Home Depot Products Authority, LLC v. Suleman Mughal / Personal
Claim Number: FA1912001873524
Complainant is Home Depot Products Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Suleman Mughal / Personal (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hamptonbaydepot.com>, registered with DNC Holdings, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 3, 2019; the Forum received payment on December 3, 2019.
On December 4, 2019, DNC Holdings, Inc. confirmed by e-mail to the Forum that the <hamptonbaydepot.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, 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 December 5, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2019 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@hamptonbaydepot.com. Also on December 5, 2019, 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 December 30, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 asserts that it has rights in the HAMPTON BAY trademark acquired by its ownership of its portfolio of registered trademarks described below and at common law through the goodwill that it has established by the use of the mark in its retail business. Complainant asserts that it is the world’s largest home improvement specialty retailer and the sixth largest retailer in the United States, with worldwide sales in fiscal year 2018 of $108.2 billion, offers goods under the HAMPTON BAY mark in each of its affiliated THE HOME DEPOT stores and on its online. Over the years, Complainant has prominently used and promoted the HAMPTON BAY Mark in advertising, sales, and various other ways.
Complainant submits that the disputed domain name is confusingly similar to its HAMPTON BAY trademark. The disputed domain name incorporates its distinctive mark in its entirety, which Complainant submits creates sufficient similarity between the mark and the disputed domain name to render it confusingly similar. See Lowen Corp. v. Henry Chan, D2004-4030 (WIPO August 5, 2004) (finding that the domain name lowensigns.com is confusingly similar to LOWEN).
Furthermore, the addition of the term “depot” from Home Depot’s famous HOME DEPOT mark its well-known HAMPTON BAY trademark does not negate the confusing similarity between <hamptonbaydepot.com> and the HAMPTON BAY mark under Policy ¶ 4(a)(i). See Exxon Mobil Corporation v. mga enterprises limited, FA0907001273445 (Forum Aug. 26, 2009) (finding that the addition of the terms “travel” and “club,” which have an obvious relationship to Complainant’s [Exxon’s] business, to Complainant’s mark in the disputed domain name <exxontravelclub.com> create a confusing similarity between the disputed domain name and the registered mark).
Moreover, the addition of a generic top-level domain name extension <.com> is irrelevant in determining similarity of <hamptonbaydepot.com> to Home Depot’s HAMPTON BAY mark. See, e.g., Delta Corporate Identity, Inc. and Delta Air Lines, Inc, citing Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[t]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. Respondent has never requested or received any authorization, permission or license from Complainant to use the HAMPTON BAY mark in any way. There is no evidence in the WHOIS information to suggest that Respondent has ever been commonly known by the disputed domain name <hamptonbaydepot.com> or by the HAMPTON BAY mark and has never acquired any trademark rights in the same. known by <hamptonbaydepot.com>. Given Complainant’s long-time and extensive worldwide rights in the HAMPTON BAY mark in connection with home improvement goods, Respondent could not have rights in the HAMPTON BAY mark unless Complainant granted them, which has not occurred.
Complainant adds that Respondent has not used the disputed domain name in good faith and in connection with a bona fide offering of goods or services.
Complainant submits that the disputed domain name was registered and is being used in bad faith. Complainant submits that Respondent had knowledge of Complainant’s trademark rights yet proceeded to register and use the <hamptonbaydepot.com> domain name in bad faith.
Complainant argues that it is clear that Respondent registered the disputed domain name with the HAMPTON BAY mark in mind as there is an obvious link between Complainant’s HAMPTON BAY products and the informational content and sponsored ads related to light fixtures and ceiling fans posted on Respondent’s website as well as the use of the “depot” element in the domain name. See MIVA, Inc. v. WhoIs Privacy Inc., citing Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (because link between complainant’s mark and content advertised on respondent’s website obvious, respondent “must have known about the complainant’s mark when it registered the subject domain name”).
