Home Depot Product Authority, LLC v. Kashif Shahzad / Super Privacy Service LTD c/o Dynadot
Claim Number: FA1901001824265
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Kashif Shahzad / Super Privacy Service LTD c/o Dynadot (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hamptonbaylightingwebsite.net>, <hamptonbayceilingfanswebsite.net>, <hamptonbaylightingcatalogue.net>, <hamptonbayfanscatalogue.net>, <hamptonbayceilingfanscatalogue.net>, registered with NameCheap, Inc.; Dynadot, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 8, 2019; the Forum received payment on January 8, 2019.
On January 9, 2019; Jan 10, 2019, NameCheap, Inc.; Dynadot, LLC confirmed by e-mail to the Forum that the <hamptonbaylightingwebsite.net>, <hamptonbayceilingfanswebsite.net>, <hamptonbaylightingcatalogue.net>, <hamptonbayfanscatalogue.net>, <hamptonbayceilingfanscatalogue.net> domain name are registered with NameCheap, Inc.; Dynadot, LLC and that Respondent is the current registrant of the names. NameCheap, Inc.; Dynadot, LLC has verified that Respondent is bound by the NameCheap, Inc.; Dynadot, LLC 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 January 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 11, 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@hamptonbaylightingwebsite.net, postmaster@hamptonbayceilingfanswebsite.net, postmaster@hamptonbaylightingcatalogue.net, postmaster@hamptonbayfanscatalogue.net, postmaster@hamptonbayceilingfanscatalogue.net. Also on January 22, 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. Respondent did however send an e-mail to the Forum, see below.
On February 19, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant offers goods under the HAMPTON BAY mark in each of its affiliated THE HOME DEPOT stores. Today, there are over 2,200 such stores in the United States, Canada and Mexico. Through its THE HOME DEPOT stores, Complainant has worldwide sales under the HAMPTON BAY Mark in excess of one billion US dollars each year. Complainant uses its marks HAMPTON BAY and THE HAMPTON BAY FAN CO. in connection with ceiling fans and lighting fixtures. Complainant has rights in the marks based on registration in the United States in, respectively, 2000 and 1988.
Complainant alleges that the disputed domain names are confusingly similar to its HAMPTON BAY mark, as they incorporate the mark in its entirety, merely adding the generic terms “lighting,” “website,” “ceiling fans,” or “catalogue,” and generic top-level domain (“gTLD”) “.net.”
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use its marks in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain names to redirect users to a website containing numerous pay-per-click advertisements that compete with and disrupt Complainant’s business.
Further, says Complainant, Respondent registered and is using the disputed domain names in bad faith. Respondent intentionally attempts to disrupt Complainant’s business and seeks to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Specifically, Respondent is using the disputed domain names to divert users away from Complainant’s own website to a webpage that hosts pay-per-click links to third-party websites that compete with Complainant’s business. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the HAMPTON BAY mark prior to registering the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding. It its e-mail to the Forum, Respondent states (verbatim): “The website which have been referred in the email which are on hampton bay lighting and hampton bay fans. These websites are made for information purpose and reflect good will and have data relevant to hampton bay products only. Moreover there is a not given on the websites that the websites are displaying homedepot products and there is a link placed on the website which points towards the homedepot homepage. Its request the domains should be spared and only those websites which provide negative data or reviews are to be contact. It is also stated that the websites only display Hampton bay and its products and only provide good value to the user regarding items mentioned on the website.”
Complainant owns the mark HAMPTON BAY and uses it to market ceiling fans and lighting fixtures.
Complainant’s rights in its marks date back to 2000.
The disputed domain names were registered in 2018.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The disputed domain names resolves to websites that display Complainant’s mark and some of its products, and advertising links to competing products.
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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that all of the disputed domain names contain links to the other domain names. Additionally, Complainant argues the similarity of the domain names and their content leads to the conclusion that the registrants are the same. Complainant provides copies of the WHOIS information for the disputed domain names in support of its contentions.
In its e-mail to the Forum, Respondent does not contest that it is the registrant of all the disputed domain names; on the contrary, its e-mail appears to imply that it is the registrant of all the disputed domain names.
Consequently, the Panel will rule on all of the contested domain names, and the registrants are collectively referred to as “Respondent”.
The disputed domain names are confusingly similar to Complainant’s HAMPTON BAY mark, as they incorporate the mark in its entirety, merely adding the generic terms “lighting,” “website,” “ceiling fans,” or “catalogue” and a “.net” gTLD. Addition of generic terms and a gTLD to a complainant’s mark is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Thus the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not authorized Respondent to use the HAMPTON BAY mark in any way. Respondent is not commonly known by the disputed domain names: where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS information of record identifies the owner of the disputed domain names as “Kashif Shahzad” or “Super Privacy Service LTD c/o Dynadot.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain names.
Respondent fails to use the disputed domain names to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Instead, the names resolve to websites which displays Complainant’s mark, descriptions of some of Complainant’s products, and pay-per-click advertisements that compete with and disrupt Complainant’s business. Use of a domain name to host pay-per-click links that compete with a complainant is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Accordingly, the Panel finds that Respondent is not using the disputed domain names to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii), and the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
As already noted, the disputed domain names display Complainant’s mark and some of its products. In its e-mail to the Forum, Respondent admits that it knew of Complainant’s mark and products. Thus, Respondent registered the disputed domain names with actual knowledge of Complainant’s mark. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
In its e-mail to the Forum, Respondent alleges that the resolving websites do not display competing products. However, Complainant provides evidence showing that, as already noted, the disputed domain names are used to host pay-per-click links to Complainant’s competitors, thereby disrupting Complainant’s business. Use of a disputed domain name to disrupt a complainant’s business and/or commercially benefit by hosting pay-per-click links to competitors may demonstrate bad faith under Policy ¶¶ 4(b)(iii) and (iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). The Panel therefore finds that Respondent is using the disputed domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hamptonbaylightingwebsite.net>, <hamptonbayceilingfanswebsite.net>, <hamptonbaylightingcatalogue.net>, <hamptonbayfanscatalogue.net>, <hamptonbayceilingfanscatalogue.net> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: February 19, 2019
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