Home Depot Product Authority, LLC v. Ron Schuman
Claim Number: FA1711001759309
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Ron Schuman (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepothvac.com>, registered with 1&1 Internet SE.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 20, 2017; the Forum received payment on November 20, 2017.
On November 22, 2017, 1&1 Internet SE confirmed by e-mail to the Forum that the <homedepothvac.com> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE 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 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@homedepothvac.com. Also on November 28, 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.
A timely Response was received and determined to be complete on November 28, 2017.
On November 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nathalie Dreyfus 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Firstly, Complainant contends that the disputed domain name <homedepothvac.com> is confusingly similar to Complainant’s mark as it appends the generic term “hvac” to the HOME DEPOT mark, along with the generic top-level domain (“gTLD”) “.com.”
Then, Complainant alleges that Respondent has no rights or legitimate interests in the <homedepothvac.com> domain name. Respondent is not commonly known by the disputed domain name, as there is no evidence in the Whois information to suggest otherwise. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant, and has never sought or received any authorization, permission or license from Complainant to use the HOME DEPOT mark in any way. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the <homedepothvac.com> domain name resolves to the website <oservice.com> that appears to be the home page for a handyman company in direct competition with Complainant and its services.
Finally, Complainant puts forth that Respondent registered and uses the <homedepothvac.com> domain name in bad faith. Respondent uses the domain name to attract Internet users to its website for commercial gain by offering competing goods and services. Further, it is clear that Respondent registered the subject domain name with the HOME DEPOT mark in mind in light of the obvious link between Complainant and the home installation services described and advertised on Respondent’s website, along with the nearly identical color scheme employed by Respondent on the resolving domain.
B. Respondent
On November 28, 2017, Respondent submitted a reply to the Complaint, wherein they stated that they did not realize the domain name was still active, since it has been over six (6) years since Complainant contracted Orangutan Home Services to host the Landing pages for their HVAC, Water Heaters, and Water Treatment websites.
Complainant is the world’s largest home improvement specialty retailer and the fourth largest retailer in the United States. Complainant owns numerous HOME DEPOT trademark registrations, inter alia in the United States, as evidenced in the case file.
Respondent registered the Disputed Domain Name <homedepothvac.com> on July 22, 2008.
When Respondent submits a Response, the Rules provides that “the response shall inter alia contain:
- the following statement followed by the signature (in any electronic format) of the Respondent or its authorized representative: "Respondent certifies that the information contained in this Response is to the best of Respondent's knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument."; and
- any documentary or other evidence upon which the Respondent relies, together with a schedule indexing such documents.
Respondent’s submission does not include the required certification, is not signed and does not contain any evidence upon which Respondent relies. In that regard, the Panel considers it of the utmost importance to insist on strict compliance with the Rules. Inconsistent approaches to the Rules will only cause a loss in confidence in the Policy and the Rules.
Therefore, after considering Respondent’s response and in light of the aforesaid deficiencies, the Panel has concluded that it will not accord any weight to the facts alleged in it. As a matter of fact, without the benefit of the missing elements, it is not appropriate to accept the factual assertions contained in Respondent’s response.
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.
The Disputed Domain name <homedepothvac.com> wholly incorporates the HOME DEPOT trademark with the mere addition of the letters "hvac". Under a well-established view under the Policy, a domain name which wholly incorporates a complainant’s registered trademark may be sufficient to establish confusing similarity for the purposes of the Policy (See e.g. Oki Data Americas Inc. v. ASD Inc., WIPO case No. D2001-0903).
The Panel further finds that the letters « hvac » within the Disputed Domain Name stand for « Heating, Ventilation and Air-Conditioning », which are generic and descriptive words displaying an obvious link to Complainant's activity, consequently enhancing the likelihood of confusion. See e.g. GreenHeck Fan Corporation v. Siouzanna Terlitskaia, FA1710001752889, (Forum Nov. 8, 2017).
Even in the event that the letters “hvac” would not be perceived by internet users as meaning “Heating, Ventilation and Air-Conditioning ”, the Disputed Domain Name would still be likely to generate a likelihood of confusion as the mere addition of random letters to a well-established trademark does not differentiate a domain name from said trademark (See e.g. Am. Online Inc v. Amigos On Line RJ, FA 115041, (Forum Aug. 28, 2002).
Finally, for the purposes of the present comparison, the Panel agrees with the common view under the UDRP that generic Top-Level Domain (“gTLD”) extensions may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name (see, e.g., Reese v. Morgan, FA 917029 (Forum April 5, 2007) and considers the gTLD extension “.com” of the Disputed Domain Name irrelevant.
The Panel therefore finds that the Disputed Domain Name is confusingly similar to the HOME DEPOT trademarks in which Complainant has rights, in accordance with Paragraph 4(a)(i) of the Policy.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Paragraph 4(a)(ii), after which the burden shifts to Respondent to show it does have rights or legitimate interests (See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828, Forum August 18, 2006).
Firstly, the Panel finds that the respondent is not commonly known by the disputed domain name as the WHOIS information, as well as all other information in the record, gives no indication suggesting otherwise (See Braun Corp. v. Loney, FA 699652, Forum July 7, 2006).
Besides, based on Respondent’s failure to provide any evidence suggesting otherwise, the Panel also accepts Complainant’s claim that Complainant never authorized Respondent to register the Disputed Domain Name nor to use their HOME DEPOT trademarks, and that Respondent has never been affiliated to Complainant.
Finally, the Panel finds that Respondent has been using the Disputed Domain Name to offer its own services, which are in direct competition with Complainant. Under these circumstances and consistent with a well-established view, such use of the Disputed Domain Name cannot constitute a bona fide offering of services (See Upwork Global Inc. v. Shoaib Malik, FA 1654759, Forum Feb. 3, 2016).
The Panel therefore finds that Respondent has no right or legitimate interest in the Disputed Domain Name, in accordance with Paragraph 4(a)(ii) of the Policy.
Under Paragraph 4(a)(iii) of the Policy, Respondent’s actual knowledge of Complainant’s trademarks and activity can adequately establish bad faith (See Univision Comm'cns Inc. v. Norte, FA 1000079, Forum Aug. 16, 2007). In view of the obvious link between Complainant and the home installation services described and advertised on Respondent’s website, along with the nearly identical color scheme employed by Respondent on the resolving domain, the Panel finds that Respondent had actual knowledge of Complainant’s HOME DEPOT trademarks at the time of registration of the Disputed Domain Name and, therefore, that Respondent registered the Disputed Domain Name in bad faith.
In addition, under paragraph 4(a)(iii), using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can establish use in bad faith (See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750, Forum May 13, 2015). As noted under the previous section, Complainant has provided a screenshot of the resolving domain, which resolves to the website <oservice.com> that appears to be the home page for a handyman company in direct competition with Complainant and its services. Therefore, the Panel finds that Respondent uses the Disputed Domain Name in bad faith by attracting Internet users to its website for commercial gain by offering competing goods and services.
The Panel therefore finds that Respondent registered and has been using the Disputed Domain Name in bad faith, in accordance with Paragraph 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 <homedepothvac.com> domain name be TRANSFERRED from Respondent to Complainant.
Nathalie Dreyfus, Panelist
Dated: December 5, 2017
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