La-Z-Boy Incorporated v. LA-Z-BOY Private Limited / Iqbal Hameed; American Furniture (SMC) Private Limited / Kamran Sheikh
Claim Number: FA1111001416237
Complainant is La-Z-Boy Incorporated (“Complainant”), represented by Elizabeth K. Brock of Harness, Dickey & Pierce, P.L.C., Michigan, USA. Respondent is LA-Z-BOY Private Limited / Iqbal Hameed and AMERICAN FURNITURE (SMC) Private Limited / Kamran Sheikh, both in Pakistan (hereinafter jointly referred to as “the Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <la-z-girl.com> and <la-z-boy-galleries.com>, registered with Register.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.
Jonas Gulliksson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 18, 2011; the National Arbitration Forum received payment on November 18, 2011.
On November 18, 2011, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <la-z-girl.com> and <la-z-boy-galleries.com> domain names are registered with Register.com, Inc. and that Respondent is the current registrant of the names. Register.com, Inc. has verified that Respondent is bound by the Register.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 November 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 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@la-z-girl.com and postmaster@la-z-boy-galleries.com. Also on November 22, 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.
A timely Response was received and determined to be complete on December 12, 2011.
Complainant submitted an Additional Submission on December 16, 2011, which was deemed to be in compliance with Supplemental Rule 7.
LA-Z-BOY Private Limited submitted an Additional Submission on December 20, 2011, and American Furniture (SMC) Private Limited submitted an Additional Submission on December 21, 2011. Both Additional Submissions were deemed to be in compliance with Supplemental Rule 7.
On December 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jonas Gulliksson as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant is a world-famous maker of upholstered and wood furniture, including reclining chairs. The Complainant has been doing business under the La-Z-Boy name since 1929. In the last decade, the Complainant’s annual worldwide sales of goods and services under the LA-Z-BOY Marks (listed under findings below) have been in the range of USD one to two billion.
In addition to the United States trademark registrations, the Complainant owns registrations for one or more of the LA-Z-BOY Marks in over sixty countries/regions and in the International Register. The Complainant also holds common law rights to the LA-Z-BOY Marks. Extensive goodwill is associated with the Complainant’s trademarks. The Complainant owns, among others, the <lazyboy.com> and <la-z-boy.com> domain names.
The domain name <la-z-girl.com> is identical or confusingly similar to the Complainant’s registered trademark LA-Z-GIRL. The generic top-level domain (“gTLD”) “.com” is not sufficient to distinguish the disputed domain name from the trademark.
The domain name <la-z-boy-galleries.com> is identical or confusingly similar to the Complainant’s registered trademarks LA-Z-BOY GALLERY and LA-Z-BOY GALLERIES & Design. The minor alterations made by the Respondent are not sufficient to overcome a finding of confusing similarity pursuant to the Policy.
The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has a documented history of infringing the LA-Z-BOY Marks. LA-Z-BOY Private Limited initially incorporated in Pakistan under the name Lazy Boy (Private) Limited in March, 2007, and changed to its present name on April 26, 2007. American Furniture (SMC) Private Limited claims to be an authorized dealer of LA-Z-BOY Private Limited’s products, but its website, mailing address, email address and controlling members are identical or nearly identical to those for LA-Z-BOY Private Limited. The LA-Z-BOY Private Limited and American Furniture (SMC) Private Limited are effectively the same.
The Respondent has during several years impersonated the Complainant by incorporating counterfeit businesses in Pakistan, filing infringing trade mark applications in Pakistan and registering infringing domain names comprising the LA-Z-BOY Marks in various gTLD and country-code top-level domain (“ccTLD“) extensions. In response, the Complainant has sent cease and desist letters, filed oppositions against the trademark applications and filed and successfully pursued complaints under several domain name dispute policies. All domain name disputes have been decided in favor of the Complainant. The various trademark oppositions are still pending in Pakistan.
The disputed domain names were registered after inter alia three domain name dispute actions against the Respondent won by the Complainant. As the Respondent has been subject to prior UDRP proceedings, it has engaged in a pattern of bad faith registration and use pursuant to the Policy.
