DECISION
Home Depot Product Authority, LLC v. Srujan Kumar Avula
Claim Number: FA2409002116357
PARTIES
Complainant is Home Depot Product Authority, LLC ("Complainant"), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Srujan Kumar Avula ("Respondent"), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotsurvey.org>, registered with NameCheap, Inc.
PANEL
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.
James Bridgeman SC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on September 19, 2024; Forum received payment on September 19, 2024.
On September 19, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <homedepotsurvey.org> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 September 20, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 2024 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@homedepotsurvey.org. Also on September 20, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.
On October 11, 2024 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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
Complainant claims rights in the HOME DEPOT and THE HOME DEPOT marks established by its ownership of the portfolio of registrations described below and extensive use of the marks in its business, claiming to be is the world's largest home improvement specialty retailer and the fourth largest retailer in the United States, with worldwide sales in fiscal year 2023 of $152.7 billion, more than 2,300 retail stores in the U.S., Canada, and Mexico, including stores in Puerto Rico, the U.S. Virgin Islands, and Guam.
Complainant alleges that the disputed domain name is identical or confusingly similar to the HOME DEPOT mark in which it has rights, arguing that disputed domain name incorporates Complainant's HOME DEPOT mark in its entirety, merely adding the generic words "survey" and the generic Top-Level Domain ("gTLD") extension <.org>.
Complainant contends that simply adding descriptive or generic words is not sufficient to differentiate a disputed domain name from the mark it incorporates per Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) ("[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).").
Furthermore, Complainant argues that the addition of a generic top-level domain, such as <.org> is irrelevant in determining similarity of <homedepotsurveys.org> to Complainant's HOME DEPOT marks. See, Thirty & Co. v. Jake Marcum, Marcum Creative, LLC, WIPO Case D2016-1212 ("The addition of the generic Top-Level Domain ".org" does not differentiate the disputed domain name from Complainant's mark.");
Complainant next alleges that Respondent has no rights or legitimate interest in the disputed domain name arguing that
· Respondent has no relationship, affiliation, connection, endorsement or association with Complainant;
· Respondent has never requested or received any authorization, permission or license from Complainant to use the HOME DEPOT mark in any way;
· there is no information available in the WHOIS record to suggest that Respondent is known by the disputed domain name <homedepotsurvey.org>;
· given Complainant's long-time and extensive world-wide rights in the HOME DEPOT marks in connection with home improvement retail stores and related goods and services Respondent could not have rights in the HOME DEPOT marks unless Complainant granted them, and Complainant has granted no such rights;
· a screen capture exhibited in an annex to the Complaint shows that the disputed domain name directs to a website that was clearly designed to mislead users into believing that they have reached a website that is affiliated with or endorsed by Complainant;
· for example, the HOME DEPOT marks are prominently displayed throughout the website, including in the top left corner, before leading into information regarding Complainant's customer survey;
· using Complainant's trademark to pass itself off as Complainant online is not a legitimate or bona fide offering of goods and services as found in Am. Int'l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant's mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name);
· while Respondent's website purports to be established to carry out a "Home Depot Survey," which includes information regarding how to enter into" a Home Depot survey", it is abundantly clear that Respondent's use is not purely informational and the website appears to have been created to obtain personal information from users who are misled by the website's relationship with Complainant: for example, the "Privacy Policy" page states that "we receive the visitor's name from the comments. Also, we obtain the visitor's IP address for spam detection.";
· additionally, the heading "Homedepot.com/survey" is displayed in the top left corner of the <www.homedepotsurvey.org> website, which further contributes to the misleading of users into believing that the <www.homedepotsurvey.org> website is affiliated with Complainant, because Complainant has a webpage <homedepot.com/survey> on its own official website at <www.homedepot.com>;
· the website to which the disputed domain name resolves also includes sponsored advertisements that redirect Internet users who click on the links to websites that are not related to Complainant's services or survey site, and Complainant submits that such advertisements appear to generate revenue for the Respondent, and as such, the sponsored advertisements cannot be noncommercial and do not qualify as a bona fide offering;
· Respondent's use is therefore not a legitimate use under the Policy.
Complainant next alleges that the disputed domain name was registered and is being used in bad faith arguing that the registrant of the disputed domain name knew of Complainant's rights in the HOME DEPOT marks when the disputed domain name was chosen and registered, and the registrant purposefully misappropriated them.
Complainant contends that it is clear that the disputed domain name was therefore registered with Complainant's HOME DEPOT marks in mind in a deliberate attempt to mislead Complainant's customers. 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.").
As shown in the exhibited screen capture, Respondent is using Complainant's HOME DEPOT mark featured within the website address at <www.homedepotsurvey.org> to misdirect Internet traffic and mislead Internet users into believing that Respondent's website is an official site of Complainant to obtain personal information.
Suh use of the disputed domain name to pass off as Complainant through a website address is evidence that Respondent had knowledge of the HOME DEPOT mark and has registered and is using the disputed domain name in bad faith.
Also as described above, the website to which the disputed domain name resolves displays sponsored advertisements for which Respondent would expect to receive revenue and such use of a confusingly similar domain name to redirect Internet users to a website containing advertisements and links to third party websites for commercial gain which is also indicative of bad faith registration and use per Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant is a home improvement specialty retailer and is the owner of the HOME DEPOT and THE HOME DEPOT trademarks for which it holds a portfolio of registered trademarks including the following registrations:
· United States trademark registration THE HOME DEPOT, registration number 2,825,232, registered on the Principal Register on March 23, 2004 for goods in international class 2;
· United States service mark registration THE HOME DEPOT, registration number 4,220,687, registered on the Principal Register on October 9, 2012, for services in international class 37; and
· United States trademark registration THE HOME DEPOT & Design, registration number 1,297,161, registered on the Principal Register on September 18, 1984.
