Since 1991, Home Depot operates the product line HOME DECORATORS COLLECTION, along with the matching trademark, offering products for your home. The mark was registered with the USPTO in 1997.
For that matter, Home Depot uses the domain HomeDecoratorsCollection.com which it points to HomeDepot.com. Not great for SEO but at least it indicates who owns the brand.
Meanwhile, someone registered the domain TheHomeDecoratorsCollection.com and set it up in a way that it presents itself as an official retailer. The products listed are ceiling fans that all link to Amazon.com items for sale. Naturally, these links contain affiliate links that entitle the participant to a cut from sales.
To emphasize their business, supposed customers such as Joseph, Mike, and Jerry have all posted “testimonials”:
Home Depot got whiff of this monkey business and filed a UDRP, which they won. Said the panelist:
“Complainant further argues that Respondent registered the domain name in bad faith with knowledge of Complainant’s rights in the HOME DECORATORS COLLECTION mark, as evidenced by the domain’s use and passing-off behavior. Complainant has used the HOME DECORATORS COLLECTION mark and related design marks since at least 1991 in connection with home décor, furnishings, retail store services, and related products.”
Final decision: Grant the transfer of the domain TheHomeDecoratorsCollection.com to the Complainant; the respondent’s Black Friday earnings are going to be cut short this year.
Copyright © 2024 DomainGang.com · All Rights Reserved.Home Depot Product Authority, LLC v. Ivan Ivanov
Claim Number: FA2410002122932
PARTIES
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Ivan Ivanov (“Respondent”), Belgium.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is thehomedecoratorscollection.com, registered with Hosting Concepts B.V. d/b/a Registrar.eu.
PANEL
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.
Ho-Hyun Nahm, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on October 31, 2024; Forum received payment on October 31, 2024.
On November 1, 2024, Hosting Concepts B.V. d/b/a Registrar.eu confirmed by e-mail to Forum that the thehomedecoratorscollection.com domain name is registered with Hosting Concepts B.V. d/b/a Registrar.eu and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Registrar.eu has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Registrar.eu 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 4, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 2024 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@thehomedecoratorscollection.com. Also on November 4, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 26, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that 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, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
i) Complainant is the world’s largest home improvement specialty retailer and the fourth-largest retailer in the United States. Complainant began using the HOME DECORATORS COLLECTION mark and the HOME DECORATORS COLLECTION and Design trademarks as early as 1991 in connection with home décor, furnishings, retail store services, and related goods and services. Complainant holds rights in the HOME DECORATORS COLLECTION marks, inter alia, through its registration with the USPTO (e.g., Reg. No. 2,065,028, registered May 27, 1997). The disputed domain name is confusingly similar to Complainant’s HOME DECORATORS COLLECTION mark because it incorporates the entire mark, merely adding the descriptive term “the” and the “.com” gTLD.
ii) Respondent lacks legitimate interests in the disputed domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized or licensed Respondent any rights in the HOME DECORATORS COLLECTION marks. Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the domain name is used to impersonate Complainant. Respondent appears to profit from a false association with Complainant by directing consumers to third-party websites belonging to Complainant’s competitors.
iii) Respondent registered and uses the disputed domain name in bad faith by leveraging the goodwill associated with Complainant’s mark for commercial gain. Respondent’s use of the domain name for a website that displays the HOME DECORATORS COLLECTION mark to impersonate Complainant and mimic a legitimate website demonstrates bad faith registration and use. Respondent’s use of the domain for profit through affiliate marketing and/or click-through advertising further evidences bad faith. Respondent was aware of Complainant’s rights in the HOME DECORATORS COLLECTION marks and purposefully misappropriated them.
B. Respondent
Respondent did not submit a Response in this proceeding.
FINDINGS
1. The disputed domain name was registered on June 21, 2024.
2. Complainant has demonstrated rights in the HOME DECORATORS COLLECTION marks through registration with the USPTO (e.g., Reg. No. 2,065,028, registered May 27, 1997).
3. The disputed domain name resolves to a website prominently featuring Home Depot’s HOME DECORATORS COLLECTION logo alongside several paragraphs discussing the “History of Home Decorators Collection,” which include references to Home Depot.
4. The website associated with the disputed domain name includes a section titled “Choose Your Decor,” displaying photographs and style names for HOME DECORATORS COLLECTION products, copied directly from Home Depot’s website.
