LF, LLC v. nadezda ershova / LivingOffCloud
Claim Number: FA2104001940056
Complainant is LF, LLC (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, Pennsylvania, USA. Respondent is nadezda ershova / LivingOffCloud (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allenrothhome.com>, registered with CloudFlare, Inc. (“Registrar”).
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.
David H. Bernstein as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 2, 2021; the Forum received payment on April 2, 2021.
On April 2, 2021, CloudFlare, Inc. confirmed by e-mail to the Forum that the <allenrothhome.com> domain name is registered with CloudFlare, Inc. and that Respondent is the current registrant of the name. CloudFlare, Inc. has verified that Respondent is bound by the CloudFlare, 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 5, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 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@allenrothhome.com. Also on April 5, 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.
A timely Response was received and determined to be complete on April 25, 2021.
On April 28, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David H. Bernstein 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a Delaware company that owns the intellectual property—including the ALLEN + ROTH trademark (the “mark”)—of Lowe’s Companies, Inc., a home improvement retail company. Complainant first commenced using the mark in 2007 “in connection with the advertising, marketing and sale of various home décor products including furniture, ceiling fans, flooring and wall tile, kitchen counters and accessories, rugs, bedding, and more.”
In addition to Complainant’s continuous use of the mark since 2007, Complainant claims rights in the mark based on its registration with the U.S. Patent and Trademark Office (“USPTO”) under Reg. Nos. 3,772,966 and 3,843,169, registered April 6, 2010, and August 31, 2010, respectively. Complainant also claims rights in the mark based on its international registration through the Madrid Protocol under International Reg. No. 1,253,565, registered February 27, 2015.
Complainant contends that the disputed domain name, <allenrothhome.com>, is confusingly similar to Complainant’s registered mark because the domain name encompasses the mark with the addition of the word “home” and the “.com” top-level domain. Complainant maintains that, because the word “home” relates to Complainant’s business and “.com” is a “generic” top-level domain, visitors to Respondent’s website are likely to think either: (1) that they are visiting one of Complainant’s websites; or (2) “that the Complainant has endorsed, sponsored or affiliated itself with the goods, services, or other activities offered” at the <allenrothhome.com> domain name.
Complainant contends that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the <allenrothhome.com> domain name or by the names “Allen” or “Roth.” Complainant further contends that Respondent’s use of the domain name is not a “bona fide offering of goods and services” because the website contains monetized advertisements for various companies’ goods and services. According to Complainant, “[t]he real purpose of Respondent’s site is to derive revenue from the monetized advertisements that appear on the page or to divert traffic from Complainant’s own website.”
Complainant contends that the domain name is not a legitimate noncommercial or fair use because the resolving website “was created solely for Respondent’s profit.” Complainant notes that Respondent’s website indicates that Respondent earns revenue for advertisements through the Amazon Services LLC Associates Program. Complainant asserts, however, that “the size and placement of this notice does nothing to dispel association of the site with Complainant and clearly indicates that Respondent is trying to perpetuate the passing off of its website as originating with Complainant.”
Complainant contends that Respondent acted in bad faith by registering the disputed domain name. Complainant asserts that Respondent had actual notice of Complainant’s rights in the mark through Complainant’s extensive use of the mark, which pre-dates the creation date of the <allenrothhome.com> domain name. Complainant also asserts that Respondent acted in bad faith because Respondent’s use of the mark has disrupted Complainant’s business by linking to goods and services sold by Complainant’s competitors to “generate click-through revenue.” Complainant further notes that Respondent failed to respond to the demand letter and two follow-up messages that Complainant sent Respondent, which some administrative panels have found as evidence of bad faith.
B. Respondent
Respondent is a Canadian individual and organization. Respondent manages a website that resolves from the <allenrothhome.com> domain name, which Respondent registered on August 31, 2016. Respondent uses its website to blog about home decorating ideas, many of which pertain to Complainant’s products. On its website, Respondent disclaims any affiliation with Complainant’s brand and instead describes itself as a “consumer who loves the brand and loves writing about new products and my experiences using these products.”
Respondent contends that the disputed domain name is not confusingly similar to Complainant’s mark because it lacks the character “+” or the words “plus” and “and.” Respondent avers that it “did not want the domain name to be confused with” Complainant’s mark when it created the domain name. Rather, Respondent asserts that it created the domain name “to reflect the nature of the website.”
Respondent contends that it has legitimate interests in the disputed domain name because it “searched hard to find a domain name that would reflect the nature of the website.” Respondent also notes that it “lawfully bought” the domain name.