Complainant further submits that Respondent is using the HAMPTON BAY trademark in the disputed domain name and on his website in bad faith to divert visitors to competitors. Complainant refers to a screenshot of the website to which the disputed domain name resolved on November 19, 2019, attached as an annex to the Complaint. The screenshot illustrates that the disputed domain name resolved to a page with text regarding HAMPTON BAY products, with numerous embedded sponsored embedded advertisements, which if clicked, connect the user to third party resellers of competitive products; pages that display third party advertisements; and unauthorized resellers of Complainant’s HAMPTON BAY products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a home improvement specialty retailer with a global reputation and is the owner of the HAMPTON BAY trademark for which it owns a portfolio of trademarks across the world including the following registrations for which it has provided copies of the registration certificates:
United States registered trademark HAMPTON BAY Design registration number 1,485,028, registered on April 19, 1988 on the Principal Register for goods in international class 9;
United States registered trademark HAMPTON BAY registration number 3,325, 879, registered on October 30, 2007 on the Principal Register for goods in international class 11;
United States registered trademark HAMPTON BAY registration number 3,340, 864 registered on November 20, 2007 on the Principal Register for goods in international class 20;
United States registered trademark HAMPTON BAY registration number 3,706,952, registered on November 3, 2009 on the Principal Register for goods in international classes 9 and 11;
United States registered trademark HAMPTON BAY registration number 4,393,715, registered on August 27, 2013 and the Principal Register for goods in international class 27;
United States registered trademark HAMPTON BAY registration number 4,397,479 registered on September 3, 2013 on the Principal Register for goods in international class 21;
United States registered trademark HAMPTON BAY registration number 5,301,971, registered on October 3, 2017 on the Principal Register for goods in international class 22;
United States registered trademark HAMPTON BAY registration number 5,301, 972, registered on October 3, 2017 on the Principal Register for goods in international class 21;
United States registered trademark HAMPTON BAY registration number 5,800,564 registered on July 9, 2019 on the Principal Register for goods in international classes 6, 9 and, 20;
United States registered trademark HAMPTON BAY registration number 4,393, 714 registered on August 27, 2013 on the Principal Register for goods in international class 19;
United States registered trademark HAMPTON BAY registration number 5,794, 773 registered on July 2, 2019 on the Principal Register for goods in international class 6;
United States registered trademark HAMPTON BAY registration number 5, 794, 774, registered on July 2, 2019 on the Principal Register for goods in international class 11;
United States registered trademark HAMPTON BAY registration number 5, 301, 973, registered on October 3, 2017 on the Principal Register for goods in international class 9;
United States registered trademark HAMPTON BAY registration number 5,800, 565, registered on July 9, 2019 on the Principal Register for goods in international classes 6 and 9;
United States registered trademark HAMPTON BAY registration number 5, 586, 434, registered on October 16, 2018 on the Principal Register for goods in international classes 9 and 11;
United States registered trademark HAMPTON BAY registration number 5, 091, 504, registered on November 29, 2016 on the Principal Register for goods in international class 27;
United States registered trademark HAMPTON BAY registration number 4, 475, 190 , registered on January 2080 2014 on the Principal Register for goods in international class 9;
United States registered trademark HAMPTON BAY registration number 3,661, 997 registered on July 28, 2009 on the Principal Register for goods in international class 20;
United States registered trademark HAMPTON BAY registration number 5,786,939 registered on June 25, 2019 on the Principal Register for goods in international class 20;
Complainant has an established Internet presence and it is also the owner of the Internet domain name <hamptonbay.com> registered on May 2, 2002 which is the address of its website.
The disputed domain name was registered on June 25, 2017 using a privacy service to shield the identity of the registrant.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the Registrar’s response to the Forum’s request for verification of the registration details of the disputed domain name at which time the identify of Respondent was disclosed.
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 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”).
Complainant has adduced convincing evidence that it has rights in the HAMPTON BAY mark acquired through its abovementioned portfolio of registered trademarks and its goodwill and reputation established in the mark though long use in its extensive retail business including on the Internet.
The disputed domain name incorporates Complainant’s distinctive HAMPTON BAY mark in its entirety, which in itself creates sufficient similarity between the mark and the disputed domain name to render it confusingly similar.
The disputed domain name is a combination of Complainant’s HAMPTON BAY mark, the word “depot” which is a reference to Complainant’s HOME DEPOT business name and trademark and the gTLD <.com> extension which in the circumstances of the present Complaint may be ignored when considering the similarity of <hamptonbaydepot.com> and the HAMPTON BAY mark.
This Panel finds that the disputed domain name is confusingly similar to the HAMPTON BAY mark in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent has no relationship, affiliation, connection, endorsement or association with Complainant; that Respondent has never requested or received any authorization, permission or license from Complainant to use the HAMPTON BAY mark in any way; that there is no evidence in the WHOIS information to suggest that Respondent has ever been commonly known by the disputed domain name <hamptonbaydepot.com> or by the HAMPTON BAY mark or that Respondent has ever acquired any trademark rights in the same or been known as <hamptonbaydepot.com>. Additionally, Complainant has submitted that given Complainant’s long-time and extensive worldwide rights in the HAMPTON BAY mark in connection with home improvement goods, Respondent could not have rights to use the HAMPTON BAY mark unless Complainant granted them, which it has not.
In such circumstances the burden of production shifts to Respondent to prove that he has such rights or legitimate interests. Respondent has not delivered any Response or made any submissions in this proceeding and has therefore failed to discharge the burden. In the circumstances, this Panel finds that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name and Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
On the evidence adduced this Panel must conclude that the registrant of the disputed domain name was aware of Complainant, its name, business, trademark and reputation when the disputed domain name was selected and registered. The disputed domain name is a combination of Complainant’s HAMPTON BAY mark and the second element of Complainant’s extensively used HOME DEPOT mark.
Furthermore Complainant has provided a screenshot of Respondent’s website, which shows that Respondent is taking predatory advantage of Complainant’s goodwill and reputation in the HAMPTON BAY mark to attract Internet users to his website by intentionally using Complainant’s trademark in the disputed domain name and on his website to create the false impression that his website is connected with, owned by, authorized by or otherwise associated with Complainant in order to generate revenue from advertisements. The content of the website to which the disputed domain name resolves targets Complainant’s customers and misleads others by creating an impression that Respondent’s website is associated with Complainant.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. Complainant has therefore also succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to the relief sought in the Complaint
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hamptonbaydepot.com> domain name be TRANSFERRED from Respondent to Complainant.
___________________________________
James Bridgeman SC
Panelist
Dated: December 31, 2019
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