Home Depot Product Authority, LLC v. Isaac Goldstein
Claim Number: FA1710001756476
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Isaac Goldstein (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myhomedepothr.com>, registered with DropCatch.com 1465 LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 31, 2017; the Forum received payment on October 31, 2017.
On November 2, 2017, DropCatch.com 1465 LLC confirmed by e-mail to the Forum that the <myhomedepothr.com> domain name is registered with DropCatch.com 1465 LLC and that Respondent is the current registrant of the name. DropCatch.com 1465 LLC has verified that Respondent is bound by the DropCatch.com 1465 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 November 3, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@myhomedepothr.com. Also on November 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 November 28, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service
Mark Information: ICANN Rule 3(b)(viii).
Home Depot Product Authority, LLC is the owner of the famous HOME DEPOT and THE HOME DEPOT trademarks. Home Depot Product Authority, LLC, through its predecessors in interest and licensees, including The Home Depot (collectively “Home Depot”), commenced use of the trademarks HOME DEPOT and THE HOME DEPOT (hereinafter the “HOME DEPOT Marks”) at least as early as 1979 in connection with home improvement retail store services and related goods and services, including roofing installation services. Since that time, Home Depot has continuously used the HOME DEPOT Marks in commerce in the United States and abroad.
Today, Home Depot is the world’s largest home improvement specialty retailer and the fourth largest retailer in the U.S., with annual worldwide sales of more than $94 billion. Home Depot has more than 2,200 retail stores in the U.S., including stores in all 50 states, the District of Columbia, Puerto Rico, the U.S. Virgin Islands, and Guam. Home Depot also has retail stores in ten Canadian provinces and Mexico.
In addition to its extensive common law rights, Home Depot owns numerous U.S. federal registrations for its HOME DEPOT Marks, including, among others, the following: THE HOME DEPOT (Reg. Nos. 1,431,636; 2,825,232; 4,220,687; 4,300,027), THE HOME DEPOT & Design (Reg. Nos. 1,297,161; 1,835,705; 1,872,835; 2,391,201; 4,256,235), HOME DEPOT (Reg. No. 2,314,081), THE HOME DEPOT KIDS WORKSHOP (Reg. No. 2,316,186), THE HOME DEPOT FOUNDATION (Reg. No. 3,650,106), HOME DEPOT FUEL (Reg. No. 3,722,317), ECO OPTIONS THE HOME DEPOT & Design (Reg. No. 3,671,105), GET IT INSTALLED THE HOME DEPOT (Reg. No. 3,885,173); THE HOME DEPOT PRO XTRA & Design (Reg. No. 4,392,280), and THE HOME DEPOT SOLUTIONS CENTER (Reg. No. 4,570,737). These registrations are valid, subsisting and enforceable. The HOME DEPOT Marks are distinctive, well-known and famous marks.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
[a.] The <myhomedepothr.com> domain name is confusingly similar to the HOME DEPOT Marks in which Home Depot has trademark rights worldwide.
[i] Home Depot has rights in its trademarks.
The HOME DEPOT Marks have been used in commerce in connection with, among other things, home improvement retail store services since at least as early as 1979. In addition, Home Depot has registered and uses the domain name homedepot.com in connection with the advertising and sale of its products and services on the Internet. Home Depot first registered the homedepot.com domain name in 1992 and has continuously maintained the registration for homedepot.com since that time.
The HOME DEPOT Marks have become highly valuable assets of Home Depot, representing substantial goodwill. The value of these assets has been cultivated as a result of Home Depot’s continuous and exclusive use of the marks for many years, and because of Home Depot’s efforts to promote the mark through the expenditure of substantial sums and careful control of the public perception of both the nature and quality of the services and goods provided in connection with the marks.
It is well established under the Policy that Home Depot’s registration of a mark with federal authority establishes a prima facie case of Home Depot’s rights. See, e.g., Delta Corporate Identity, Inc. and Delta Air Lines, Inc. v. dltaairlines.com and deltaaairlines.com c/o Hanna El Hinn, FA548217 (Forum Oct. 12, 2005), citing Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.”), and Innomed Techs., Inc. v. DRP Servs., FA221171 (Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes complainant's rights in the mark”).
