Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting
Claim Number: FA1706001738124
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, U.S.A. Respondent is Samy Yosef / Express Transporting (“Respondent”), California, U.S.A.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotbuilders.com>, registered with GoDaddy.com, LLC.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 30, 2017; the Forum received payment on June 30, 2017.
On July 3, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <homedepotbuilders.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 July 3, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 24, 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@homedepotbuilders.com. Also on July 3, 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 July 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the world’s largest home improvement specialty retailer and registered the HOME DEPOT mark with the United States Patent and Trademark Office (“USPTO”) in furtherance of its business. Respondent’s <homedepotbuilders.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark because the domain name incorporates that mark in its entirety and merely adds the generic term “builders” and a generic top-level domain (“gTLD”), “.com.”
Respondent has no rights or legitimate interests in the <homedepotbuilders.com> domain name. Respondent is neither commonly known by the disputed domain name nor has Complainant authorized Respondent to use its HOME DEPOT mark. Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent is using the domain name to resolve to a website that appears to be a webpage for a home remodeling and construction company called “Home Depot Builders”, a use that is in direct competition with Complainant.
Respondent registered, and is using, the <homedepotbuilders.com> domain name in bad faith. Respondent is using the disputed domain name to divert Internet users, seeking Complainant’s services, to Respondent’s website, in order to offer competing products and services. Furthermore, the notoriety of the HOME DEPOT mark allows the inference that Respondent had actual knowledge of Complainant’s rights in the mark at the time Respondent registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set for the below, the Panel finds Complainant is entitled to the requested relief of transfer of the <homedepotbuilders.com> domain name.
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.
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 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.”).
The first prong of Policy ¶ 4(a)(i) requires that a complainant demonstrate its rights in a trademark. Complainant claims to have registered the HOME DEPOT mark—used in home improvement retailing—with the USPTO as early as 1987 (Reg. No. 1,431,636, registered Mar. 10, 1987), which it contends demonstrates its longstanding rights in the marks. Registration of a mark with the USPTO and other entities sufficiently establishes the required rights in the mark for purposes of the Policy. 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 METROPICS mark through its registration with the United States Patent and Trademark Office). Accordingly, the Panel concludes that Complainant has established its rights in the HOME DEPOT mark under Policy ¶ 4(a)(i).
The second component of Policy ¶ 4(a)(i) requires that complainants demonstrate that the disputed domain name is identical or confusingly similar to the mark or marks at issue. Here, Complainant argues that the disputed domain name is confusingly similar to its HOME DEPOT mark because it is composed entirely of the mark, with only two minor additions: the descriptive term “builders” (which refers to Complainant’s home improvement retailing business), and a “.com” gTLD. The addition of descriptive words—especially those related to a complainant’s corporate activities—fails to sufficiently distinguish domain names from registered marks. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).). Further, the addition of gTLDs are insufficient to preclude a finding of confusing similarity. See, e.g., Scott Elowitz Photography, LLC v. zhang yinfeng / Hengshui Fn Fur Trading Co., Ltd, FA 1534428 (Forum Jan. 22, 2014) (holding, “The <lenscoat.org> domain name is identical to Complainant’s LENSCOAT under Policy ¶ 4(a)(i), because the domain name fully appropriates the mark and its affixation of the gTLD “.org” is insufficient to distinguish it from the mark.”). Therefore, this Panel finds that the additions made to Complainant’s HOME DEPOT mark in Respondents <homedepotbuilders.com> domain name do not serve to differentiate the two for the purposes of Policy ¶ 4(a)(i).
Complainant has proved this element
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), and then the burden shifts to Respondent to show it does have 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 argues that Respondent has no rights or legitimate interests in the <homedepotbuilders.com> domain name as required by Policy ¶ 4(a)(ii). In addition to asserting that it has neither authorized nor licensed Respondent’s use of the HOME DEPOT mark, Complainant contends that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). When a respondent fails to submit a response, panels may look to the WHOIS records to establish the lack of affiliation between a registrant and a domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The WHOIS information concerning the disputed domain name identifies “Samy Yosef” as the registrant and Complainant argues this provides no evidence that Respondent is commonly known by the domain name. The Panel concludes that Respondent is not commonly known by, and thus lacks rights and legitimate interest in, the <homedepotbuilders.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant further argues that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent is using the domain name to resolve to a website that looks like a home page for a home remodeling and construction company called “Home Depot Builders”, a website that is in direct competition with Complainant. Using a disputed domain name to redirect Internet users to a website offering competing services is not considered to make a bona fide offering of goods or services or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(i) & (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Respondent’s resolving website does appear to offer home improvement products and services that directly compete with Complainant’s business. Therefore, the Panel holds that Respondent is not using the <homedepotbuilders.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant has proved this element.
Complainant alleges that Respondent is using the disputed domain name to attract Internet users, seeking Complainant’s services, to Respondent’s website, for the purpose of commercial gain. Using a disputed domain name to offer competing products or services is evidence of bad faith. See CAN Financial Corporation v. William Thomson / CAN Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services). As noted previously, Respondent’s resolving website appears to offer home improvement products and services that directly compete with Complainant’s business. Therefore, the Panel finds that Respondent registered, and is using, the disputed domain name in bad faith.
In analyzing bad faith, the Panel may also look beyond the enumerated parameters of Policy ¶ 4(b) to the totality of the circumstances surrounding a particular dispute. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”). Complainant argues that, due to the notoriety of the HOME DEPOT mark, Respondent must have had actual knowledge of Complainant’s rights in that mark, and therefore that Respondent registered and is using the disputed domain name in bad faith. The fact that a respondent is using a domain name to offer services or products identical to Complainant’s services or products, combined with a sufficiently well-known mark, can sufficiently evince a finding of bad faith. 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 and in competition with Complainant.”). Respondent’s resolving webpage for the confusingly similar domain name offers home remodeling services in direct competition with Complainant. Furthermore, the Panel finds that the HOME DEPOT mark is sufficiently well-known to corroborate a finding of bad faith, especially since that mark is already used in connection with Complainant’s website. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights and Respondent registered and uses the <homedepotbuilders.com> domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <homedepotbuilders.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: July 28, 2017
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