La-Z-Boy Chair Company v. Milen Radumilo
Claim Number: FA2006001901940
Complainant is La-Z-Boy Chair Company (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <la-z-boy.asia>, registered with Dynadot, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 26, 2020; the Forum received payment on June 26, 2020.
On June 29, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <la-z-boy.asia> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 29, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 2020 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-boy.asia. Also on June 29, 2020, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 23, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant manufactures and sells upholstered furnishings including most notably recliners, sofas, stationary chairs, sleeper sofas, pet beds, and other types of furniture products. Complainant has rights in the LA-Z-BOY mark through its registration with the United States Patent and Trademark Office (“USTPO”) (e.g. Reg. 599,684, registered Dec. 21, 1954) and the Office for Harmonization in the Internal Market (“OHIM”) (e.g. Reg. 000040691, registered May 10, 1998). Respondent’s <la-z-boy.asia> domain name is identical or confusingly similar to Complainant’s mark because it incorporates the mark in its entirety and adds the geographical top-level domain (“TLD”) to the end of the mark.
Respondent has no rights or legitimate interests in the <la-z-boy.asia> domain name. Respondent is not commonly known by this domain name, and Complainant has not authorized or licensed Respondent to use their mark in his domain name. Respondent does not use the mark for any bona fide offerings of goods or services, nor does it engage in any legitimate, noncommercial, or fair use with the mark. Instead, Respondent uses the mark to generate affiliate fees by redirecting the domain to a third party site where Complainant’s goods are sold alongside other competitor products.
Respondent registered and uses the <la-z-boy.asia> domain in bad faith. Respondent displays a pattern of bad faith registration as evidenced by numerous successful UDRP cases levied against him. Respondent further uses the domain in bad faith by creating a likelihood of confustion between his domain and Complainant’s mark, in order to profit off the value that comes with Complainant’s mark. It is irrelevant that Respondent does not operate the third party site the disputed domain redirects to, since domain owners are ultimately responsible for the content on the sites their domains resolve to. Furthermore, Respondent had actual knowledge of Complainant’s rights in the LA-Z-BOY mark at the time of registration. Finally, Respondent failed to respond to Complainant’s numerous cease and desist letters, and used a privacy service to hide his identity on WHOIS.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon Complainant’s uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <la-z-boy.asia> domain name.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant states it has rights in the LA-Z-BOY mark through its multiple registrations with the USTPO and OHIM. (e.g. Reg. 599,684, registered Dec. 21, 1954; Reg. 000040691, registered May 10, 1998). Registration with multiple trademark agencies generally established righs in a mark. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”). The Panel finds Complainant has established the rights to the mark under ¶ Policy 4(a)(i).
Complainant argues that Respondent’s <la-z-boy.asia> domain is identical or confusingly similar to Complainant’s LA-Z-BOY mark. Domains that incorporate a mark in its entirety are generally found identical or confusingly similar to the mark. See Cards Against Humanity, LLC v. sri winarti, FA 1736823 (Forum July 31, 2017) (“The Panel therefore finds Respondent’s <cardsagainsthumanity.us> to be identical to Complainant’s CARDS AGAINST HUMANITY mark.”). Adding a TLD and a geographic term to a domain name does not differentiate it from a mark it incorporates. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”); see also Cargill, Incorporated v. Sales Office / Cargill Brasil, FA 1737212 (Forum July 21, 2017) (finding the addition of the geographic term “Brasil” does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).). Respondent’s <la-z-boy.asia> domain name uses Complainant’s LA-Z-BOY mark in its entirety, and its only difference is the addition of the “.asia” geographic TLD. The Panel finds that Respondent’s domain is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel finds Complainant has made a prima facie case.
Complainant argues Respondent has no rights or legitimate interests in the <la-z-boy.asia> domain name, since Respondent is not commonly known by this domain name, nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS of record identifies the Respondent as “Milen Radumilo” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name.
