Home Depot Product Authority, LLC v. nitish chauhan
Claim Number: FA1805001789599
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is nitish chauhan (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotcouponcode.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 31, 2018; the Forum received payment on May 31, 2018.
On June 1, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <homedepotcouponcode.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 June 1, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 2018 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@homedepotcouponcode.com. Also on June 1, 2018, 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 25, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Home Depot Product Authority, LLC, is the world’s largest home improvement specialty retailer and the fourth largest retailer in the United States. Complainant has rights in the HOME DEPOT mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,825,232, registered Mar. 23, 2004). Respondent’s <homedepotcouponcode.com>[i] domain name is confusingly similar to Complainant’s HOME DEPOT mark, as Respondent incorporates the mark in its entirety, eliminates the space, and adds the descriptive terms “coupon” and “code” along with the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
2. Respondent has no rights or legitimate interests in the <homedepotcouponcode.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized or licensed Respondent to use the HOME DEPOT mark in any manner.
3. Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the <homedepotcouponcode.com> domain name to divert Internet users to Respondent’s website where it advertises third-party links on its website.
4. Respondent registered and is using the <homedepotcouponcode.com> domain name in bad faith. Respondent attempts to divert users to the resolving website and advertises third-party links for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the HOME DEPOT mark. Respondent’s domain name is confusingly similar to Complainant’s HOME DEPOT mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <homedepotcouponcode.com> domain name and that Respondent registered and uses the domain name 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 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 has rights in the HOME DEPOT mark based upon its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017). Complainant provides a copy of its USPTO registration for the HOME DEPOT mark (e.g., Reg. No. 2,825,232, registered Mar. 23, 2004). The Panel holds that Complainant’s registration of the HOME DEPOT mark with the USPTO is sufficient to establish rights in the mark per Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <homedepotcouponcode.com> domain name is confusingly similar to the HOME DEPOT mark, as the name contains the mark in its entirety, merely omits the spacing, adds the descriptive terms “coupon” and “code, and attaches the “.com” gTLD. Adding descriptive terms and a gTLD to a complainant’s mark does not negate any confusing similarity between a domain name and mark in which a complainant has rights. See Traditional Medicinals, Inc. v. Flippa Chick, FA1006001328702 (Forum July 15, 2010) (“Respondent’s disputed domain name contains Complainant’s SMOOTH MOVE mark in its entirety after removing the space separating the terms of the mark, adds the descriptive terms “herbal tea” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive terms creates a confusing similarity between the disputed domain name and Complainant’s mark.”). The Panel determines that the <homedepotcouponcode.com> domain name is confusingly similar to the HOME DEPOT mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <homedepotcouponcode.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts Respondent has no rights or legitimate interests in the <homedepotcouponcode.com> domain name. Complainant argues Respondent is not authorized to use Complainant’s HOME DEPOT mark and is not commonly known by the domain name. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, a lack of authorization to use a complainant’s mark may be evidence that a respondent lacks rights or legitimate interests in a domain name per Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Complainant provides relevant WHOIS information which identifies Respondent as “nitish chauhan”, and no information in the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. Thus, the Panel holds under Policy ¶ 4(c)(ii), that Respondent is not commonly known by the <homedepotcouponcode.com> domain name.
Furthermore, Complainant contends Respondent’s lack of rights or legitimate interests in the <homedepotcouponcode.com> domain name is demonstrated by its failure to use the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, the evidence shows that Respondent uses the domain name in order to divert Internet users to Respondent’s website which features third-party, advertising links. Using a domain name containing the mark of another to redirect Internet users to a purported informational site containing third-party, advertising links for commercial gain is not a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) & (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of Respondent’s resolving website which appear to offer Complainant’s coupons, with numerous embedded sponsored advertisements that are labeled such that the user will believe they lead to coupons related to Complainant. The Panel accepts Complainant’s assertion that Respondent receives compensation each time a searcher clicks on one of these links or sponsored advertisements. Therefore, the Panel agrees that Respondent has failed to use <homedepotcouponcode.com> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has registered and uses the <homedepotcouponcode.com> domain name in bad faith because Respondent is disrupting Complainant’s business by attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Such conduct has been found to constitute bad faith under per Policy ¶¶ 4(b)(iii) and (iv). See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”) As previously mentioned, Complainant provides screenshots of Respondent’s resolving website purporting to offer Complainant’s coupons, with numerous embedded sponsored advertisements that are labeled such that the user will believe they lead to coupons related to Complainant. Further, Respondent presumably receives compensation each time a searcher clicks on one of these links or sponsored advertisements. Therefore, the Panel finds that Respondent has engaged in bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).
The Panel finds Complainant has satisfied 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 <homedepotcouponcode.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson Panelist
Dated: July 9, 2018
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