5. The website linked to the disputed domain name features multiple “Shop Now” links under images of HOME DECORATORS COLLECTION products, which redirect to unauthorized Amazon pages selling these products.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
Complainant asserts rights in the HOME DECORATORS COLLECTION mark through its registration with the USPTO (e.g., Reg. No. 2,065,028, registered May 27, 1997). Registration of a mark with the USPTO constitutes valid evidence of trademark rights. As Complainant has submitted evidence of the HOME DECORATORS COLLECTION mark’s registration, the Panel concludes that Complainant has established rights in the mark under Policy paragraph 4(a)(i).
Complainant asserts that the disputed domain name thehomedecoratorscollection.com is confusingly similar to its HOME DECORATORS COLLECTION mark because it incorporates the mark in its entirety, with the mere addition of the descriptive term “the”. The Panel concurs with Complainant and determines that the disputed domain name is confusingly similar to Complainant’s HOME DECORATORS COLLECTION mark under 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Section 2.1, WIPO Jurisprudential Overview 3.0 (“Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”).
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the HOME DECORATORS COLLECTION mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The unmasked WHOIS information for the disputed domain name lists the registrant as “Ivan Ivanov li.” There is nothing in the records to suggest that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use, as Respondent uses the domain to impersonate Complainant. The Panel notes that passing off as a complainant does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy paragraphs 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that the respondent did not use the domain name for a bona fide offering or legitimate noncommercial use when the resolving website featured the complainant’s mark and related content); see also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (holding that no bona fide offering or legitimate use existed where the respondent’s site sold products branded with the complainant’s mark without authorization).
Complainant emphasizes that the website associated with the disputed domain name directs users to a webpage prominently displaying Home Depot’s HOME DECORATORS COLLECTION logo alongside several paragraphs discussing the “History of Home Decorators Collection,” including references to Home Depot. The website also features a section titled “Choose Your Decor,” containing photographs and style names for HOME DECORATORS COLLECTION products copied from Home Depot’s official website. Additionally, the site includes multiple “Shop Now” links under images of specific HOME DECORATORS COLLECTION products, all of which redirect to unauthorized Amazon pages selling these products. The Panel finds that Respondent’s use of the disputed domain name to impersonate Complainant and its HOME DECORATORS COLLECTION marks does not constitute a bona fide offering of goods or services or legitimate noncommercial use under Policy paragraphs 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Registration and Use in Bad Faith
Complainant asserts that Respondent’s registration and use of the disputed domain name constitutes bad faith, as the domain resolves to a website displaying the HOME DECORATORS COLLECTION marks in a manner that impersonates Complainant and mimics a legitimate site. Passing off as a complainant while offering competing products can be evidence of bad faith registration and use under Policy paragraphs 4(b)(iii) and (iv). See Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seems to be counterfeits of Complainant’s toy car products. Respondent’s use of the magictrackscars.com domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding bad faith where the respondent used the domain to pass off as the complainant and offer counterfeit goods).
Complainant has provided evidence, including screenshots, showing that the website associated with the disputed domain name prominently displays Home Depot’s HOME DECORATORS COLLECTION logo and features sections discussing the “History of Home Decorators Collection,” including references to Home Depot. It also includes a section titled “Choose Your Decor,” showcasing images and style names of HOME DECORATORS COLLECTION products copied from Home Depot’s website. Additionally, the site contains “Shop Now” links beneath product images, redirecting users to unauthorized Amazon pages selling these products. The Panel finds that these activities disrupt Complainant’s business and constitute passing off. Accordingly, the Panel determines that Respondent registered and uses the disputed domain name in bad faith under Policy paragraphs 4(b)(iii) and (iv).
Complainant further argues that Respondent registered the domain name in bad faith with knowledge of Complainant’s rights in the HOME DECORATORS COLLECTION mark, as evidenced by the domain’s use and passing-off behavior. Complainant has used the HOME DECORATORS COLLECTION mark and related design marks since at least 1991 in connection with home décor, furnishings, retail store services, and related products. As the world’s largest home improvement retailer, Complainant reported fiscal 2023 sales of $152.7 billion, with operations spanning over 2,300 stores across the U.S., Canada, Mexico, and other territories. Given the notoriety of Complainant’s HOME DECORATORS COLLECTION marks and Respondent’s passing off activities, the Panel concludes that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights, constituting bad faith under Policy paragraph 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the thehomedecoratorscollection.com domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: November 26, 2024