Respondent contends that its actions do not constitute bad faith because it has never claimed to represent Complainant. Respondent asserts that it posted a “clear disclaimer” on its website stating that “Allen Roth Home is in no way affiliated with Allen + Roth.” Respondent further notes that its website’s design and color scheme are “very different from the brand colors of the trademark of Complainant.”
Respondent asserts that it selected and registered its domain name because it believed the name reflected the nature of the website. Respondent characterizes its website’s purpose as “collect[ing] all the possible information” about various home decor products “to help people . . . in search of this information.” Respondent also maintains that it did not create the domain name with the intention to disrupt Complainant’s business or with the intention to sell it to Complainant for personal gain. According to Respondent, it created the domain name because it “wanted to promote the brand of Complainant further.”
Complainant commenced using the mark in 2007 in connection with the advertising, marketing, and sale of Complainant’s home decor products.
Complainant is the owner of two USPTO-registered trademarks for products using the mark, including: (1) Reg. No. 3,772,966 for, among other things, robe hooks, electric switchplates, bathroom light fixtures, mirrors, and metal toilet paper holders, with a registration date of April 6, 2010; and (2) Reg. No. 3,843,169 for various household decor products, with a registration date of August 31, 2010.
Complainant’s mark has been registered through the Madrid Protocol under International Reg. No. 1253565, with a registration date of February 27, 2015.
Respondent registered the domain name on August 31, 2016.
The WHOIS information for the disputed domain name identifies the registrant name as “nadezda ershova” and the registrant organization as “LivingOffCloud.”
Respondent uses the domain name for a website that, at the time of the Complaint’s filing, contained a header with the name “Allen Roth Home.”
Respondent’s website contains a disclaimer that states: “Allen Roth Home is in no way affiliated with Allen + Roth.”
Respondent’s website notes that it participates in the “Amazon Services LLC Associates Program, an affiliate advertising program designed to provide a means for sites to earn advertising fees by advertising and linking to amazon.com.”
Respondent’s website contains advertisements that link to websites for a variety of companies. Although some of those links are to Lowe’s, others are to Amazon and third-party competitors of Complainant.
On March 18, 2021, Complainant submitted a demand letter through the Registrar’s online contact form demanding that Respondent cease using the domain name.
Complainant followed its demand letter with two messages, on March 24, 2021, and March 30, 2021. Complainant never received a response.
The disputed domain name is identical or confusingly similar to Complainant’s mark.
Complainant has established that Respondent does not have rights or legitimate interests in the domain name.
Complainant has proved by a preponderance of the evidence that Respondent has registered and used the domain name in bad faith.
Paragraph 15(a) of the Rules instructs the 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.
As a preliminary matter, it is undisputed that Complainant has rights to the mark based on its U.S. and international trademark registrations. A United States trademark registration “prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a [ ] case” under the Uniform Domain Name Dispute Resolution Policy (“UDRP”). WIPO Overview 3.0, § 1.2.1. See Electronic Commerce Media, Inc. v. Taos Mountain, FA0008000095344 (Forum Oct. 11, 2000) (noting that, under U.S. law, a trademark registration is prima facie evidence of a mark’s validity).
Although not identical, Respondent’s domain name is confusingly similar to Complainant’s mark. The test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.” WIPO Overview 3.0, § 1.7. Compared to the mark, the domain name drops the character “+” and adds the word “home” and the “.com” top-level domain.
The slight differences between the mark and the domain name are too insignificant to mitigate the domain name’s confusing similarity to Complainant’s mark under the Policy. Numerous prior panels have found that removing terms from a mark does not alleviate a domain name’s confusing similarity, especially if the distinctive elements of the mark remain. See, e.g., Kabbalah Ctr. Int’l, Inc. v. Bnei Baruch USA, Case No. FA1101001369415 (Forum Apr. 4, 2011) (recognizing that “removing terms from a complainant’s mark does not alleviate confusing similarity under Policy 4(a)”); WestJet Air Ctr., Inc. v. W. Jets LLC, Case No. FA0103000096882 (Forum Apr. 20, 2001) (finding that the domain name <westjets.com> is confusingly similar to trademark “WESTJET AIR CENTER” despite deleting the words “air” and “center”). Similarly, many panels have found that adding a dictionary term and a top-level domain to a trademark are insufficient to differentiate a domain name from a mark for purposes of the Policy. See, e.g., Am. Council on Educ. and GED Testing Serv. LLC v. robel getaneh, Case No. FA1712001761719 (Forum Jan. 31, 2018) (the “addition of a dictionary term and a [top-level domain] do not prevent a finding that the domain [name] is confusingly similar to a mark for purposes of the first factor of the UDRP”); Microsoft Corp. v. Thong Tran Thanh, FA1512001653178 (Forum Jan. 24, 2016) (disputed domain name was confusingly similar to complainant’s trademark where the domain name “differ[ed] only by the addition of a generic or descriptive phrase and top-level domain name”).
