Home Depot Product Authority, LLC v. Kazeem Aderibigbe
Claim Number: FA1904001839572
Complainant is Home Depot Product Authority, LLC (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, United States. Respondent is Kazeem Aderibigbe (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homedepotcreditcardpromotions.online>, registered with NameCheap, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 18, 2019; the Forum received payment on April 18, 2019.
On April 18, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <homedepotcreditcardpromotions.online> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 April 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 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@homedepotcreditcardpromotions.online. Also on April 19, 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 May 20, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is the world’s largest home improvement specialty retailer and fourth largest retailer in the United States, with annual worldwide sales of more than $100.9 billion. It has more than 2,200 retail stores in the United States (including Puerto Rico and the U.S. Virgin Islands and the territory of Guam), Canada, and Mexico. Complainant has rights in the HOME DEPOT mark through its registration in the United States in 2004.
Complainant alleges that the disputed domain name is confusingly similar to its HOME DEPOT mark because it incorporates the mark and merely adds the generic terms “credit,” “card,” and “promotions” and generic top-level domain (“gTLD”) “.online”. This does not negate the confusing similarity between the disputed domain name and the mark. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interest in the disputed domain name because respondent is not commonly known by the disputed domain name. Additionally, Respondent has not used the domain name in good faith and in connection with a bona fide offering of goods or services. The domain name resolves to a suspended website, but previously resolved to a page with text that read “Home Depot Credit Card Promotions Online… Get Free Home Depot Gift Card Today.” Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and used the disputed domain name in bad faith as Respondent used the domain name to direct Internet users to a third-party commercial website, diverting consumers searching for Complainant’s website and likely confusing or misleading consumers into believing the website is affiliated with Complainant. Furthermore, Respondent had knowledge of Complainants’ rights in the HOME DEPOT mark due to Complainant’s multiple registrations with federal trademark agencies and the global use and fame of the mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark HOME DEPOT and uses it to market home improvement products.
Complainant’s rights in its marks date back to at least 2004.
The disputed domain name was registered in 2018.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website contained fraudulent gift card offers.
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”).
The disputed domain name is confusingly similar to Complainant’s HOME DEPOT mark because in incorporates the mark and merely adds the generic terms “credit”, “card”, “promotions”, and the gTLD “.online”. The addition of generic words to a fully formed mark in a domain name does not distinguish the domain name from a complainant’s mark. See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”). Additionally, the addition of a gTLD does not distinguish a disputed domain name from a mark. See MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not authorized Respondent to use its HOME DEPOT mark in any way. Respondent is not commonly known by the disputed domain name: where there is no response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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 identifies Respondent as “Kazeem Aderibigbe.” Thus the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
The resolving website contained fraudulent gift card offers. Specifically, it displayed text that read “Home Depot Credit Card Promotions Online… Get Free Home Depot Gift Card Today.” This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ranbaxy Laboratories Inc. v. Johnny Carpela, FA0810001231644 (Forum Dec. 10, 2008) (finding that a website which fraudulently purported to be a reference site for a brand name medication was not bona fide or legitimate.); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA95407 (Forum Sept. 27, 2000) (“[U]nauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”).Therefore, the Panel finds that Respondent does use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, the resolving website offered fraudulent gift cards, thus competing with Complainant. See United Parcel Service of America, Inc. v. Jamie Hans FA1901001826973 (Forum Feb. 25, 2019) (“Respondent registered two domain names that combine Complainant's well-known mark with generic terms relating to Complainant's business, and is using them to impersonate Complainant, presumably for fraudulent purposes. Such conduct is indicative of bad faith registration and use under the Policy.”); see also Society for the Promotion of Japanese Animation v. In Stealth Mode, citing S. Exposure v. S. Exposure, Inc., FA 94864 (Forum July 18, 2000) (respondent acted in bad faith by attracting Internet users to website that competes with complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (respondent diverted business from complainant to competing website in violation of Policy ¶ 4(b)(iii)); see also Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and/or (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 <homedepotcreditcardpromotions.online> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 11, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page