The Respondent has made no legitimate use of the disputed domain names and has never had any intention to do so. The Respondent is merely using the disputed domain names to route Internet users to a manufacturer/distributor of counterfeit LA-Z-BOY goods for sale in Pakistan. The Respondent’s websites give consumers the impression that the Respondent is the original and genuine manufacturer of LA-Z-BOY products, which is false. The Respondent is using the LA-Z-BOY Marks in the disputed domain names to divert Internet users to the Respondent’s competing websites and on these sites falsely holds itself out as being the original La-Z-Boy company. The Respondent is not offering any products, let alone authorized LA-Z-BOY branded goods on either of the websites linked to the disputed domain names. The Respondent has registered and is using the disputed domain names to trade on the goodwill and reputation associated with the LA-Z-BOY Marks and not in connection with any bona fide offering of goods or services.
The Respondent has no connection or affiliation with the Complainant, nor has the Complainant granted the Respondent license or consented to the Respondent’s use of the Complainant’s trademarks in the disputed domain names or for any other purpose. The Complainant has filed a petition with the Securities and Exchange Commission of Pakistan (“SECP”) challenging the incorporation of LA-Z-BOY (Private) Limited and requesting that the company name shall be changed. That petition is pending.
At the time of the registration of the disputed domain names, the Respondent was aware of the Complainant’s exclusive rights in the LA-Z-BOY Marks due to the Complainant’s trademark filings, prior extensive use of the trademarks, websites, distribution and sale of products in Pakistan through its authorized distributor. Also, at the time of the registration of the disputed domain names, the Complainant had, more than year earlier, to the Respondent sent cease and desist letters regarding the Respondent’s use of the LA-Z-BOY Marks.
The Respondent’s intentional diverting of consumer to its websites where it falsely declares itself to be LA-Z-BOY disrupts the Complainant’s business and which is evidence of bad faith under the Policy.
B. Respondent
LA-Z-BOY Private Limited
The disputed domain names are registered by two different companies and the Complainant’s motive for this proceeding is to blackmail and put pressure on the Respondent.
The Respondent has sold and marketed the branded products of LA-Z-BOY in Pakistan for several years. The Complainant is well aware of the business of LA-Z-BOY Private Limited and its authorized dealers, which are manufacturing home furnishing products in Pakistan.
The Respondent’s company LA-Z-BOY Private Limited is registered with SECP and acquired the legal rights as per provisions of companies ordinance 1984 for the company name. The Respondent has the exclusive rights to use the company name to manufacture, sell, import, export etc. Should the Complainant use the LA-Z-BOY Private Limited company without the Respondent’s explicit permission that would be an offence and express violation of law, tantamount to passing of and unfair competitive practice.
On all its websites the Respondent clearly mentions that LA-Z-BOY Private Limited is a Pakistani company and that it sells products manufactured by LA-Z-BOY Private Limited. The Respondent has never stated that it sells products made in USA or manufactured by LA-Z-BOY USA. The website was registered several years ago and through the internet the Respondent markets its products around the world.
The words la-z-boy and la-z-girl is globally used as common and general words for reclining chairs as well as for comfortable chairs. It is not true that these words were created or adopted first by the Complainant. Many companies in different countries are using these words for their reclining chairs and furniture products.
LA-Z-BOY Private Limited is a very well known company and it’s LA-Z-BOY and LA-Z-GIRL products are very well known in Pakistan. The website linked to the disputed domain name is used for marketing and correspondence with the Respondents customers.
The Respondent’s registration of the LA-Z-BOY, LA-ZY-BOY and LA-Z-GIRL trademarks are published and on the last stage of registration at the trademark registry office in Pakistan.
American Furniture (SMC) Private Limited
The Complainant’s motive for this proceeding is to blackmail and put pressure on the Respondent. The company American Furniture (SMC) Private Limited has not been respondent in any previous domain name dispute. American Furniture (SMC) Private Limited is an authorized dealer of the LA-Z-BOY Private Limited branded products LA-Z-BOY RECLINER, LA-Z-GIRL RECLINER, LA-Z-NITE RECLINER and LA-Z-DAY RECLINER.
The words La-z-boy and Lazy boy are globally used as common and general words for reclining chairs as well as for comfortable chairs. It is not true that these words were created or adopted first by the Complainant. Many companies in different countries are using these words for their reclining chairs and furniture products.