Although Respondent claims that it “did not want the domain name to be confused with” the mark, Respondent’s intent does not make the domain name any less confusingly similar to Complainant’s mark for purposes of the Policy.
Accordingly, the Panel finds that the disputed domain name <allenrothhome.com> is confusingly similar to Complainant’s ALLEN + ROTH trademark.
Under the second element, Complainant first must make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of production shifts to Respondent to come forward with evidence that it has rights and legitimate interests in the disputed domain name. See Germanotta v. oranges arecool XD, Case No. FA1108001403808 (Forum Sept. 21, 2011). Under Paragraph 4(c) of the Policy, Respondent has rights or legitimate interests in the disputed domain name if any of the following circumstances apply:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant has established that Respondent has not used the domain name in connection with a bona fide offering of goods or services. To be “bona fide,” Respondent’s offering must satisfy the following four factors: (1) “Respondent must actually be offering the goods or services at issue”; (2) “Respondent must use the site to sell only the trademarked goods”; (3) Respondent’s website “must accurately disclose the registrant's relationship with the trademark owner”; and (4) “Respondent must not try to corner the market in all domain names.” Oki Data Americas, Inc. v. ASD, Inc., Case No. D2001-0903 (WIPO Jan. 6, 2001).
Respondent cannot satisfy the Oki Data factors. First, its website does not offer Complainant’s products at all—the website contains information about home decor products and advertisement links to generate revenue for Respondent. Blogs that reference branded goods but then offer pay-per-click (“PPC”) links to third party products generally do not amount to a bona fide offering of goods and services because such websites do not directly offer the branded goods or services at issue and provide substantial opportunities to switch consumers to other products. For example, when clicking on a number of the Allen + Roth products shown on the website, the user is taken to an Amazon page that indicates the product is no longer available but offers similar products made by other manufacturers. This is hardly a bona fide offering of Allen + Roth goods. See WIPO Overview 3.0, § 2.8.2 (“PPC websites do not normally meet the Oki Data requirements as they do not themselves directly offer the goods or services at issue.”); MasterCard Int’l Inc. v. Global Access, Case No. D2008-1940 (WIPO Feb. 20, 2009) (“Providing pay per click links to another's product is different to offering for sale and reselling another's product.”). The Panel thus finds that Respondent has not used the domain name in connection with a bona fide offering of goods or services under Paragraph 4(c)(i) of the Policy.
Respondent also fails to meet the second element, that the website must sell only the trademarked goods. Here, some of Respondent’s links promote goods that are in competition with Complainant’s goods. For example, Respondent’s website contains a section about Allen + Roth ceiling fans in which it promotes replacement remote controls by other brands such as Fnado, Pikeman, Pechem and Hiyall. Similarly, it contains a section about Allen + Roth outdoor privacy screens but then promotes competitive privacy screens by such other brands as Yardistry Garden, Oriental Furniture and Versare Outdoor. And the website is peppered with advertisements sourced through Yahoo! or Google, for a wide range of competitive products. For example, on the page discussing Allen + Roth patio furniture, a banner ad advertises an “outdoor furniture clearance”; clicking on that ad directs the user to websites for Wayfair and other out door furniture manufacturers; another ad takes consumers directly to the website for Ashley HomeStore. Rather than a legitimate interest, Respondent’s conduct is more akin to a bait and switch, luring Internet users to its website by using Complainant’s mark in the domain name but then selling or promoting competitive goods instead of Complainant’s goods. That is an illegitimate business practice and does not constitute rights or legitimate interests under the Policy.
Respondent fails to produce evidence to support a right or legitimate interest under the other circumstances listed in the Policy as well. Complainant has established that Respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name identifies the registrant name as “nadezda ershova” and the registrant organization as “LivingOffCloud.” Based on the available evidence, the Panel finds that Respondent is not commonly known by the domain name or its derivatives under Paragraph 4(c)(ii) of the Policy. See Montres Breguet S.A. v. Domain Adm’r / PortMedia, Case No. FA1111001417906 (Forum Feb. 7, 2012) (“Based upon the WHOIS information and the lack of contradicting evidence on record, the Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”); Wells Fargo & Co. v. Onlyne Corporate Services11, Inc., Case No. FA0310000198969 (Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain, one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant also has established that Respondent is not making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. As noted above, Respondent earns advertisement revenue from the PPC and advertising links that promote numerous companies’ goods and services. Respondent does not dispute that it uses the domain name for commercial gain.