Moreover, while Respondent reportedly resides or otherwise operates in Hong Kong, Complainant’s proffered USPTO registration establishes Complainant’s protected rights in its mark, pursuant to Policy ¶4(a)(i). See Capital Bank Corporation v. Ogheneovo Okuma / Capital Concept, FA 1692759 (Forum Oct. 12, 2016) (holding that Complainant’s USPTO registration is sufficient under Policy ¶4(a)(i), even though Respondent reportedly resides in Nigeria); see also Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015).
[ii] The <myhomedepothr.com> domain name is confusingly similar to the HOME DEPOT Marks.
Home Depot has used its HOME DEPOT Marks in commerce since at least 1979. As noted above, such long-standing and continuous use gives Home Depot exclusive rights in the HOME DEPOT Marks. ICANN panels have found that, where, as in this case, a domain name incorporates a distinctive mark in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar. See Lowen Corp. v. Henry Chan, D2004-4030 (WIPO August 5, 2004) (finding that the domain name lowensigns.com is confusingly similar to LOWEN).
The addition of the generic pronoun “my” and the letters “hr” to Home Depot’s famous HOME DEPOT trademark does not negate the confusing similarity between <myhomedepothr.com> and the HOME DEPOT Marks under Policy ¶4(1)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); LEGO Juris A/S v. Ningbo LEGO Culture Communication Co., Ltd., WIPO Case No. D2013-1208 (August 28, 2013) (addition of two letters not sufficient to overcome confusing similarity between <legole.net> domain name and complainant’s LEGO mark; panel noted that the “strength and global profile” of the mark made the domain name “even more confusing.”). Moreover, the “hr” letters likely add to the confusion because “hr” is commonly an abbreviation for “human resources” and an individual, particularly, a Home Depot employee, reading the domain name address may believe the website pertains to Home Depot’s human resources department.
Furthermore, the addition of a generic top-level domain, such as “.com,” is irrelevant in determining similarity of <myhomedepothr.com> to Home Depot’s HOME DEPOT Marks. See, e.g., Delta Corporate Identity, Inc. and Delta Air Lines, Inc, citing Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[t]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”); Thomas B. Hudson v. Ted Machi & Associates, FA133759 (Forum Jan. 21, 2003).
In this case, <myhomedepothr.com> is confusingly similar to and incorporates in its entirety the HOME DEPOT Marks. The domain name differs from the HOME DEPOT Marks only by the addition of the indistinctive pronoun “my” and letters “hr” and the top-level domain, “.com.” These minor differences are insufficient to distinguish <myhomedepothr.com> from the HOME DEPOT Marks.
[b.] Respondent Has No Rights or Legitimate Interests in the Domain Name.
Because Home Depot has made a prima facie case in support of its allegations, the burden shifts to Respondent to show that he does have rights or legitimate interests in the Domain Name. See, e.g., Tejon Ranchcorp and Tejon Ranch Co. v. J & L Enterprises, FA524749 (Forum September 20, 2005), citing Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (where complainant has asserted that respondent has no rights or legitimate interests with respect to domain name, respondent must come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent.”), and G.D. Searle v. Martin Mktg., FA118277 (Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent”).
Moreover, Respondent must show he has rights or legitimate interest in respect of the domain name at issue by “concrete evidence.” See Kate Spade, LLC v. Darmstadter Designs, No. D2001-1384 (WIPO Jan. 3, 2002) citing UDRP Policy 4(c)). “Concrete evidence” requires more than personal assertions; it requires documents or third party declarations in support of such assertions. Id. A failure to produce such concrete evidence entitles a panel to conclude that the respondent has no such rights or legitimate interest. Id.
From the evidence discussed below, it is clear that Respondent has no rights or legitimate interest in the <myhomedepothr.com> domain name.
[i] Respondent has no relationship with Home Depot.
Respondent has no relationship, affiliation, connection, endorsement or association with Home Depot. Respondent has never requested or received any authorization, permission or license from Home Depot to use the HOME DEPOT Marks in any way.
[ii] Respondent has never been commonly known by the domain name <myhomedepothr.com> or by the HOME DEPOT Marks and has never acquired any trademark rights in the same.
There is no evidence in the WHOIS information to suggest that Respondent is known by <myhomedepothr.com>. Indeed, given Home Depot’s long-time and extensive world-wide rights in the HOME DEPOT Marks in connection with home improvement retail stores and related goods and services, Respondent could not have rights in the HOME DEPOT Marks unless Home Depot granted them. However, that has not occurred.