The Respondent displays and sells branded LA-Z-BOY Private Limited products at one of the most famous shopping malls in Pakistan, Forum at Clifton in Karachi. LA-Z-BOY Private Limited regularly offer and advertise its products in Pakistani news papers and on world famous websites since several years.
LA-Z-BOY Private Limited is registered with SECP and acquired the legal rights as per provisions of companies ordinance 1984 for the company name. LA-Z-BOY Private Limited has the exclusive rights to use the company name to manufacture, sell, import, export etc. Should the Complainant use the company name LA-Z-BOY Private Limited without the Respondent’s explicit permission that would be an offence and express violation of law, tantamount to passing of and unfair competitive practice.
The Complainants trademarks or its company is not registered in Pakistan. The LA-Z-BOY Private Limited’s trademarks LA-ZY-BOY and LA-Z-BOY were published in 2008. The Complainant submitted its trademark application for LA-Z-BOY in Pakistan on December, 2009, and it is now pending at the trademark registry.
The LA-Z-BOY Private Limited’s website linked to the disputed domain name is used to sell its branded products and for correspondence with its customers. The Respondent has never stated that it sells products made in USA or manufactured by LA-Z-BOY USA.
The Complainant does not have any representation in Pakistan or in any other country of that region.
The Complainant is well aware of the business of LA-Z-BOY Private Limited and its authorized dealers, which are manufacturing home furnishing products in Pakistan and globally via its website.
C. Additional Submissions
Complainant’s Additional Submission
The Respondent’s submitted evidence has previously been submitted in both prior UDRP and usDRP proceedings between the parties and in the pending trademark opposition proceedings in Pakistan. All of the Respondent’s evidence was created after the Complainant’s opposition to the Respondent’s trademark registrations on 5 February, 2010, and before July 2010 when the Respondent filed its answer in that proceeding. The fact that the evidence is gathered under this period of time supports the Complainants assertion that the Respondent has no actual business.
The Respondent has offered no credible proof that it is offering goods for sale in Pakistan or elsewhere. Receipts, public notice of its company and other evidence submitted by the Respondent are dated after the Complainant’s filing of oppositions in Pakistan.
The Complainant has filed a complaint concerning the Respondent’s registration with the SEPC and is working with counsel in Pakistan to address all of the Respondent’s infringing activities.
The Respondent has not offered any clear and convincing proof demonstrating any rights in the disputed domain names.
The Respondent’s Additional Submissions
The Panel finds that the two Additional Submissions from LA-Z-BOY Private Limited and American Furniture (SMC) Private Limited to a predominant proportion are nearly identical, and they are therefore jointly summarized below.
It is not true that the evidence submitted by the Respondent was created after the Complainant’s filed the opposition to the Respondents trademark registration. The agreements between LA-Z-BOY Private Limited and American Furniture (SMC) Private Limited and between LA-Z-BOY Private Limited and Samad International prove that LA-Z-BOY Private Limited has sold their branded products in Pakistan for several years.
The Complainant has failed to submit any evidence of its presence in Pakistan prior to October 2009. The Complainant started to gather evidence for its presence after the publication of the Respondent’s trademark registrations. The Complainant has failed to submit any evidence of its sales and advertisements relating to the LA-Z-GIRL trademark.
American Furniture (SMC) Private Limited was the Complainant’s authorized dealer in Pakistan in 2005. The Complainant has had contact with the Respondent’s authorized dealers for several years, which evidences the Complainant’s knowledge of the Respondent and its dealers.
The Complainant has not submitted any evidence that a complaint is initiated at the SEPC and the LA-Z-BOY Private Limited is not aware of such complaint.
The Respondent is offering fake Indian made products for sale in competition with the Complainant’s original branded products which are for sale in Pakistan.
The Complainant is the owner of the following with the United States Patent and Trademark Office (“USTPO”) registered trade marks (in this decision referred to as the LA-Z-BOY Marks):
- U.S. Reg. No. 2,828,433 for LA-Z-GIRL mark for furniture in International Class 20, registered on March 30, 2004.
- U.S. Reg. No. 1,446,910 for LA-Z-BOY GALLERY mark for retail outlet services in International Class 42, registered on July 7, 1987.
