com> domain name in bad faith as Respondent had actual knowledge of Complainant’s rights to the HOME DEPOT mark prior to registering the disputed domain name based on Respondent’s use of Complainant’s mark. Use of a mark to divert Internet traffic to a disputed domain name can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith per Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant argues that Respondent’s use of the HOME DEPOT mark demonstrates Respondent’s actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name. The Panel here finds Respondent’s actions support a finding that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <homedepotcenter.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 1, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page