Home Depot Product Authority, LLC v. Morgan Trouard
Claim Number: FA1904001837103
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Morgan Trouard (“Respondent”), represented by Jeffrey D. Harty of Nyemaster Goode, P.C., Iowa, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thdsewerrepair.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 2, 2019; the Forum received payment on April 2, 2019.
On April 3, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thdsewerrepair.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 April 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 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@thdsewerrepair.com. Also on April 4, 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.
A timely Response was received and determined to be complete on April 29, 2019.
On 1st of May 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Beatrice Onica Jarka 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that:
· it is the world’s largest home improvement specialty retailer and the fourth largest retailer in the United States, with annual worldwide sales of more than $100.9 billion.
· It engages in the business of providing home improvement products and services. Complainant has rights in the THE HOME DEPOT mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,825,232, registered Mar. 23, 2004).
· Respondent’s <thdsewerrepair.com> domain name is confusingly similar to Complainant’s mark as it contains the acronym for Complainant’s THE HOME DEPOT mark along with the generic words “sewer” and “repair” and the “.com” generic top-level domain (“gTLD”).
· Respondent has no rights or legitimate interests in the <thdsewerrepair.com> domain name.
· Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark.
· Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent is using the <thdsewerrepair.com> domain name to operate a website purporting to be an official website of Complainant and offering a “Home Depot Sewer Repair System,” presumably for commercial gain.
· Respondent registered and uses the <thdsewerrepair.com> domain name in bad faith as Respondent uses the domain name to divert users to a competitor’s website, disrupting Complainant’s business for commercial gain.
· Further, Respondent is deemed to have constructive knowledge of Complainant’s rights in the THE HOME DEPOT mark given its numerous federal trademark registrations. See Compl. Ex. B.
B. Respondent
By its Response, the Respondent replies that:
· Complainant has not provided any evidence, or even any arguments, that it has protectable trademark rights in the THD mark.
· THE HOME DEPOT mark and the <thdsewerrepair.com> domain name are not similar in sound, meaning or appearance, but convey a very different commercial impression.
· Respondent made demonstrable efforts to work with Complainant in connection with providing trenchless sewer pipe rehabilitation services, as Respondent participated with Complainant’s employees and management at five different retail locations for THE HOME DEPOT.
· Respondent acted under a good faith belief that registration of the domain name was not objected to by Complainant, but was consistent with the shared intent that Respondent would be a service provider for Complainant, providing trenchless pipeline rehabilitation services.
· That is evidenced by the multiple demonstrations performed for the benefit of Complainant and its customers at various retail store locations.
Complainant is the world’s largest home improvement specialty retailer and the fourth largest retailer in the United States, with annual worldwide sales of more than $100.9 billion. Complainant has rights in the THE HOME DEPOT mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,825,232, registered Mar. 23, 2004). The disputed domain name was registered on September 9, 2015 and is confusingly similar to Complainant’s mark as it contains the acronym for Complainant’s THE HOME DEPOT mark along with the generic words “sewer” and “repair” and the “.com” gTLD. Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use, but rather to operate a website purporting to be an official website of Complainant and offering a “Home Depot Sewer Repair System” .
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.
Preliminary Issue: Consent to Transfer
Respondent consents to transfer the <thdsewerrepair.com> domain name to Complainant. However, after the initiation of this proceeding, GoDaddy.com, LLC placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending.
Nevertheless, there is no explicit or implicit consent from the Complainant in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. Moreover, the Respondent indicated expressly that its consent to transfer is optional to its defenses against cybersquatting. The Panel finds that the Respondent, by mentioning its consent to transfer as optional after making its own defenses against the Complainant’s contentions, provides an implicit invitation for the Panel to analyze the case.
Therefore, the Panel decides that it would like to analyze the case under the elements of the UDRP.
Complainant claims rights in the THE HOME DEPOT mark through its registration of the mark with the USPTO (e.g. Reg. No. 2,825,232, registered Mar. 23, 2004). See Compl. Ex. B. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the THE HOME DEPOT mark for the purposes of Policy ¶ 4(a)(i).
On the other side, Respondent argues that Complainant has not provided any evidence, or even any arguments, that it has protectable trademark rights in the THD mark. Nonetheless, the Respondent does not contest that THD stands for the acronym of the Complainant trademark. Although, usually under this element of the Policy, no analysis of the website where the disputed domain resolves to is made, this Panel considers in this case that the display of the Complainant’s THE HOME DEPOT on this website, is an indication that not even the Respondent is persuaded that the Complainant has to provide protectable trademark rights in the THD mark, since these letters contains the acronym for Complainant’s THE HOME DEPOT mark.
