Home Depot Product Authority, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2204001994293
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico, Panama (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepottoolrental.com> (the “disputed domain name”), registered with GoDaddy.com, LLC (the “Registrar”).
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.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 28, 2022; the Forum received payment on April 28, 2022.
On May 2, 2022, the Registrar confirmed by e-mail to the Forum that the <homedepottoolrental.com> disputed domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. The Registrar 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 May 3, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 2022 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@homedepottoolrental.com. Also on May 3, 2022, 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 May 31, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the world’s largest home improvement specialty retailer and the fourth largest retailer in the United States, with worldwide sales in fiscal year 2021 of USD 151.2 billion. Complainant Depot has more than 2,300 retail stores in the United States, including stores in other jurisdictions, including Puerto Rico, the United States Virgin Islands, Guam, Canada and Mexico.
Complainant claims rights in the HOME DEPOT trademarks through its registrations with the United States Patent and Trademark Office (“USPTO”), for example, United States Registration No. 2,314,081, registered on February 1, 2000. Complainant also claims common law rights in the trademark since it used the trademark at least as early as 1979 in connection with home improvement retail store services and related goods and services, and since that time, Complainant has continuously used its trademarks in commerce in the United States and abroad.
Complainant’s aforementioned HOME DEPOT trademark and Complainant’s common law trademarks will hereby collectively be referred to as the “HOME DEPOT Mark”).
In addition, Complainant contends that Respondent’s disputed domain name is identical or confusingly similar to Complainant’s HOME DEPOT Mark, as it incorporates the mark in its entirety, only adding the terms “tool” and “rental”, followed by the “.com” generic Top-Level domain (“gTLD”). Complainant further contends that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has rights in the HOME DEPOT Mark based on its trademark registrations with the USPTO and its common law rights. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). In addition, the Panel finds that the disputed domain name is confusingly similar to Complainant’s HOME DEPOT Mark, as it incorporates the HOME DEPOT Mark in its entirety, merely adding the descriptive terms “tool” and “rental” and followed by the gTLD “.com”. The Panel also finds that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith as explained below.
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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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”).
The Panel finds that the disputed domain name is confusingly similar to the HOME DEPOT Mark as set forth below.
First, the Panel concurs that Complainant has common law rights in the HOME DEPOT Mark based on its continuous use of the trademark in commerce since 1979.
Second, Complainant also claims to have rights in the HOME DEPOT Mark through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”); see also Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum December 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”).
Third, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s HOME DEPOT Mark. It contains Complainant’s mark in its entirety with the addition of the terms “tool” and “rental”, and then followed by the gTLD “.com”. Such additions do not prevent the disputed domain name from being confusingly similar to the HOME DEPOT Mark as long as the HOME DEPOT Mark itself is recognizable.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum April 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”).
In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not submit a response to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard pressed to furnish availing arguments had it chosen to respond.
In support, the Panel finds that Respondent is not commonly known by the disputed domain name or any name similar to it, nor has Complainant authorized or licensed Respondent to use its HOME DEPOT Mark in the disputed domain name. In addition, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use.
In particular, the Panel concludes that Respondent does not use the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the disputed domain name resolves to either Complainant’s own website or several third-party websites, including a Chrome extension for online shopping services that features Complainant’s competitors. Presumably, Respondent is gaining a benefit from the series of redirects it uses to reach these third-party websites. Thus, the Panel finds that use for commercial gain of a disputed domain name that is confusingly similar to the HOME DEPOT Mark to redirect Internet users intending to reach Complainant’s website to- third-party websites or Complainant’s own website is not a legitimate noncommercial or fair use of the domain name.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy as described below.
First, the Panel finds that Respondent registered and is using the <homedepottoolrental.com> disputed domain name to divert users to third party competitors. Under Policy ¶ 4(b)(iii), using the disputed domain name to divert Internet users to third-party competitors is evidence of bad faith registration and use. See Univ. of Texas Sys. v. Smith, FA 1195696 (Forum July 7, 2008) (finding that using the resolving website to divert Internet users to complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). In addition, the Panel finds that Respondent registered and is using the <homedepottoolrental.com> disputed domain name to divert users to Complainant’s own website. Under Policy ¶ 4(a)(iii), using the disputed domain name to divert Internet users to Complainant’s own website is evidence of bad faith registration and use. See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”).
Second, the fame of the HOME DEPOT Mark, which was used and registered by Complainant far in advance of Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the HOME DEPOT Mark, and this constitutes bad faith under Policy ¶ 4(a)(iii). It therefore strains credulity to believe that Respondent had not known of the Complainant or its HOME DEPOT Mark when registering the disputed domain name. Thus, as here, prior knowledge of a complainant’s trademarks before registering a confusingly similar domain name is sufficient to find bad faith under Policy ¶4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Third, Respondent has engaged in a longstanding pattern of cybersquatting in registering domain names that infringe on the trademarks of other brand owners. Such cases demonstrate that Respondent has engaged in an extensive pattern of conduct designed to infringe upon the trademarks of others, indicative of bad faith. Evidence that a respondent previously registered domain names containing third-party trademarks establishes a pattern of cybersquatting, demonstrating bad faith registration and use. See Liberty Mutual Insurance Company v. Gioacchino Zerbo, FA1299744 (Forum February 3, 2010).
Specifically, Respondent has been subject to numerous UDRP proceedings in the past. Where a respondent has been subject to multiple past UDRP proceedings, the Panel may find bad faith per Policy ¶ 4(b)(ii). Nearly 400 UDRP cases have been successfully brought against Respondent; moreover, the registered domain names in those cases were transferred to each of the Complainants. See Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2001001878688 (Forum February 6, 2020) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings in which panels ordered the transfer of the disputed domain names containing the trademarks of the complainants). Here, since Respondent has registered and is using a disputed domain name that contains the third-party HOME DEPOT Mark, such conduct is demonstrative of bad faith registration and use under the Policy.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homedepottoolrental.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: June 13, 2022
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