Complainant has an established Internet presence and maintains its principal website for its home goods retail goods and services at <www. homedepot.com>.
The disputed domain name <homedepotsurvey.org> was registered on March 8, 2023, and resolves to a website that provides links to third party websites, while it primarily purports incentivize consumers to complete a survey about Complainant's business by offering an opportunity to enter into a sweepstake for "a $5,000 Home Depot gift card." The following disclaimer is posted on the website: "Homedepotsurvey.org is not affiliated with HomeDepot.com. It is an educational resource for learning about the Home Depot survey's benefits, how your feedback is used to improve the company, and how to access and complete the survey at www.homedepot.com/survey. You can also find Sweepstakes details, requirements, rules, and essential details of the survey."
There is no information about Respondent, who availed of a privacy service to conceal his identity as the registrant of the disputed domain name except for that provided in the Complaint as amended, the Registrar's WhoIs, and the information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain name for the purposes of this proceeding.
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
Complainant has provided uncontested convincing evidence of its rights in the HOME DEPOT and THE HOME DEPOT marks established by its ownership of the portfolio of registrations described above and extensive use of the marks in its business, claiming to be is the world's largest home improvement specialty retailer and the fourth largest retailer in the United States, with worldwide sales in fiscal year 2023 of $152.7 billion, more than 2,300 retail stores in the U.S., Canada, and Mexico, including stores in Puerto Rico, the U.S. Virgin Islands, and Guam.
The disputed domain name <homedepotsurvey.org> consists of Complainant's HOME DEPOT trademark in its entirety in combination with the descriptive word "survey" and the generic Top Level Domain ("gTLD") extension <.org>.
It is well established that when a domain name contains a complainant's mark in its entirety as in the presence it is sufficient to satisfy the first element in the test in Policy ¶ 4(a)(i).
In the circumstances of this case the gTLD extension <.org> within the disputed domain name may be ignored for the purposes of comparing Complainant's mark and the disputed domain name, because it would be considered by Internet users to be a necessary technical element for a domain name registration.
This Panel finds therefore that the disputed domain name is confusingly similar to the HOME DEPOT mark in which the Complainant has rights and the Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Rights or Legitimate Interests
In its Complaint, Complainant has made out a prima facie case that the Respondent has no rights legitimate interests in the disputed domain name as set out in Complainant's detailed submissions above.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant's registered trademark HOME DEPOT is the initial and only distinctive element in the disputed domain name.
The disputed domain name <homedepotsurvey.org> was registered on March 8, 2023, by which time Complainant had a long established goodwill and reputation in the HOME DEPOT mark, being the fourth largest retailer in the United States, with worldwide sales in fiscal year 2023 of $152.7 billion.
It is improbable that the registrant of the disputed domain name was unaware of Complainant's mark, particularly since the mark itself refers to Complainant and its business. The very composition of the disputed domain name itself infers that the Internet user will find a survey relating to Complainant and its business when visiting the website to which the disputed domain name resolves.
On the balance of probabilities, therefore, this Panel finds that the disputed domain name was chosen and registered with Complainant's mark in mind with the intention of taking predatory advantage of Complainant's rights and goodwill in the HOME DEPOT mark.
The uncontested evidence in the form of the exhibited screen capture shows that the disputed domain name resolves to a website that provides links to third party websites while it primarily purports incentivize consumers to complete a survey about Complainant's business by offering an opportunity to enter into a sweepstake for "a $5,000 Home Depot gift card."
The following disclaimer is posted on the website: "Homedepotsurvey.org is not affiliated with HomeDepot.com. It is an educational resource for learning about the Home Depot survey's benefits, how your feedback is used to improve the company, and how to access and complete the survey at www.homedepot.com/survey. You can also find Sweepstakes details, requirements, rules, and essential details of the survey."
Furthermore Respondent allows third party advertisements delivering cookies to Internet users to populate the resolving website which expressly states "[a]ds appearing on any of our websites may be delivered to the users by the advertising partners,who may set the cookies."
The website proceeds to announce that "these cookies will allow the ad server to recognize your computer each time they send you an online advertisement to compile information about you or others who use your computer."
Such use of Complainant's HOME DEPOT mark within the disputed domain name as the address of the resolving website is on the balance of probabilities intentionally intended to attract and confuse Internet users and cause them to divert their Internet traffic intended for Complainant and misdirect it to Respondent's website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site, which constitutes bad faith for the purposes of the Policy.
In the circumstances of this case, the disclaimer is not sufficient to obviate the intentional confusion which Respondent intends to create among unsuspecting Internet users, many of whom may expect that they are, initially at least vising a website in some way authorized by or maintained by Complainant and may wish to transmit their views to Complainant.
On the balance of probabilities the purported purpose of Respondent's website is disingenuous and the real purpose of the website it to collect personal data from unsuspecting Internet users and possibly gain pay-per-click revenue through links to third party websites at the same time, which constitutes use in bad faith for the purposes of the Policy.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in 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 <homedepotsurvey.org> domain name be TRANSFERRED from Respondent to Complainant.
________________________________________
James Bridgeman SC, Panelist
Dated: October 14, 2024
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