[iii] Respondent has not used the domain name in good faith and in connection with a bona fide offering of services.
The infringing domain redirects to a series of domain names before ultimately resolving to Home Depot’s home page, www.homedepot.com. The several domain names to which <myhomedepothr.com> redirects before reaching the Home Depot’s home page include park.above.com, bridgelga1.admarketplace.net, bizrate.com, and several others. It is presumed that Respondent is gaining a benefit from the series of redirects it uses to reach Home Depot’s home page. Panels have held that redirection to the Complainant’s home page and thereby deriving some benefit is not a legitimate use of a domain name. See e.g., Kayak Software Corporation (Delaware Corporation) v. ITlinks.com, FA1511001647695 (Forum Dec. 18, 2015) (The Panel presumed a benefit was received by Respondent when Respondent used domain name to redirect visitors to Complainant’s website and found that such use of the domain name was not a bona fide offering of goods and services.).
Upon information and belief, the infringing domain also redirects to a series of domain names before ultimately resolving to the websites of Complainant’s competitors. For example, Complainant’s attorneys have observed redirection to websites of online retailers offering goods similar to those of Complainant, such as <www.roomstogo.com>. However, because these instances seemingly occur randomly, Complainant’s attorneys have been unable to capture a screenshot to evidence those instances. It is presumed that Respondent is gaining a benefit from the series of redirects he uses to reach these third party websites. Use for commercial gain of a domain name that is confusingly similar to the HOME DEPOT Marks to redirect Internet users interested in Home Depot’s goods and services to third party websites is not a legitimate noncommercial or fair use of the domain name. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA96577 (Forum Feb. 27, 2001) (respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA95407 (Forum Sept. 27, 2000) (“[U]nauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”)
Accordingly, Respondent does not have rights or legitimate interests in or to the subject domain name. As such, Respondent’s website at <myhomedepothr.com> is not used or maintained in good faith and in connection with a bona fide offering of goods or services.
[c.] Respondent Registered and Used the Domain Name in Bad Faith.
There are at least four pieces of evidence that show Respondent had knowledge
of Home Depot’s trademark rights, yet proceeded to register and use the <myhomedepothr.com
>domain name in bad faith: (1) Respondent redirects to the Complainant’s
home page; (2) Respondent uses Complainant’s trademarks in his domain name to
direct consumers to commercial websites offering goods and services in direct
competition with Complainant; (3) Respondent’s domain name is misleading, as
Internet users may believe this is the domain address of Home Depot’s human
resource department; and (4) Respondent is a serial cybersquatter.
(1) The fact that Respondent redirects to Complainant’s home page is evidence that Respondent had actual knowledge of Complainant’s trademark rights. Home Depot’s fame further adds to the evidence that Respondent had actual knowledge of Complainant’s trademark rights. Kayak Software Corporation (Delaware Corporation) v. ITlinks.com, FA1511001647695 (ADR Dec. 18, 2015) (The Panel found bad faith when Respondent redirected Internet users to Complainant’s own website and Complainant’s mark was famous.). Actual knowledge is additional evidence of bad faith under Policy ¶4(a)(iii).
(2) Respondent is using the <myhomedepothr.com> domain name, which is confusingly similar to the HOME DEPOT Marks, to direct Internet users to competitor websites offering goods and services of the nature offered by Complainant. Such use is concrete evidence of bad faith registration and use. See, e.g., Society for the Promotion of Japanese Animation v. In Stealth Mode, citing S. Exposure v. S. Exposure, Inc., FA 94864 (Forum July 18, 2000) (respondent acted in bad faith by attracting Internet users to website that competes with complainant’s business), and Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (respondent diverted business from complainant to competing website in violation of Policy ¶4(b)(iii)).
(3) As mentioned previously, “hr” is an abbreviation for “human resources,” so Respondent’s domain name reads as “My Home Depot Human Resources.” Internet visitors are likely to be misled, believing this is the domain address of Home Depot’s human resources website for employees. Misleading Internet users and attracting Complainant’s business in order to receive commercial gain constitutes bad faith registration and use under Policy ¶4(b)(iv). DBD, INC. v. Isaac / Isaac Goldstein, FA1102001373095 (ADR March 23, 2011).