- U.S. Reg. No. 3,129,898 for LAZYBOY mark for furniture in International Class 20, registered on August 15, 2006.
- U.S. Reg. No. 2,876,840 for LAZY BOY mark for furniture in International Class 20, registered on August 24, 2004.
- U.S. Reg. No. 1,943,118 for LA-Z-BOY mark for interactive video catalogs in the field of furniture and furnishings in International Class 9 and for retail furniture store services featuring interactive video catalogs in International Class 42, registered on December 19, 1995.
- U.S. Reg. No. 1,532,017 for LA-Z-BOY mark for furniture including chairs, recliner chairs, swivel chairs, swivel rockers, tilt chairs, rocker recliner chairs, pull-up chairs, executive chairs, secretarial chairs, upholstered chairs, stacking chairs, power reclining chairs, power lift chairs, wall proximity chairs, armless chairs, incliner chairs, motions chairs, love seats, ottomans, tables, desks, credenzas, sofas, and sleep sofas in International Class 20, registered on March 28, 1989.
- U.S. Reg. No. 3,634,469 for LA-Z-BOY for furniture in International Class 20 and for retail furniture store services in International Class 35 registered on June 9, 2009.
- U.S. Reg. No. 599,684 for LA-Z-BOY & Design mark for chairs and ottomans in Class 32, registered on December 21,1954.
- U.S. Reg. No. 2,716,432 for LA-Z-BOY & Design mark for retail furniture store services in International Class 35, registered on May 13, 2003.
- U.S. Reg. No. 3,478,671 for LA-Z-BOY & Design mark in International Classes 9, 16, 18, 20, 21, 25 and 28, registered on August 5, 2005.
- U.S. Reg. No. 2,820,984 for LA-Z-BOY & Design mark for furniture in International Class 20, registered on March 9, 2004.
- U.S. Reg. No. 1,768,274 for LA-Z-BOY FURNITURE GALLERIES mark for retail furniture store services in International Class 42, registered on April 27, 1993.
- U.S. Reg. No. 2,734,884 for LA-Z-BOY FURNITURE GALLERIES & Design (color) mark for retail furniture store services in International Class 35, registered on July 8, 2003.
- U.S. Reg. No. 2,74,375 for LA-Z-BOY FURNITURE GALLERIES & Design mark for retail furniture store services in International Class 35, registered on June 10, 2003.
The disputed domain name <la-z-girl.com> was registered on September 29, 2011, by LA-Z-BOY Private Limited / Iqbal Hameed.
The disputed domain name <la-z-boy-galleries.com> was registered on October 1, 2011, by American Furniture (SMC) Private Limited / Kamran Sheikh.
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 the 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.
Preliminary Issue: Multiple Respondents
The disputed domain names are not registered by the same companies or persons, see findings above.
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”.
The question of multiple respondents has been considered by other Panels in a number of prior UDRP-cases. See e.g., Kimberly-Clark Corp. v. N/A, Po Ser and N/A, Hu Lim, D2009-1345 (WIPO December 7, 2009) (“Also, it must be recognised that it is possible for the different registrants of record to be, in fact, one and the same entity – i.e. the different registrant names are simply aliases for a single entity. In such a situation, a “holder” of the disputed domain names includes the single entity for which the names of the registrants of record are aliases.). Panels have found such a situation to exist where the different registrants have the same contact information – such as the same postal address and telephone number (Am. Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM, D2001‑0918 (WIPO Sept. 14, 2001), the same postal and email address (Deutsche Telekom AG v. Tyson Rukash / Jonson, D2005‑1023 (WIPO Nov. 18, 2005), or the same office phone number and website (Société des Hôtels Meridien v. Spiral Matrix / Kentech Inc., D2005‑1196 (WIPO Dec. 31, 2005).”); see also Speedo Holdings B.V. v. Programmer, D2010-0281 (WIPO May 18, 2010) (“[…] the Panel concludes that the consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraph 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel, having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.”).
The Complainant has argued that the entities which control the disputed domain names are effectively controlled by the same person and/or entity, which is operating under several aliases.