The only remaining question, then, is whether Respondent’s use of the domain name qualifies as a fair use. Respondent contends that its use of the domain name is a fair use because Respondent’s website disclaims any affiliation with Complainant’s brand and because Respondent “wanted to promote the brand of Complainant further.” That argument is insufficient to support a finding that Respondent’s use of the domain name is a fair use.
For the same reason that the Panel finds Respondent’s use not to be bona fide, the Panel finds that Respondent’s use is not a fair use. Using Complainant’s trademark to lure Internet users to its website and then promoting the goods of Complainant’s competitors is not fair. That is especially the case where the domain name does nothing to indicate that the website promotes and links to goods in competition with Complainant. See generally Dover Downs Gaming & Entm’t, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC, WIPO Case No. D2019-0633 (domain name that impersonates complainant is not a fair use).
It also cannot be a fair se where the website itself (which is prominently branded Allen Roth Home) does little to dispel the notion that Complainant and Respondent are affiliated. Although the website contains a disclaimer that the website “is in no way affiliated with Allen + Roth,” this disclaimer is found on the “About” page and not on the “Home” page that consumers initially visit. Moreover, that disclaimer does nothing to allay the initial interest confusion caused by the domain name itself. See Wal-Mart Stores, Inc. v. Domains by Proxy, LLC / UFCW Int’l Union, Case No. D2013-1304 (WIPO Oct. 7, 2013) (“The Panel concludes that the disclaimer statement that the website is not affiliated with Complainant is not effective to remedy the damage already created.”).
Respondent’s use of the disputed domain name also is not a fair use because Respondent earns revenue through PPC links and advertisements, many of which divert consumers to the websites of Complainant’s competitors. See Harpo, Inc. and Oprah’s Farm, LLC v. Robert McDaniel, Case No. D2013-0585 (WIPO July 17, 2013) (finding that “the commercial use of the Domain Names for PPC advertising does not reflect any rights or legitimate interests of the Respondent in the Domain Names”); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (“Using a competitor’s mark to divert sales in this manner is akin to a ‘bait and switch,’ and does not represent a fair use as defined by the policy.”). Although some of the advertisements on the website link to Complainant’s products allegedly sold on Amazon, as noted above, many of those links end up promoting competitive products; moreover, other links divert traffic directly to competitive websites. All of these disrupt Complainant’s business. The Panel thus finds that, under Paragraph 4(c)(iii) of the Policy, Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Accordingly, the Panel finds that Complainant has shown, by a preponderance of the evidence, that Respondent lacks rights or legitimate interests in respect of the disputed domain name <allenrothhome.com>.
Under Paragraph 4(b) of the Policy, Complainant establishes that Respondent has used the disputed domain name in bad faith by proving that any of the following circumstances, among other things, are present:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The Panel finds that Respondent has intentionally attempted, for commercial gain, to attract consumers to its website through confusion. As noted above, the domain name itself impersonates Complainant and therefore lures Internet users to the website on the mistaken belief that this is the website for Allen + Roth home products. Although Respondent asserts that its intent “was to reflect the nature of the website” with its domain name, there is nothing about the domain name that reflects that this is a site unrelated to Complainant or one on which Respondent will profit from PPC links that bait and switch consumers to competitive products. Further, although Respondent claims that it selected colors and an overall design that differ from that of Complainant’s mark and website, the fact remains that the main banner at the top of the website confusingly welcomes internet users to “Allen Roth Home” with no disclaimer visible on the home page. Directly below Allen Roth Home, the website states: “My Home Decor Blog and your favorite Allen Roth place!,” which easily could confuse consumers into believing this is home decor blog sponsored by Complainant.
As for Respondent’s assertion that it “searched hard to find a domain name” that would not be confused with Respondent’s mark, that contention simply is not credible. There are an innumerable number of words that Respondent could have used for its domain name. Indeed, as of the date of this decision, Respondent appears to have registered the domain name <houseyardlove.com>, to which the disputed domain name now redirects. The fact that Respondent has now come up with a name for its blog and website that does not cybersquat on the distinctive “Allen” and “Roth” components of Complainant’s mark speaks volumes about the availability of alternative domain names.
Accordingly, the Panel finds that Complainant has shown, by a preponderance of the evidence, that Respondent registered and has used the disputed domain name <allenrothhome.com> in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <allenrothhome.com> domain name be TRANSFERRED from Respondent to Complainant.
David H. Bernstein, Panelist
Dated: May 13, 2021
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