DECISION

 

Home Depot Product Authority, LLC v. Manish Prajapati

Claim Number: FA2310002067440

 

PARTIES

Complainant is Home Depot Product Authority, LLC ("Complainant"), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Manish Prajapati ("Respondent"), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <home-depot-usa.com>, registered with HOSTINGER operations, UAB.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 23, 2023; Forum received payment on October 23, 2023.

 

On October 25, 2023, HOSTINGER operations, UAB confirmed by e-mail to Forum that the <home-depot-usa.com> domain name is registered with HOSTINGER operations, UAB and that Respondent is the current registrant of the name. HOSTINGER operations, UAB has verified that Respondent is bound by the HOSTINGER operations, UAB 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 October 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 2023 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-usa.com. Also on October 27, 2023, 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On November 17, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A. Complainant

1.       Respondent's <home-depot-usa.com> domain name is confusingly similar to Complainant's HOME DEPOT mark.

 

2.       Respondent does not have any rights or legitimate interests in the <home-depot-usa.com> domain name.

 

3.       Respondent registered and uses the <home-depot-usa.com> domain name in bad faith.

 

B. Respondent did not file a Response.

 

FINDINGS

Complainant is a well-known home improvement retailer that holds a registration for the HOME DEPOT mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,314,081, registered February 1, 2000).

 

Respondent registered the <home-depot-usa.com> domain name on July 13, 2023, and uses it to promote advertising related to home improvement.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The Panel finds that Complainant has rights in the HOME DEPOT mark through registration with the USPTO. 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).").

 

Respondent's <home-depot-usa.com> domain name uses Complainant's HOME DEPOT mark and simply adds hyphens, "usa" and the ".com" gTLD. These changes do not sufficiently distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See AB Staffing Solutions, LLC v. Andrew Boyanowski, FA 2008215 (Forum Sep. 13, 2022) ("Respondent's <ab-staffing.com> domain name uses the dominant portion of Complainant's mark, namely "AB STAFFING," and merely adds a hyphen and the same gTLD that Complainant uses, ".com."  It is well-settled that the addition of a gTLD and a hyphen does not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). … The Panel finds that Respondent's <ab-staffing.com> domain name is confusingly similar to Complainant's AB STAFFING SOLUTIONS mark.").  Therefore, the Panel finds that Respondent's <home-depot-usa.com> domain name is confusingly similar to Complainant's HOME DEPOT mark.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 contends that Respondent lacks rights and legitimate interests in the <home-depot-usa.com> domain name as Respondent is not commonly known by the domain name and Complainant has not authorized or licensed to Respondent any rights in the HOME DEPOT mark. The WHOIS information for the disputed domain name lists the registrant as "Manish Prajapati". Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same); see also 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)").

 

Complainant argues that Respondent fails to use the <home-depot-usa.com> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent is using the disputed domain name to provide advertising for home improvement services. Using a disputed domain name to provide links related to a complainant's business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See LF, LLC v. christopher watts, FA 2060826 (Forum Oct. 5, 2023) (no legitimate use where Respondent was likely harvesting user information from "Leave a Comment" form and financially benefitting from monetized advertisements); see also LF, LLC v. alan wacker, FA 2030689 (Forum March 4, 2023) (no bona fide use where disputed domain's "sole apparent use has been for a misleading website that attempts to pass off as Complainant in order to display advertisements, promote affiliated websites, or phish for users' information"). Complainant provides screenshots showing that Respondent uses the disputed domain name to provide links related to Complainant, using Complainant's mark and logo, and also solicits comments. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant contends that Respondent registered and uses the <home-depot-usa.com> domain name in bad faith to divert traffic to its website featuring links related to Complainant. The Panel agrees and finds bad faith attraction for commercial gain under Policy ¶ 4(b)(iv).  See Société Air France v. Whois Privacy Contact, Netim / Buddhika Athauda, D2018-1206 (WIPO July 2, 2018) (finding bad faith where it was "much more likely that the Respondent's intention was to attract visitors who were searching for the Complainant or material about its services and then earn revenue by the use of sponsored links").

 

Complainant also claims that Respondent had knowledge of Complainant's rights in the HOME DEPOT mark when it registered the <home-depot-usa.com> domain name, due to the fame of the HOME DEPOT mark. The Panel agrees, noting that Respondent uses Complainant's marks and images on the resolving website, and finds further bad faith under Policy ¶ 4(a)(iii). See Home Depot Product Authority, LLC v. Stephen Sands, FA 1918929 (Forum Nov. 27, 2020) ("In the present case, Complainant's trademark is well known. It is difficult to envisage any use of the disputed domain name that would not violate the Policy).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

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-usa.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated: November 19, 2023