Complainant next argues that Respondent’s <thdsewerrepair.com> domain name is confusingly similar to Complainant’s mark as it contains the acronym for Complainant’s THE HOME DEPOT mark along with the generic words “sewer” and “repair” and the “.com” gTLD. Confusing similarity can be found where a domain name contains an acronym of a complainant’s mark while adding generic terms and a gTLD. See Home Depot Product Authority, LLC v. Kaira John, FA 1828020 (Forum Feb. 26, 2018) (finding that the domain name was confusingly similar where “Respondent’s <mythdhr.online> domain name contains an acronym for Complainant’s THE HOME DEPOT trademark (“thd”), but see also Twentieth Century Fox Film Corporation v. Domain Admin / PrivacyProtect.org / Denis Ferulev, FA 1652313 (Forum Jan. 19, 2016) (“Complainant notes that the domain name contains the recognized acronym for its FAMILY GUY mark, along with the number ‘24’ … the Panel finds that the domain name is confusingly similar to the FAMILY GUY mark under Policy ¶ 4(a)(i).”); Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); Twentieth Century Fox Film Corporation v. oranges are cool XD (NAF FA1405001558045) (“Respondent’s <americanhorrorstorybrasil.com> and <ahsbrazil.com> domain names are confusingly similar to Complainant’s AMERICAN HORROR STORY mark under Policy ¶ 4(a)(i). Respondent’s <americanhorrorstorybrasil.com> domain name eliminates the spaces between the words in Complainant’s mark and adds the geographic term ‘Brasil.’ Additionally, Respondent’s <ahsbrazil.com> domain name features the abbreviation of Complainant’s AMERICAN HORROR STORY mark and also adds the geographic term ‘Brazil.’ . . . Respondent’s use of the acronym AHS does not defeat a claim of confusing similarity of the <ahsbrazil.com> domain name with Complainant’s AMERICAN HORROR STORY mark.”).
Therefore, the Panel finds that the <thdsewerrepair.com> domain name is confusingly similar to the THE HOME DEPOT mark under Policy ¶ 4(a)(i).
Under this element of the Policy, 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”).
Complainant contends that Respondent has no rights or legitimate interests in the <thdsewerrepair.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. 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 Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS identifies “Morgan Trouard” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the mark for any purpose. Accordingly, the Panel agrees that Respondent is not commonly known by the <thdsewerrepair.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent is using the <thdsewerrepair.com> domain name to operate a website purporting to be an official website of Complainant and offering a “Home Depot Sewer Repair System,” presumably for commercial gain. Using a confusingly similar domain name to pass off as a complainant can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) (“The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.”). Complainant provides a screenshot of the resolving webpage, which displays the THE HOME DEPOT mark and accompanying logo and appears to offer “The Trenchless Sewer Repair System By The Home Depot.” See Compl. Ex. D.
In connection to this contention, Respondent replies that it made demonstrable efforts to work with Complainant for providing trenchless sewer pipe rehabilitation services, as Respondent participated with Complainant’s employees and management at five different retail locations for THE HOME DEPOT. The documented participation of the Respondent with Complainant’s employees and management at five different retail locations for THE HOME DEPOT cannot be considered demonstrable efforts to work with Complainant for providing trenchless sewer pipe rehabilitation services, as there is no relationship, affiliation, connection, endorsement or association of the Respondent with Home Depot.
Accordingly, the Panel finds that Respondent rather attempts to pass off as Complainant, failing to use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant claims that Respondent registered and uses the <thdsewerrepair.com> domain name in bad faith as Respondent uses the domain name to divert users to a competitor’s website, disrupting Complainant’s business for commercial gain. Using a confusingly similar domain name to compete with a complainant can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (Finding bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv) where the respondent used the domain name to offer competing cryptocurrency products). As mentioned above, Complainant provides a screenshot of the resolving webpage, which displays the THE HOME DEPOT mark and accompanying logo and appears to offer “The Trenchless Sewer Repair System By The Home Depot.” See Compl. Ex. D. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
In its Response, Respondent argues that it has performed multiple demonstrations for the benefit of Complainant and its customers at various retail store locations, and uses the domain name in furtherance of these efforts. In this sense, the Respondent provides two photographs on page 4 of the Response, showing individuals operating under the THE HOME DEPOT mark at an alleged demonstration. Moreover, Respondent argues that acted under a good faith belief that registration of the domain name was not objected to by Complainant, but was consistent with the shared intent that Respondent would be a service provider for Complainant, providing trenchless pipeline rehabilitation services. As priory mentioned, except for the Respondent’s allegations, there is no indication of a relationship, affiliation, connection, endorsement or association of the Respondent with Home Depot.
Next, Complainant argues that Respondent is deemed to have had constructive knowledge of Complainant’s THE HOME DEPOT mark at the time of registering the infringing domain name. The Panel notes that the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). However, the Panel chooses to analyze whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge does adequately demonstrate bad faith under 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”). Although Complainant only makes arguments for constructive knowledge, stating that Respondent’s knowledge can be inferred given its numerous federal trademark registrations. See Compl. Ex. B.; actual knowledge of the Complainant’s trademark, may be proven, as previous Panel decided, through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). At the time that Respondent registered the disputed domain name, Complainant’s THE HOME DEPOT trademark was already known and familiar to consumers worldwide. It is more than obvious that Respondent was not only familiar with Complainant’s THE HOME DEPOT trademark at the time of registration of the disputed domain name, but intentionally adopted the disputed domain name incorporating Complainant’s trademark acronym in order to create a purported association with Complainant and its products and services.
Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith under 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 <thdsewerrepair.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Beatrice Onica Jarka Panelist
Dated: 11.05.2019
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