Complainant argues that Respondent is not using the <la-z-boy.asia> domain name for a bona fide offering or legitimate noncommercial or fair use. Instead, Respondent uses the mark to generate affiliate fees by redirecting the domain to a third party site Complainant’s goods are sold alongside other competitor products. Using a domain name to redirect Internet users that are seeking the complainant to third party websites offering goods or services that compete with the complainant is generally not considered a bona fide offering or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy). Here, Complainant provides screenshots of the <la-z-boy.asia> domain name’s resolving webpage, which shows the disputed domain name redirecting users to various online marketplaces that offer Complainant’s and competitor’s goods and argues that Respondent likely earns affiliate fees from the third party websites its domain redirects to. The Panel finds that Respondent is not using the LA-Z-BOY mark for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii) and Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant has proved this element.
Complainant argues that Respondent has demonstrated a pattern of bad faith registration of domain names, as shown by prior UDRP proceeding that resulted in the transfer of the domain names at issue. Past UDRP cases brought against a respondent that resulted in a transfer may demonstrate bad faith registration and use of the currently disputed domain name per Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Complainant presents a list of 39 previous cases that were successfully brought against Respondent. The Panel finds that Respondent registered and uses the <la-z-boy.asia> domain as part of a pattern of bad faith registrations and uses under Policy ¶ 4(b)(ii).
Complainant also argues that Respondent’s registration and use of the <la-z-boy.asia> domain name is in bad faith because it is used for Respondent’s commercial gain. Registering a domain name identical to a complainant’s mark so to deceive Internet users as to respondent’s relationship with the complainant in order to profit off of the value of that mark may be evidence of bad faith under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products); see also Hewlett-Packard Co. v. Ali, FA 353151 (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).”). Complainant has provided a screenshot of the disputed domain resolving to a third party website where Complainants’ products are sold alongside other competing products. Complainant asserts that the only plausible reason for this is that Respondent earns affiliate fees from redirecting users to this site, thus using the domain for commercial gain by confusing users attempting to reach Complainant’s website. Complainant also argues it is irrelevant that Respondent does not run the third party website the disputed domain redirects to. Generally, the registrant of a domain is responsible for the content of the page the domain resolves to. See Park ‘N Fly Service Corporation v Kevin Lanzillo, FA 1554365 (Forum May 13, 2014) (holding that it is ultimately “the Registrant responsible for the content of the material appearing on the webpage associated with the domain name in [a] dispute”). This is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant further argues that Respondent had actual notice of Complainant’s rights in the LA-Z-BOY mark when it registered the domain name. This practice is generally held to be a bad faith registration of a domain. Actual notice may be inferred from Complainant’s extensive use of a mark prior to Respondent’s registration. AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Actual notice may also be inferred where Respondent uses Complainant’s entire mark to promote content related to the industry with which the mark is associated. See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”). Complainant argues that its extensive use of the LA-Z-BOY mark since it was first registered, along with the redirection of the <la-z-boy.asia> domain to a third party website where Complainant’s products are sold with other competing products demonstrate that Respondent had actual notice of its mark. This is evidence that Respondent registered and uses the domain in bad faith under Policy ¶ 4(a)(iii).
Complainant also argues that Respondent’s failure to respond to its cease-and-desist letters indicates bad faith. Bad faith may be found in a Respondent who does not reply to a cease-and-desist letter. See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Complainant provides a series of demand letters and follow-ups it sent to Respondent. There is no evidence in the record that Respondent corresponded back. The Panel finds this behavior this is evidence of bad faith by Respondent under Policy ¶ 4(a)(iii).
Complainant argues that Respondent’s use of a WHOIS privacy service further indicates bad faith. Previous Panels have found use of a WHOIS Privacy service raises a rebuttable presumption of bad faith. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). Complainant argues that Respondent is concealing his identity behind “Super Privacy Service LTD c/o Dynadot.” It is important to note that use of a privacy service is usually not by itself dispositive of bad faith. See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). The Panel finds that Respondent registered and uses the domain name in bad faith.
Complainant has proved this element.
Complainant 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-boy.asia>domain name be TRANSFERRED from Respondent to Complainant.
______________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
July 28, 2020
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