LA-Z-BOY Private Limited and American Furniture (SMC) Private Limited have objected to the Complainant’s request to treat them as a single entity in this proceeding arguing that the disputed domain names are registered by two different companies.
The Panel notes that neither LA-Z-BOY Private Limited nor American Furniture (SMC) Private Limited have commented on the Complainant’s statements regarding their identical or nearly identical websites, mail and e-mail addresses and controlling members. The Panel finds that the Respondent’s submitted evidence indicates that LA-Z-BOY Private Limited and American Furniture (SMC) Private Limited are in fact controlled by the same parties. For example, within the Response of LA-Z-BOY Private Limited, the Respondent asserts that they are two distinct companies, but then it submits incorporation evidence relating to the other registrant, American Furniture (SMC) Private Limited. Further, the Panel notes that some of the content in the respective Responses and a large part of the Additional Submissions are nearly identical in length and word usage, which indicates that the parties are either one person or entity or may be closely related to each other. Also, Complainant’s submitted printouts of the websites linked to the disputed domain names confirms that their content are partly identical and that visitors of the pages are directed to the same e-mail address if they wish to receive further information.
Altogether, the Panel finds that the relationship between LA-Z-BOY Private Limited and American Furniture (SMC) Private Limited is sufficient to treat them both as a single entity and that consolidation would be procedurally efficient and fair and equitable to all parties.
The Complainant has submitted evidence of the registrations of, inter alia, the trademarks LA-Z-GIRL, LA-Z-BOY GALLERY and LA-Z-BOY FURNITURE GALLERIES. Previous UDRP panels have determined that the registration of a trademark with the USPTO is sufficient for a complainant to establish rights in its mark under the Uniform Domain Name Dispute Resolution Policy (the “Policy”), paragraph 4(a)(i), regardless of where a respondent operates or resides. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to the Policy, paragraph 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel finds that the submitted evidence of the Complainant’s trademark registrations is sufficient for the Complainant to establish rights in the asserted marks under the Policy paragraph 4(a)(i).
The <la-z-girl.com> domain name is identical to the Complainant’s LA-Z-GIRL trademark with the addition of the gTLD “.com.” The addition of the gTLD does not affect the Panels finding that the disputed domain name and the Complainants trademark are identical. See Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain).
The <la-z-boy-galleries.com> domain name differs from the Complainant’s LA-Z-BOY GALLERY trademark by the added hyphen between the terms “boy” and “gallery” and the change of the word “gallery” into its plural version “galleries”. The disputed domain name differs from the Complainant’s LA-Z-BOY FURNITURE GALLERIES trademark by the word “furniture”. The Panel finds that the differences between the disputed domain name and the Complainant’s trademarks do not remove the disputed domain name from the realm of confusing similarity under the Policy paragraph 4(a)(i). 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); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (concluding that the <classicmetalroofing.com> domain name was confusingly similar to the complainant’s CLASSIC METAL ROOFS mark because changing the final term of the mark from “roofs” to “roofing” was a minor alteration and did not sufficiently distinguish the domain name from the mark).
The Respondent has not made any contentions regarding the first element of the Policy.
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark and the first element of the Policy is thus fulfilled.
The Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names under the Policy paragraph 4(a)(ii), and then the burden shifts to the Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under the Policy, paragraph 4(a)(ii), before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant has stated that the Respondent is not associated with the Complainant, holds no rights to use its trademarks and that the Respondent is not known by any of the disputed domain names. The Complainant has also asserted that it has filed trademark opposition actions in Pakistan with regard to the Respondent’s trademark filings in that country. The Complainant has argued that the Respondent is using the disputed domain names with the purpose of diverting potential customers of the Complainant by falsely stating that it is selling original LA-Z-BOY products and holding itself out to be the original LA-Z-BOY company.
The Panel finds that the WHOIS information fails to provide evidence that the Respondent is commonly known by the disputed domain names. See Brown & Brown d/b/a Mobility Transportation Services v. Sarrault d/b/a SMG inc., FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”.). Also, the Panel finds that it is clear that the Respondent was well aware of the Complainant’s trademark when registering the disputed domain names, inter alia because of the cease and desist letters and the opposition to the Respondent’s trademark filings in Pakistan.
Altogether, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names.
