La-Z-Boy Chair Company v. Phil Stoma
Claim Number: FA1110001410424
Complainant is La-Z-Boy Chair Company (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Phil Stoma (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lazboylouisiana.com>, <lazboy-louisiana.com>, and <lazboy-lafayette.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 6, 2011; the National Arbitration Forum received payment on October 11, 2011.
On October 6, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <lazboylouisiana.com>, <lazboy-louisiana.com>, and <lazboy-lafayette.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.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 October 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 2011 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@lazboylouisiana.com, postmaster@lazboy-louisiana.com, and postmaster@lazboy-lafayette.com. Also on October 13, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Resondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lazboylouisiana.com>, <lazboy-louisiana.com>, and <lazboy-lafayette.com> domain names are confusingly similar to Complainant’s LA-Z-BOY mark.
2. Respondent does not have any rights or legitimate interests in the <lazboylouisiana.com>, <lazboy-louisiana.com>, and <lazboy-lafayette.com> domain names.
3. Respondent registered and used the <lazboylouisiana.com>, <lazboy-louisiana.com>, and <lazboy-lafayette.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, La-Z-Boy Chair Company, claims rights in the LA-Z-BOY mark based on its registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,532,917 registered March 28, 1989). Complainant makes upholstered furnishings, including recliners, sofas, stationary chairs, and sleeper sofas.
Respondent, Phil Stoma, registered the disputed domain names on August 20, 2011. Each of the disputed domain names resolves to a parked website featuring links to third-party sites, some of which compete with Complainant’s business.
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant has provided evidence of its registrations of the LA-Z-BOY mark with the USPTO, sufficient to confer rights in a mark under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). (e.g. Reg. No. 1,532,917 registered March 28, 1989). The Panel concludes that this is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
The disputed domain names are confusingly similar to Complainant’s LA-Z-BOY mark under Policy ¶ 4(a)(i). Each disputed domain name includes Complainant’s mark and simply omits the hyphens between the terms, and adds a geographic identifier and the generic top-level domain (“gTLD”) “.com.” The <lazboy-louisiana.com> and <lazboy-lafayette.com> domain names also add a hyphen between the mark and the geographic identifier. The omission or addition of hyphens in a Complainant’s mark or disputed domain name cannot distinguish the domain name under Policy ¶ 4(a)(i). The affixation of the gTLD “.com” is also insufficient to distinguish a disputed domain name. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The inclusion of the geographic identifier “lousiana” or “lafeyette,” does not distinguish the disputed domain name either. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“[I]t is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Therefore, the Panel concludes that the disputed domain names are confusingly similar to Complainant’s LA-Z-BOY mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
It is now well established that Complainant shoulders the initial burden of presenting a prima facie case. Once this burden has been satisfied, as is the case here, the burden then shifts to Respondent to refute Complainant’s claims. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Some panels have concluded that a Respondent’s failure to submit a Response is per se evidence that Respondent lacks rights and legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel here will examine the record to determine whether such rights or legitimate interests exist under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <lazboylouisiana.com>, <lazboy-louisiana.com>, and <lazboy-lafayette.com> domain names for the purposes of Policy ¶ 4(c)(ii). The relevant WHOIS information identifies the domain name registrant as “Phil Stoma,” which the Panel finds to bear no resemblance to any of the disputed domain names. This provides evidence that Respondent is not commonly known by the disputed domain names. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Complainant also states that it did not authorize Respondent to use Complainant’s LA-Z-BOY mark in a domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant further alleges that Respondent’s use of the disputed domain names does not coincide with a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Each of the disputed domain names resolves to a parked website featuring links to third-party sites, some of which compete with Complainant’s business. Past panels have found that this type of use constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute 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)); see also Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”). The Panel concludes that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s inclusion of links to Complainant’s competitors on its website constitutes bad faith disruption of complainant’s business under Policy ¶ 4(b)(iii). Respondent’s operation of a website under the confusingly similar domain names will lead some Internet users to mistakenly visit Respondent’s website instead of Complainant’s. No doubt, a portion of these misdirected users will access the competing links displayed on Respondent’s site. The Panel holds that this constitutes registration and use in bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Respondent’s registration and use of the <lazboylouisiana.com>, <lazboy-louisiana.com>, and <lazboy-lafayette.com> domain names also constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). Through the use of confusingly similar domain names, Respondent creates a likelihood of confusion with Complainant and its products and deceives consumers into mistakenly believing that Respondent is affiliated with Complainant’s business in some way. The Panel assumes that Respondent collects click-through fees each time one of its links is accessed. In this way, Respondent realizes a commercial gain through the confusion it creates. The Panel holds that this business model constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
Complainant contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the LA-Z-BOY mark. The Panel finds it very likely that Respondent has actual knowledge of Complainant's mark and, therefore, that Respondent has registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lazboylouisiana.com>, <lazboy-louisiana.com>, and <lazboy-lafayette.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 16, 2011
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