LBX Company, LLC v. The Lumberman’s Exchange
Claim Number: FA1201001423155
Complainant is LBX Company, LLC (“Complainant”), represented by Trevor T. Graves of KING & SCHICKLI, PLLC, Kentucky, USA. Respondent is The Lumberman's Exchange (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lbxonline.com>, registered with Wild West Domains, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 6, 2012; the National Arbitration Forum received payment on January 6, 2012.
On January 9, 2012, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <lbxonline.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 January 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2012 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@lbxonline.com. Also on January 9, 2012, 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 February 1, 2012, 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.
Procedural Note: Prior Court Proceedings
Complainant contends, and provides supporting evidence, that it filed a civil action against Respondent in the United States District Court for the Middle District of Tennessee, Case No. 1:11-001, for federal trademark infringement, federal trade dress infringement, federal unfair competition, state trademark infringement, and unfair competition. Respondent failed to respond in that case which led to a default judgment in favor of Complainant. The Court awarded injunctive relief providing that Respondent is permanently enjoined from the use of the LBX mark, specifically noting that the use of the disputed <lbxonline.com> domain name must cease. To date, Respondent has yet to comply with the Court’s order and continues to use the <lbxonline.com> domain name. After the registrar’s refusal to take down the <lbxonline.com> domain name and website, Complainant is seeking compliance with the UDRP through this forum. The Panel will consider the past proceeding as it pertains to the elements of the Policy.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lbxonline.com> domain name is confusingly similar to Complainant’s LBX mark.
2. Respondent does not have any rights or legitimate interests in the <lbxonline.com> domain name.
3. Respondent registered and used the <lbxonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LBX Company, LLC, is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the LBX mark (Reg. No. 2,314,424 registered February 1, 2000). The mark is associated with Complainant’s distribution of LINK-BELT earth-moving, forestry, demolition, and material handling equipment in North and South America as well as related goods and services such as parts and warranties.
Respondent, The Lumberman’s Exchange, registered the <lbxonline.com> domain name on November 24, 2003. The disputed domain name resolves to a website which provides a searchable database of parts and equipment for sale that compete with similar products offered for sale by Complainant.
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 asserts that it is the owner of rights in the LBX mark. Complainant provides the Panel with the evidence of its registration records for the LBX mark (Reg. No. 2,314,424 registered February 1, 2000) with the USPTO. The registration of a mark with a federal trademark authority is sufficient to establish rights in a mark for purposes of 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); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶ 4(a)(i).”). The Panel therefore finds that Complainant’s registration of its mark with the USPTO confers rights in the mark on Complainant pursuant to Policy ¶ 4(a)(i).
Complainant also contends that the <lbxonline.com> domain name is confusingly similar to the LBX mark. Respondent created the disputed domain name by using Complainant’s mark, the generic term “online,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s addition of a generic term to Complainant’s mark is insufficient to distinguish the disputed domain name from the LBX mark. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). The Panel also finds that Respondent’s addition of the gTLD does not make the <lbxonline.com> domain name distinct from the LBX mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also 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.”). As such, the Panel finds that Respondent’s <lbxonline.com> domain name is confusingly similar under Policy ¶ 4(a)(i) to Complainant’s LBX mark.
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant argues that Respondent has neither rights nor legitimate interests in the disputed domain name. Once a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to provide evidence to the contrary. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that Complainant has made a prima facie case in support of its assertions. Respondent thus bears the burden of disproving the claims which Complainant has made against it. Respondent, however, has failed to submit a Response to the Complaint. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). Nevertheless, the Panel will review the record for any evidence which may confer rights or legitimate interests on Respondent under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the disputed domain. Complainant argues that it has not licensed or otherwise authorized Respondent to use the LBX mark in any manner and that there is no other connection between Complainant and Respondent. The WHOIS record for the <lbxonline.com> domain name lists “The Lumberman’s Exchange” as the domain name registrant. The Panel therefore finds that Respondent is not commonly known by the <lbxonline.com> domain name or any derivation of the LBX mark pursuant to Policy ¶ 4(c)(ii). 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); see also 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 asserts that Respondent’s use of the disputed domain name does not provide Respondent with rights or legitimate interests in the domain name. Complainant argues that the disputed domain name resolves to a website where Respondent sells parts and equipment for excavation machinery in direct competition with Complainant. Where a respondent uses a disputed domain name to sell products that compete with the complainant’s offerings that use is not protected by Policy ¶¶ 4(c)(i) and 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website). The Panel therefore finds that Respondent’s use of the disputed domain name to sell products which compete with Complainant in the excavation industry is neither a Policy ¶ 4(c)(i) bona fide offering of goods and services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant’s showing of Respondent’s lack of rights and legitimate interests satisfies the requirements of Policy ¶ 4(a)(ii).
In order for a complainant to prevail under Policy ¶ 4(a)(iii) the complainant must demonstrate that the disputed domain name was registered and is used in bad faith. Complainant asserts, and the record reflects, that the disputed domain name resolves to a website which competes with Complainant by selling parts and equipment for earth-moving machinery. As such, Respondent’s domain name is disruptive to Complainant’s business. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent’s registration and use of the <lbxonline.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant further argues that the registration and use of the disputed domain name creates confusion regarding the source of the <lbxonline.com> domain name and that Respondent commercially benefits from this confusion. Upon entering the resolving website, Internet users are faced with products similar to those Complainant sells, the inclusion of Complainant’s mark in the font Complainant uses, as well as Complainant’s tagline “Different by Design.” Therefore, the Panel finds that Respondent commercially benefits from the sale of the products on its website due to the confusion it artificially creates as to the source of the disputed domain name and resolving website. Thus the Panel finds Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).
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 <lbxonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 8, 2012
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