Home Depot Product Authority, LLC v. PROXY PROTECTION LLC
Claim Number: FA1708001745839
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is PROXY PROTECTION LLC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <justinhomedepot.com>, registered with DreamHost, 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 23, 2017; the Forum received payment on August 23, 2017.
On August 29, 2017, DreamHost, LLC confirmed by e-mail to the Forum that the <justinhomedepot.com> domain name is registered with DreamHost, LLC and that Respondent is the current registrant of the name. DreamHost, LLC has verified that Respondent is bound by the DreamHost, 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 August 29, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 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@justinhomedepot.com. Also on August 29, 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 September 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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, Home Depot, is the world’ largest home improvement specialty retailer. Complainant uses its HOME DEPOT mark to promote its goods and services. Complainant has rights in the HOME DEPOT mark based upon registration with the United States Patent and Trade Office (“USPTO”) (e.g., Reg. No. 2,314,081, registered Feb. 1, 2000). Respondent’s <justinhomedepot.com> domain name is confusingly similar as it eliminates the spacing and adds the generic terms “just” and “in” to Complainant’s HOME DEPOT mark.
Respondent lacks rights and legitimate interests in the <justinhomedepot.com> domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent’s use of the HOME DEPOT mark. Further Respondent fails to use <justinhomedepot.com> in connection with a bona fide offer of goods or services or for a legitimate noncommercial or otherwise fair use. Instead, Respondent uses the disputed domain name to pass itself off as Complainant by featuring Complainant’s HOME DEPOT mark, Complainant’s federally registered orange box logo, and products associated with Complainant’s home improvement business.
Respondent registered and uses the disputed domain name in bad faith. Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website through the use of the HOME DEPOT mark and sale of goods that directly compete with Complainant’s business. Respondent also had actual knowledge of Complainant’s rights in the HOME DEPOT mark prior to registration and use of the disputed domain name.
B. Respondent
Respondent failed to file a Response in this proceeding. The Panel notes that the <justinhomedepot.com> domain name was registered on July 2, 2017.
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.”).
Complainant contends it registered its HOME DEPOT mark with the USPTO (e.g. Reg. No. 1,431,636, registered Mar. 10, 1987). Registration of a mark with a trademark authority such as the USPTO is sufficient to establish rights in the mark per Policy ¶ 4 (a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“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.”) As such, the Panel finds Complainant has rights in the HOME DEPOT mark.
Next, Complainant argues that Respondent’s <justinhomedepot.com> domain name is confusingly similar as it eliminates the spacing and adds the generic terms “just” and “in” to Complainant’s HOME DEPOT mark. The elimination of spacing and addition of generic terms are not sufficient to negate confusing similarity. See Oculus VR, v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (concluding that “Panels have consistently held that the addition of a gTLD does not distinguish a domain name from a mark, and that the removal of spaces between words of a mark is irrelevant.”); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). Therefore, the Panel holds that Respondent’s <justinhomedepot.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark.
Complainant argues that Respondent has no rights or legitimate interests in the domain name. Complainant contends that Respondent is not commonly known by the disputed domain, nor has Complainant authorized Respondent to use the HOME DEPOT mark in a domain name. Where no response is on record, WHOIS information is looked to in determining Policy ¶ 4(c)(ii) along with a complainant’s assertions. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel notes that the WHOIS lists “PROXY PROTECTION LLC” as registrant of record. In light of Respondent’s lack of a Response and Complaint’s assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by <justinhomedepot.com> per Policy ¶ 4(c)(ii).
Further, Complainant contends that Respondent fails to use <justinhomedepot.com> in a manner that would represent a bona fide offering of goods or services or a legitimate noncommercial or otherwise fair use. Instead, Respondent allegedly uses the disputed domain name to pass itself off as Complainant by featuring Complainant’s HOME DEPOT mark, Complainant’s federally registered orange box logo and products associated with Complainant’s home improvement business. Evidence of passing off as Complainant may serve as an indication that Respondent engaged in activities establishing no rights or legitimate interests. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). The Panel notes that Respondent indeed incorporates Complainant’s marks, likeness, and competing products on the resolving website. Accordingly, the Panel finds that Respondent, in passing itself off as Complainant online, has made no bona fide offering of goods or services or legitimate noncommercial or otherwise fair use.
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the disputed domain name in bad faith because Respondent intentionally attempts to disrupt or attract, for commercial gain, Internet users to Respondent’s website through the use of the HOME DEPOT mark and sale of goods that directly compete with Complainant’s business. Use of a disputed domain name to pass off as a complainant for a respondent’s benefit is indicative of bad faith registration and use. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). This Panel finds that Respondent has attempted to pass itself off as Complainant, and that its conduct indicates bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Thus, Complainant has also satisfied ¶ 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <justinhomedepot.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: October 4, 2017
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