Home Depot Product Authority, LLC v. MICHAEL LEE / SASU STORE
Claim Number: FA1609001693817
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is MICHAEL LEE / SASU STORE (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedetool.com>, registered with eNom, Inc..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 14, 2016; the Forum received payment on September 14, 2016.
On September 15, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <homedetool.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 September 16, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 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@homedetool.com. Also on September 16, 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 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant registered the HOME DEPOT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,314,081, registered Feb. 1, 2000), and holds rights to the mark.
Respondent’s domain name, <homedetool.com>, is confusingly similar to Complainant’s mark, because it merely replaces the last syllable of Complainant’s HOME DEPOT mark with the descriptive term “tool,” plus the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not granted Respondent permission to use the HOME DEPOT mark, and Respondent is not commonly known as <homedetool.com>. Respondent prominently displays the HOME DEPOT mark and color scheme on its website. Such use cannot constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) or (iii).
Respondent registered and has been using the domain name in bad faith. Respondent’s website is a clear attempt by Respondent to create the false impression that Respondent is somehow related to, or authorized by, Complainant. Complainant uses the domain name to direct Internet users to Respondent’s website, which offers goods in direct competition with Home Depot. Further, Respondent had actual notice of the world famous HOME DEPOT mark when it registered the <homedetool.com> domain name. This is clear evidence of bad faith and that Respondent intended to disrupt the business of Complainant by registering this confusingly similar domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the HOME DEPOT marks through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and is not authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademark.
Respondent prominently displays the HOME DEPOT mark and color scheme on its <homedetool.com> website and there offers products for sale that compete with those offered by Complainant.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant establishes its rights in the HOME DEPOT mark through its registration of such mark with the United States Patent and Trademark Office. See BGK Trademark Holdings, LLC& Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i).).
Respondent’s <homedetool.com> domain name contains Complainant’s entire HOME DEPOT trademark less its space and last syllable, with the generic term “tool” and top-level domain name “.com” appended thereto. However, the differences between Respondent’s domain name and Complainant’s trademark are insufficent to distinguish one from the other for the purposes of the Policy. Indeed, the inclusion of the term “tool” in the domain name suggests Complainant’s home improvement and maintenance oriented business, further indicating the domain name’s intended reference to Complainant’s trademark. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s HOME DEPOT trademark under Policy ¶ 4(a)(i). See Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). See Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
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.
WHOIS information for the at-issue domain name lists “MICHAEL LEE” as the registrant, and “SASU STORE” as the organization. There is nothing in the record that otherwise suggests Respondent is commonly known by the <homedetool.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent uses the at-issue domain name and website to mimic Complainant. Respondent prominently displays the HOME DEPOT mark and color scheme on its <homedetool.com> website where it offers goods that compete with those of Complainant. Using the confusingly similar domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain name.
Respondent’s <homedetool.com> domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances are present as well as other circumstances which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and legitimate interests, Respondent uses the domain name to pose as Complainant and offer goods that compete with those of Complainant. Using the domain name for such purposes creates an inference that Respondent registered the domain name for the primary purpose of disrupting Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Furthermore, Respondent’s use of Complainant’s HOME DEPOT mark, in conjunction with a confusingly similar domain name and color scheme in an overt attempt to profit from the sale of goods that compete with those of Complainant, creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the at-issue domain name. Respondent’s use of the domain name may thus be characterized as a bad faith attempt to attract Internet users for commercial gain and demonstrates bad faith under Policy ¶ 4(b)(iv). See 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.”).
Finally, Respondent registered the <homedetool.com> domain name knowing that Complainant had trademark rights in the HOME DEPOT trademark. Respondent’s prior knowledge is evident because of the notoriety of Complainant’s trademark as well as Respondent’s use of Complainant’s mark on the <homedetool.com> website where it offers products that compete with those offered by Complainant. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's HOME DEPOT trademark further indicates that Respondent registered and used the <homedetool.com> domain name in bad faith under Policy ¶ 4(a)(iii). See 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homedetool.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco. Panelist
Dated: October 12, 2016
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