The Respondent has argued that it has a legitimate business interest in the disputed domain names through its trademark applications, as well as through its business name, that it claims to have used for many years. The Respondent has stated that LA-Z-BOY Private Limited is commonly known and registered in Pakistan and that it is providing original Pakistani made LA-Z-BOY products with the American Furniture (SMC) Private Limited as one of its authorized dealers. The Respondent has inter alia submitted copies of advertisement of their branded products, logo and company name in the leading news papers of Pakistan and other marketing material in order to prove its rights. The Respondent has also argued that LA-Z-BOY and LA-Z-GIRL are used by many other companies around the world and that they are general words for inter alia reclining chairs.
The Respondent has submitted copies of the publications of its trademark applications in Pakistan dated December 1, 2008. Both parties have stated that the Complainant has made a complaint against these trademarks applications. The Complainant’s trademarks to which the disputed domain names are confusingly similar were all registered prior to the Respondent’s applications (see findings above). Therefore, the Panel finds that the Respondent’s trademark applications do not prove that the Respondent has rights or legitimate interests in the disputed domain names. The Panel finds that the evidence submitted by the Respondent fails to provide evidence that the Respondent has used or will use the disputed domain names in connection with a bona fide offering of goods or services, is commonly known by the domain names <la-z-girl.com> or <la-z-boy-galleries.com> or is making a legitimate use of the domain names. Therefore, the Panel finds that the Respondent has failed show that the Respondent has rights or legitimate interests in the disputed domain names pursuant to the Policy paragraph 4(a)(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) see also See La-Z-Boy, Inc. v. Imran Shuja / La-z-boy Pvt Ltd. / Kamran Sheikh, FA 1350009 (Nat. Arb. Forum Nov. 23, 2010) (“The Panel finds that Respondent’s use of the confusingly similar disputed domain name to sell counterfeit versions of Complainant’s products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <la-ze-boy.com>, <la-z-boygalleries.com>, <la-z-boygalleries.net>, <lazboygallery.net>, <la-z-boygallery.com>, <la-z-boygallery.net>, and <la-z-boy-international.net> domain names under Policy ¶ 4(c)(iii).”).
The Panel also finds that the evidence submitted by the Respondent fails to provide evidence that LA-Z-BOY and LA-Z-GIRL are general words for reclining chairs or other furniture.
The second element of the Policy is thus fulfilled.
The Panel finds that the Respondent has been the respondent in previous UDRP proceedings in which it has been ordered to transfer the respective domain names to the Complainant. The Panel finds, inter alia based on the previous UDRP proceedings, that the Respondent has registered the disputed domain names well aware of the Complainant’s rights and in bad faith. The previous UDRP proceedings also evidences that the Respondent has registered the disputed domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct. See La-Z-Boy, Inc. v. Imran Shuja / La-z-boy Pvt Ltd. / Kamran Sheikh, FA 1350009 (Nat. Arb. Forum Nov. 23, 2010); see also La-z-Boy, Inc. v. Mohammed Iqbal, FA 1355601 (Nat. Arb. Forum Dec. 21, 2010); see also La-Z-Boy, Inc. v. LA-Z-BOY (Pvt.) Ltd., C2011-0004 (DNDRC July 29, 2011); 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 Complainant has asserted that the Respondent is using the disputed domain names in order to post advertisements and the Complainant’s brochures in order to sell competing, unauthorized, and counterfeit goods that bear the Complainant’s trademarks. The Complainant argues that such use of its trademarks diverts business and disrupts the Complainant’s authorized distributorships with the purpose to attract Internet users to the Respondent’s websites.
The Panel finds that the Respondent’s use of the websites linked to the domain names to offer counterfeiting LA-Z-BOY products marketing them as the original products shows that the disputed domain names are being used to intentionally attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark as to inter alia the source of its websites and the products offered is evidence of bad faith registration and use under the Policy, paragraph 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. 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).”).
The Panel finds that the Respondent has registered and is using the disputed domain names in bad faith and the third element of the Policy is thus fulfilled.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <la-z-girl.com> and <la-z-boy-galleries.com> domain names be TRANSFERRED from Respondent to Complainant.
Jonas Gulliksson, Panelist
Dated: January 10, 2012
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