Home Depot Product Authority, LLC v. M Baharuddin / caraijo.com
Claim Number: FA1705001730284
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is M Baharuddin / caraijo.com (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotblog.com>, registered with CV. Jogjacamp.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically May 4, 2017; the Forum received payment May 4, 2017.
On May 8, 2017, CV. Jogjacamp confirmed by e-mail to the Forum that the <homedepotblog.com> domain name is registered with CV. Jogjacamp and that Respondent is the current registrant of the name. CV. Jogjacamp verified that Respondent is bound by the CV. Jogjacamp registration agreement and 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 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2017, 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@homedepotblog.com. Also on May 11, 2017, 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 June 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 domain name be transferred from Respondent to Complainant.
Complainant’s Contentions in this Proceeding:
Complainant, Home Depot Product Authority, LLC, is a leading home improvement specialty retailer with business based in Atlanta, Georgia, USA. In connection with this business, Complainant uses the THE HOME DEPOT and HOME DEPOT marks to promote its goods and services. Complainant has rights in the marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (E.g. THE HOME DEPOT—Reg. No. 1,188,191, registered Jan. 26, 1982; HOME DEPOT—Reg. No. 2,314,081, registered Feb. 1, 2000). See Compl., at Attached Ex. B. Respondent’s domain name, <homedepotblog.com>, is confusingly similar as it contains Complainant’s mark in its entirety—less the spacing and omission of “THE”—and appends the generic term “blog” and the generic top-level-domain (“gTLD”) “.com” to make it resolve.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. Respondent never requested nor received any authorization, permission or license from Complainant to use the HOME DEPOT marks in any way. Further, Respondent fails to use <homedepotblog.com> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, <homedepotblog.com> resolves to a page containing pay-per-click advertising of Complainant’s competitors for the benefit of Respondent. See Compl., at Attached Ex. D & E (Screenshots of the banner advertising in question and the pages they resolve to).
Respondent registered and is using <homedepotblog.com> in bad faith. Respondent uses the disputed domain name to host pay-per-click advertising of Complainant’s competitors for Respondent’s own commercial gain. Respondent had actual knowledge of Complainant’s rights in the marks, additional evidence of Respondent’s bad faith per Policy ¶ 4(a)(iii).
Respondent”s Contentions in Response in this Proceeding:
Respondent did not submit a Response in this proceeding. The Panel notes that Respondent registered the <homedepotblog.com> domain name May 21, 2015. See Compl., at Attached Ex. A.
Complainant established rights and legitimate interests in the marks contained within the disputed domain name.
Respondent has no such rights to or legitimate interests in the marks or the disputed domain name.
Respondent knowing of Complainant’s rights registered a disputed domain name using in their entirety Complainant’s protected marks and the disputed domain name is confusingly similar to Complainant’s protected marks.
Respondent registered and used the disputed domain name containing Complainant’s protected marks in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical or Confusingly Similar:
Complainant asserts rights in the marks based upon registration with the USPTO (E.g. THE HOME DEPOT—Reg. No. 1,188,191, registered Jan. 26, 1982; HOME DEPOT—Reg. No. 2,314,081, registered Feb. 1, 2000). See Compl., at Attached Ex. B. Registration of a mark with a trademark authority such as the USPTO establishes rights in the mark per Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). The Panel therefore finds that Complainant has rights in the marks.
Next, Complainant contends that Respondent’s domain name, <homedepotblog.com>, is confusingly similar as it contains Complainant’s marks in their entirety—less the spacing and omission of “THE”—and appends the generic term “blog” and the gTLD “.com” to make it resolve. Spacing and the addition of both a generic term and a gTLD do not negate the confusing similarity between a mark and the resulting domain name persuant Policy ¶ 4(a)(i). See State Farm Mutual Automobile Insurance Company v. New Ventures Services, Corp, FA 1647714 (Forum Dec. 17, 2015) (finding that adding the common name “John” to complainant’s STATE FARM mark was insufficient to overcome a determination of confusing similarity.); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel therefore finds that Respondent’s domain name is confusingly similar to Complainant’s marks.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Complainant established rights in its protected mark and that Respondent registered a disputed domain name that contains Complainant’s protected marks and is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant urges Respondent is not commonly known by the disputed domain name. Where no Response is filed, WHOIS information can be considered to make findings that a respondent is not commonly known by a disputed domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (concluding that the respondent was not commonly known by the <amazondevice.org>, <amazondevices.org> and <buyamazondevices.com> domain names under Policy ¶ 4(c)(ii), as the pertinent WHOIS information identified “Timothy Mays,” “Linda Haley,” and “Edith Barberdi” as registrants of the disputed domain names). The WHOIS information of record names the registrant of <homedepotblog.com> as “M Baharuddin.” See Compl., at Attached Ex. A. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by Complainant’s marks. Panels may use such assertions as evidence that Respondent has no rights to or legitimate interests in a mark as well as the domain name using it. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has no relationship, affiliation, connection, endorsement or association with Complainant, and that Respondent never requested nor received any authorization, permission or license from Complainant to use the HOME DEPOT marks in any way. Accordingly, the Panel agrees that Respondent is not commonly known by the <homedepotblog.com> domain name under Policy ¶ 4(c)(ii).
Complainant contends Respondent did not use <homedepotblog.com> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the <homedepotblog.com> domain name resolves to a page containing pay-per-click advertising of Complainant’s competitors for the commercial benefit of Respondent. See Compl., at Attached Ex. D, E (Screenshots of the banner advertising in question and the pages they resolve to). Use of a disputed domain name to resolve to pay-per-click advertising that competes with a complainant indicates a lack of rights and legitimate interests pursuant to Policy ¶¶ 4(c)(i) & (iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services, which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). The Panel therefore finds Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected marks.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected marks; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant urges Respondent registered and uses the <homedepotblog.com> domain name in bad faith. Respondent uses the disputed domain name to host advertising links to competitors of Complainant, presumably to garner pay-per-click fees. A Respondent’s use of a confusingly similar domain name to attract Internet users for commercial gain supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). Complainant provides a screenshot of the resolving webpage for the disputed domain name, which appears to verify the hosting of a website containing hyperlinks. See Compl., at Attached Ex. D & E. The Panel therefore finds Respondent registered and uses the <homedepotblog.com> domain name in bad faith.
Complainant contends as well that Respondent had actual knowledge of Complainant’s rights in the HOME DEPOT and THE HOME DEPOT marks at the time of registering the disputed domain name. While the Panel declines to recognize constructive notice for a finding of bad faith, actual knowledge of another’s rights supports a finding of bad faith registration pursuant to the non-exclusive nature of Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also 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.”). The Panel agrees with Complainant and finds this additional evidence supports findings that Respondent registered and used the disputed domain name in bad faith.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name
containing Complainant’s protective marks in their entirety in bad faith;
Complainant satisfied the elements of ICANN 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 <homedepotblog.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 16, 2017.
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