La-Z-Boy Chair Company v. ReachLocal Hostmaster
Claim Number: FA2103001935231
Complainant is La-Z-Boy Chair Company (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia, USA. Respondent is ReachLocal Hostmaster (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lazboy.biz>, registered with Name.com, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 3, 2021; the Forum received payment on March 3, 2021.
On March 3, 2021, Name.com, Inc. confirmed by e-mail to the Forum that the <lazboy.biz> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 March 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 2021 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@lazboy.biz. Also on March 4, 2021, 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 March 29, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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, La-Z-Boy Chair Company, manufactures and distributes recliners, sofas, and other furniture products. Complainant has rights in the LA-Z-BOY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 599,684, registered Dec. 21, 1954). Respondent’s <lazboy.biz> domain name is identical or confusingly similar to Complainant’s LA-Z-BOY mark, merely omitting the hyphens within the mark and adding the “.biz” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <lazboy.biz> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the LA-Z-BOY mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for a legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as Complainant, offering Complainant’s goods for sale in an attempt to obtain personal and financial information of Complainant’s customers.
Respondent registered and uses the <lazboy.biz> domain name in bad faith. Respondent diverts Internet users away from Complainant’s website and purports to offer Complainant’s goods for sale. Such use constitutes bad faith disruption and attraction to commercial gain. Complainant further alleges that Respondent is a serial cybersquatter, and has shown a pattern of bad faith registration in previous UDRP decisions. Complainant also sent Respondent a cease and desist letter which Respondent never responded to, and continues to pass off as Complainant using the infringing domain name. Respondent’s use of a privacy service to protect its identity is further evidence of bad faith. Additionally, Respondent had actual knowledge of Complainant’s rights in the LA-Z-BOY mark prior to registering the disputed domain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <lazboy.biz> domain name.
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 asserts rights in the LA-Z-BOY mark through its registration with the USPTO. Generally, registration of a mark with a trademark agency is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant provides evidence of its registration with the USPTO (e.g., Reg. 599,684, registered Dec. 21, 1954). The Panel finds that Complainant has rights in the LA-Z-BOY mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <lazboy.biz> domain name is identical or confusingly similar to Complainant’s LA-Z-BOY mark, only differing by removing the two hyphens within the mark and adding the “.biz” gTLD. Omitting hyphens within a mark and adding a gTLD do not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark). The Panel finds that the disputed domain name is confusingly similar to Complainant’s LA-Z-BOY mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel finds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <lazboy.biz> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the LA-Z-BOY mark. When response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The publicly available WHOIS information indicates that the registrant utilized a privacy service, as all contact information states “REDACTED FOR PRIVACY”. However, the registrar for the disputed domain identified “ReachLocal Hostmaster” as the registrant of the disputed domain name. There is nothing in the record that rebuts Complainant’s contention that it never authorized Respondent to use the LA-Z-BOY mark. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further contends that Respondent does not use the <lazboy.biz> domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use, but rather attempts to pass itself off as Complainant in an attempt to obtain Internet users personal and financial information. Using an infringing domain name to offer Complainant’s goods for sale does not amount to a bona fide offering of goods or services, nor can it be a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the resolving website for the disputed domain as evidence of Respondent’s use of the disputed domain, noting Respondent allegedly offers Complainant’s goods for sale. This is evidence that Respondent lacks rights and legitimate interests in respect of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant maintains that Respondent uses the <lazboy.biz> domain name in furtherance of a phishing scheme. Using an infringing domain name to obtain personal and financial information from Internet users is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent lacked rights and legitimate interests in a domain name with which it conducted a phishing scheme to procure “Internet users’ personal information”). Complainant provides evidence of Respondent’s checkout and shipping pages, which allow Internet users who believe they are purchasing legitimate products from Complainant to put in their address, credit card information, and other personal information, which then goes to Respondent. The Panel agrees that Respondent is using the disputed domain name to operate a phishing scheme and finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <lazboy.biz> domain name in bad faith because Respondent diverts Internet users away from Complainant’s legitimate website by purportedly offering Complainant’s goods for sale. Attempting to sell Complainant’s goods constitutes bad faith disruption and attraction to commercially gain under Policy ¶¶ 4(b)(iii) and (iv). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Hewlett-Packard Co. v. Ali, FA 353151 (Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Complainant provides evidence of Respondent’s checkout and shipping pages, which allow Internet users who believe they are purchasing legitimate products from Complainant to put in their address, credit card information, and other personal information, which then goes to Respondent. This is evidence that Respondent registered and uses the disputed domain in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant also points to Respondent’s previous adverse UDRP decisions as evidence of Respondent’s pattern of bad faith registrations. Under Policy ¶ 4(b)(ii), previous UDRP decisions against a party may indicate a pattern of bad faith registration which sufficiently demonstrates bad faith registration for an infringing domain name. See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Complainant provides evidence of five prior decisions against Respondent as evidence of Respondent’s bad faith. The Panel finds that Respondent is a serial cybersquatter which is evidence of bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant sent Respondent a cease and desist letter with regard to the <lazboy.biz> domain name. Previous Panels have held that failing to respond to a cease and desist letter demonstrates bad faith under Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Complainant provides a copy of the letter sent to Respondent and maintains it has not received a response. This is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Given Respondent’s use of the disputed domain name, Complainant argues that the use of a privacy service to conceal Respondent’s identity is further evidence of bad faith. Previous Panels have held that although use of a privacy service is not in and of itself evidence of bad faith under Policy ¶ 4(a)(iii), it may be further evidence when coupled with other factors. See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). This is evidence that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant further argues that Respondent registered the <lazboy.biz> domain name with actual knowledge of Complainant’s rights in the LA-Z-BOY mark. Per Policy ¶ 4(a)(iii), actual knowledge of another’s trademark rights sufficiently establishes bad faith, and may be demonstrated by the fame of a mark and the use Respondent makes of the disputed domain name. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant provides evidence of the substantial notoriety and news coverage it has received, and Respondent’s use of the disputed domain name to pass itself off as Complainant as evidence of Respondent’s actual knowledge. The Panel finds actual knowledge was present and Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <lazboy.biz> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
April 1, 2021
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