Home Depot Product Authority, LLC v. ADRIAN BOYD
Claim Number: FA1609001693142
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, United States. Respondent is ADRIAN BOYD (“Respondent”), New Jersey, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homecdepots.com>, registered with GoDaddy.com, LLC.
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 September 9, 2016; the Forum received payment September 9, 2016.
On September 12, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <homecdepots.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC 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 September 13, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 2016, 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@homecdepots.com. Also on September 13, 2016, 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 October 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit 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 uses its HOME DEPOT mark in connection with home improvement retail store services and related goods and services. Complainant registered the HOME DEPOT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,314,081, registered February 1, 2000), which demonstrates Complainant’s rights in its mark. See Compl., at Attached Ex. B. The <homecdepots.com> domain name is confusingly similar to Complainant’s mark as it merely adds the letter “c,” the pluralization of the term “depot,” and the generic top-level domain (“gTLD”) “.com” to Complainant’s famous mark.
Respondent has no rights or legitimate interests in the domain name. Respondent has never been commonly known by the domain name, and Respondent has no relationship, affiliation, connection, endorsement, or association with Complainant. Further, Respondent does not use the domain in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, the website that currently resolves from the domain name is an online retail store site offering power tools, lawn care equipment, compost bins, storage cabinets and carts, and tool storage items, which are the same type of home improvement goods sold by Complainant. See Compl., at Attached Ex. D.
Respondent registered and is using the domain name in bad faith. First, Respondent’s use of the domain name to operate a business that is in direct competition with Complainant is evidence of bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). Second, given Respondent’s use of the domain name to sell goods in direct competition with Complainant, it is clear that Respondent registered the domain name with at least constructive knowledge of Complainant’s mark and rights therein.
Respondent’s Contentions in this Proceeding:
Respondent did not submit a response in this proceeding. The Panel notes that Respondent registered the domain name April 29, 2016.
Complainant established that it has rights to and legitimate interests in the mark contained within the disputed domain name.
Respondent has no such rights and/or legitimate interests in the mark and therefore, none as well in the disputed domain name using that mark.
Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed 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 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 uses its HOME DEPOT mark in connection with home improvement retail store services and related goods and services. Complainant registered the HOME DEPOT mark with the USPTO (Reg. No. 2,314,081, registered February 1, 2000), which, Complainant argues, demonstrates its rights in the mark. See Compl., at Attached Ex. B. The Panel finds that trademark registrations with the USPTO demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <homecdepots.com> domain name is confusingly similar to Complainant’s mark as it merely adds the letter “c,” the pluralization of the term “depot,” and the gTLD “.com” to Complainant’s famous mark. The Panel also notes that Respondent eliminates the space between the words of Complainant’s mark. These changes do not serve to adequately distinguish a respondent’s domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name containing in its entirety 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 and 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 contends that Respondent has no rights or legitimate interests in the domain name. Complainant asserts that Respondent has never been commonly known by the domain name, and that Respondent has no relationship, affiliation, connection, endorsement, or association with Complainant. The Panel notes that the WHOIS information merely lists “ADRIAN BOYD” as registrant and that Respondent provided no evidence for the Panel’s consideration. Attached Exhibit A contains additional WHOIS information. The Panel finds no evidence to support any finding that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent does not use the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, according to Complainant, the website that currently resolves from the domain name is an online retail store site offering power tools, lawn care equipment, compost bins, storage cabinets and carts, and tool storage items, which are the same type of home improvement goods sold by Complainant. See Compl., at Attached Ex. D. A respondent’s use of a domain name 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). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds 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 under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name or Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent’s use of the domain name to operate a business that is in direct competition with Complainant is evidence of bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). Panels have agreed. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). For these reasons, this Panel holds that Respondent registered and is using the domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant alleges further that Respondent’s use of the domain name to sell goods in direct competition with Complainant shows clearly that Respondent registered the domain name with at least constructive knowledge of Complainant’s mark and rights therein. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel here finds that given Complainant’s well known business operations and Respondent’s opportunistic attempt to trade off the good will and fame attaching to Complainant’s business that Respondent had actual knowledge of Complainant's mark and rights. Therefore this Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name 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 <homecdepots.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 1, 2016
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