La-Z-Boy Chair Company v. Online Management
Claim Number: FA1405001561533
Complainant is La-Z-Boy Chair Company (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Online Management (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lzbhq.com>, registered with GODADDY.COM, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 27, 2014; the National Arbitration Forum received payment on June 4, 2014.
On May 29, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <lzbhq.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 June 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 2014 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@lzbhq.com. Also on June 5, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 1, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant has rights in the LZB mark, used in connection with the creation, manufacturing, advertising, distribution and sale of upholstered furnishings, such as recliners, sofas, stationary chairs, and others. Complainant owns a registration for the LZB mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,662,506 registered October 29, 1991).
2. Respondent’s <lzbhq.com> domain name is confusingly similar to Complainant’s LZB mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the generic term “hq,” which is an acronym for the term “headquarters.”
3. Respondent does not have any rights or legitimate interests in the <lzbhq.com> domain name.
4. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its LZB mark in any way.
5. Respondent is operating a pay-per-click website featuring competing third-party links.
6. Respondent registered and is using the <lzbhq.com> domain name in bad faith.
7. Respondent is a cybersquatter who has been involved in numerous UDRP proceedings in which Respondent was ordered to transfer the domain names in dispute.
8. Respondent it attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s LZB mark. Respondent operates a pay-per-click site that displays links to Complainants competitors, and Complainant presumes that Respondent receives the click-through fees derived from these links.
9. Respondent had knowledge of Complainant’s LZB mark prior to registering the <lzbhq.com> domain name because Complainant had use of the LZB mark extensively.
10. Respondent registered the <lzbhq.com> domain name on March 30, 2014.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the LZB mark. Respondent’s domain name is confusingly similar to Complainant’s LZB mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <lzbhq.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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(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.”).
Complainant contends it has rights in the LZB mark, used in connection with the creation, manufacturing, advertising, distribution and sale of upholstered furnishings, such as recliners, sofas, stationary chairs, and others. Complainant owns a registration for the LZB mark with the USPTO (Reg. No. 1,662,506 registered October 29, 1991). Respondent resides or operates in a different country than that in which Complainant holds its trademark registration; however, a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. See 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). Therefore, the Panel finds that Complainant has rights in the LZB mark within the meaning of Policy ¶ 4(a)(i) because the Complainant holds a valid registration for the mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <lzbhq.com> domain name is confusingly similar to Complainant’s LZB mark. The domain name incorporates Complainant’s mark in its entirety while adding the generic term “hq,” which is an acronym for the term “headquarters.” The domain name also adds the generic top-level domain (“gTLD”) “.com.” The addition of a generic term to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark). Next, the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <lzbhq.com> domain name is confusingly similar to Complainant’s LZB mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent does not have any rights or legitimate interests in the <lzbhq.com> domain name. Complainant states that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its LZB mark in any way. The WHOIS record lists “Online Management” as the domain name registrant. It is appropriate to look to the WHOIS record and the evidence in the record as whole in determining whether the respondent is commonly known by the disputed domain name. 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). Therefore, because Respondent was not authorized by Complainant to use the LZB mark, and neither the WHOIS information nor the other evidence in the record indicates otherwise, the Panel finds that Respondent is not commonly known by the <lzbhq.com> domain name under Policy ¶ 4(c)(ii).
Complainant claims Respondent is operating a pay-per-click website featuring competing third-party links. The links include “30-40% on Furniture,” “Encore Custom Furniture,” and “Leather Sofa Furniture.” Using a confusingly similar domain name to promote a complainant’s competitors does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent is not making 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) because Respondent is using the <lzbhq.com> domain name to display third-party links for Complainant’s competitors.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and is using the <lzbhq.com> domain name in bad faith. Respondent is a cybersquatter who has been involved in numerous UDRP proceedings in which Respondent was ordered to transfer the domain names in dispute. See Benefitfocus.com, Inc. v. Online Management, FA 1509872 (Nat. Arb. Forum Sept, 4, 2013); see also Sterling Jewelers Inc. v. Online Management, FA 1552091 (Nat. Arb. Forum April 29, 2014). Such evidence is sufficient to hold that the respondent has violated Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Therefore, the Panel finds that Respondent registered and is using the <lzbhq.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii) because Respondent has been ordered to transfer disputed domain names in prior UDRP proceedings, which creates an inference of bad faith in the instant case.
Respondent it attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s LZB mark. Respondent operates a pay-per-click site that displays links to Complainant’s competitors, and it may reasonably be inferred that Respondent receives the click-through fees derived from these links. In similar cases, a respondent’s conduct was found to be in bad faith pursuant to Policy ¶ 4(b)(iv) because of the respondent’s use of a confusingly similar domain name to obtain click through revenue. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Therefore, the Panel finds that Respondent registered and is using the <lzbhq.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is operating a pay-per-click website featuring links of Complainant’s competitors in the furniture industry.
Complainant claims Respondent had knowledge of Complainant’s LZB mark prior to registering the <lzbhq.com> domain name because Complainant had used the LZB mark extensively. Because the Panel determines Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); 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 Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lzbhq.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 7, 2014
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