(4) Respondent is a serial cybersquatter, and Respondent’s registration of the disputed domain name is part of a pattern of bad faith registration. Respondent has been the named respondent in at least 15 cases with theForum, and at least 16 with the World Intellectual Property Organization where the panel has made findings adverse to Respondent (e.g., Wells Fargo & Company v. Isaac Goldstein, FA 1321448 (Forum June 9, 2010)). A showing of a pattern of bad faith registration can itself be evidence of bad faith per Policy ¶4(b)(ii). Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum November 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶4(b)(ii)).).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 claims rights in the THE HOME DEPOT mark based upon its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,431,636, registered Mar. 10, 1987). Registration with a governmental trademark agency, such as the USPTO, is sufficient to prove Policy ¶4(a)(i) rights in a mark even if Respondent is located in another country. 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.). Complainant has established rights in the mark for the purposes of Policy ¶4(a)(i).
Complainant claims Respondent’s <myhomedepothr.com> domain name is confusingly similar to Complainant’s mark because it incorporates the THE HOME DEPOT mark in its entirety (minus the “THE” portion) and appends the generic terms “my” and “hr” (suggesting human relations) as well as the “.com” gTLD. Similar changes to a mark have been found insufficient to withstand a test of confusing similarity pursuant to Policy ¶4(a)(i). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Likewise, a space is a prohibited character in a domain name and its omission must be disregarded under a Policy ¶4(a)(i) analysis. See The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.); see also 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.). Respondent’s <myhomedepothr.com> domain name is confusingly similar to Complainant’s THE HOME DEPOT mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has 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 claims Respondent has no rights or legitimate interests in the <myhomedepothr.com> domain name. Absent information in the record to the contrary, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Isaac Goldstein” as the registrant. There is no obvious relationship between the disputed domain name and “Isaac Goldstein”. There is no evidence showing Respondent has ever been legitimately known by the THE HOME DEPOT mark. 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). Respondent has never been affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Respondent is not commonly known by the <myhomedepothr.com> domain name under Policy ¶4(c)(ii).
Complainant claims Respondent failed to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Using a disputed domain name to redirect to complainant’s competitors’ websites is not a bona fide offer of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding the respondent was not using the domain name within the parameters of Policy ¶4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). Respondent uses the disputed domain name to generally redirect Internet users to Complainant’s <www.homedepot.com> homepage, with random redirects to Complainant’s competitors’ websites. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent is a serial cybersquatter who exhibits a pattern of bad faith registration and use under Policy ¶4(b)(ii), which reads: “[Respondent has] registered the domain name in order to, provided that [Respondent has] have engaged in a pattern of such conduct…” [emphasis added] Complainant owns the HomeDepot.com domain name. Clearly, Complainant has been able to reflect its mark in a domain name. The Panel is unwilling to find bad faith on this ground alone.
Complainant claims Respondent uses the disputed domain name to disrupt Complainant’s business by redirecting Internet users to Complainant’s competitors’ websites. Using a domain name in this fashion constitutes bad faith under Policy ¶4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶4(b)(iii) by redirecting Internet users to the respondent’s competing website). Occasionally Respondent’s <myhomedepothr.com> domain name resolves to various websites of Complainant’s competitors. Respondent acted in bad faith under Policy ¶4(b)(iii).
Complainant claims Respondent intentionally attracts, for commercial gain, Internet users to Respondent’s website by creating confusion about Respondent’s affiliation with Complainant. Using a disputed domain name for commercial gain by creating confusion constitutes bad faith under Policy ¶4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). While not explained well by Complainant, the Panel views this not as a case of web site confusion, but as an obvious opportunity for mischief by sending emails which impersonate Complainant’s human recourses department. Unwitting applicants will give away their personal information in a phishing scheme. Respondent registered and uses the domain name in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent had actual knowledge of Complainant’s rights in the THE HOME DEPOT mark prior to registration of the disputed domain name. A respondent’s actual knowledge of a complainant’s rights in a mark can be determined from an analysis of the disputed domain name and the use made of it under Policy ¶4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel … finds actual knowledge through the name used for the domain and the use made of it.”). Respondent’s web site often forwards to Complainant’s web site. This wouldn’t happen if Respondent was unaware of Complainant’s mark. Clearly, Respondent knew about Complainant’s existence and Complainant’s mark. Respondent had actual knowledge of Complainant’s rights in the “THE HOME DEPOT” mark prior to registration of the <myhomedepothr.com> domain name. This constitutes bad faith registration and use of the domain name.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <myhomedepothr.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, December 5, 2017
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