DECISION

 

Home Depot Product Authority, LLC v. Nikita Postnov

Claim Number: FA2501002134885

 

PARTIES

Complainant is Home Depot Product Authority, LLC ("Complainant"), represented by Sheri M. Hunter of King & Spalding LLP, Texas, USA. Respondent is Nikita Postnov ("Respondent"), Poland.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thehuskytool.com> (the "Domain Name"), registered with Dynadot Inc.

 

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.

 

Clive Lincoln Elliott K.C. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 13, 2025; Forum received payment on January 13, 2025.

 

On January 15, 2025, Dynadot Inc confirmed by e-mail to Forum that the Domain Name is registered with Dynadot Inc and that Respondent is the current registrant of the name. Dynadot Inc has verified that Respondent is bound by the Dynadot 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 January 16, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 2025, 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@thehuskytool.com. Also, on January 16, 2025, 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.

 

A timely Response was received and determined to be complete on January 27, 2025.

 

On January 28, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Clive Lincoln Elliott K.C. 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a large home improvement specialty retailer, with more than 2,300 retail stores in the United States, Canada and Mexico.

 

Complainant, including its predecessor Homer TLC, Inc, commenced use of the mark HUSKY, as well as its well-known HUSKY and Design mark featuring its distinctive husky dog head design ("Complainant's Mark") in connection with hand tools, tool boxes, tool chests, tool organizers and other home improvement products as early as 1924. Since that time Complainant has continuously used Complainant's Mark in commerce in the United States and abroad.

 

Complainant's registrations of Complainant's Mark include the following:

 

 

Complainant is also the registered owner of the domain name <huskytools.com>, which it uses in connection with the advertising of its HUSKY goods on the Internet. This domain name was first registered in 1999 and has been used continuously since that time.

 

According to the publicly available WHOIS the Domain Name was registered on April 22, 2024. The Domain Name directs to a website for a business called "Husky Tool and Storage" which purports to be an official HUSKY online store.

 

Complainant states that due to its long-standing and continuously extensive use of Complainant's Mark world-wide, it has exclusive rights in Complainant's Mark. Complainant further contends that because the Domain Name contains Complainant's Mark in its entirety it creates sufficient similarity to cause confusion, and the addition of the generic descriptive words "the" and "tool" are insufficient to differentiate.

 

Further, Complainant goes on to contend that by adding the word "tool" after Complainant's Mark, it heightens the confusion as it could mislead consumers into believing the website pertains specifically to the tools, tool boxes and related goods sold by Complainant under Complainant's Mark.

 

Complainant asserts that there is no relationship, affiliation, connection or endorsement with Respondent, nor has Complainant given Respondent any authorization to use Complainant's Mark.

 

Complainant notes that there are no disclaimers of non-affiliation on the website and, as such, Complainant submits that Respondent appears to be using the Domain Name to confuse and deceive consumers into believing that Respondent is an official site sponsored or endorsed by Complainant. Further, Complainant argues that Respondent is using Complainant's Mark to pass itself off as Complainant online and that this is not a legitimate or bona fide offering of goods and services.

 

Complainant adds that the Domain Name website appears to offer for sale various tool sets and tool storage products using images, product descriptions, and product names from Complainant's website, although it is unclear whether Respondent is selling genuine products. Complainant submits that such use evidences Respondent's knowledge of Complainant and is indicative of bad faith registration and use.

 

B. Respondent

Respondent denies that the Domain Name was registered with malicious intent and contends that the Google Search engine decided that the Domain Name was the official Husky store and, as such, its position in the search results grew each week. Respondent states that when he first noticed this, he emailed Complainant on December 8, 2024, to agree on a transfer or sale of the domain. Respondent contends that he received no response to his emails.

 

Respondent points out that he is a Russian Federation citizen and insists that he can possibly prove in a Russian court that the Domain Name was purchased legally and that the rights in the Domain in the Russian Federation belong to him. Notwithstanding, Respondent invites Complainant to proffer a purchase price for the Domain Name.

 

FINDINGS

         For the reasons set out below, the Panel is satisfied that Complainant should succeed and that the Domain Name should be transferred to Complainant.

 

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.

 

Identical and/or Confusingly Similar

Complainant claims rights in Complainant's Mark through multiple trademark registrations, as set out above, including with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). Since Complainant provides evidence of registration of Complainant's Mark with the USPTO, the Panel finds that Complainant has demonstrated rights in Complainant's Mark per Policy ¶ 4(a)(i).

 

Complainant argues that the Domain Name is confusingly similar since the Domain Name contains Complainant's Mark in its entirety, and the addition of the descriptive words "the" and "tool" are insufficient to differentiate. That argument has merit. When a disputed domain name wholly incorporates another's mark, additional terms have been found insufficient to defeat a finding of confusing similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."). Given that Respondent only adds descriptive terms and gTLD to Complainant's Mark, the Panel finds the Domain Name confusingly similar to Complainant's Mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests.

 

Complainant argues that Respondent has no rights or legitimate interests in the Domain Name, because Respondent is not commonly known by the Domain Name and Complainant has never licensed rights to or authorized Respondent to use Complainant's Mark. Respondent does not dispute this. Instead, he argues that the Domain Name was registered without malicious intent on his part. However, Complainant has not alleged malicious intent, and the absence of such intent is irrelevant.

 

What is relevant is Respondent's other main submission, which is that the Google Search engine "decided that the Domain Name was the official Husky store and, as such, its position in the search results grew each week". That is hardly surprising given that Complainant alleges Respondent is using Complainant's Mark to pass itself off as Complainant online. Further, Complainant alleges, without contradiction from Respondent, that the Domain Name website appears to offer for sale various tool sets and tool storage products using images, product descriptions, and product names from Complainant's website.

 

The use of a confusingly similar domain name to deceive and divert customers away from a complainant does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).").

 

Similarly, the use of the Domain Name to offer goods or services that are similar to and compete with those of Complainant is not bona fide or legitimate. See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).

 

On that basis, Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use of the Domain Name under Policy ¶¶ 4(c)(i) and (iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the Domain Name in bad faith by directing customers and potential customers to a website that offers goods similar to, and in competition with, Complainant. The Panel finds that the offer of goods that compete with those offered by Complainant, in this way and as set out above, shows bad faith disruption of a complainant's business pursuant to Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA 1762308 (Forum Jan. 9, 2018) (finding that Respondent's use of the disputed domain name to offer competing loan services disrupts Complainant's business under Policy ¶ 4(b)(iii)).

 

Given Complainant's long-standing use of Complainant's Mark, the absence of any explanation for registering and using the Domain Name and Respondent's attempts to leverage an advantageous sale of the Domain Name to Complainant, the Panel is satisfied that bad faith has been established.

 

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 Domain Name be TRANSFERRED from Respondent to Complainant.

 

 

___________________________________

 

Clive Lincoln Elliott K.C., Panelist

Dated: February 10, 2025