Lumber Liquidators, Inc. v. DNS Administrator
Claim Number: FA0812001239093
Complainant is Lumber Liquidators, Inc. (“Complainant”), represented by Daniele
E. Bourgeois, of Troutman Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lumberliquidator.com>, registered with Moniker Online Services, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On December 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 20, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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." 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 makes the following assertions:
1. Respondent’s <lumberliquidator.com> domain name is confusingly similar to Complainant’s LUMBER LIQUIDATORS mark.
2. Respondent does not have any rights or legitimate interests in the <lumberliquidator.com> domain name.
3. Respondent registered and used the <lumberliquidator.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Lumber Liquidators, Inc., is the largest direct
retailer of hardwood flooring in the
Respondent registered the <lumberliquidator.com> domain name on
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.
The Panel finds that Complainant has established rights in
the LUMBER LIQUIDATORS mark for purposes of Policy ¶ 4(a)(i) through its
trademark registration with the USPTO. See Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
Complainant argues that Respondent’s <lumberliquidator.com> domain name is identical or confusingly similar to Complainant’s LUMBER LIQUIDATORS mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains Complainant’s mark in its entirety, removes an “s,” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the removal of the letter “s” and the addition of a gTLD fails to create a distinct mark and instead creates confusing similarity. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s registered mark.
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant asserts that Respondent lacks all rights and
legitimate interests in the <lumberliquidator.com>
name. If Complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to prove that rights and
legitimate interests exist pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has
establised a prima facie case. See
Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
By failing to respond to the Complaint, the Panel may assume
that Respondent fails to meet its burden of establishing rights or legitimate
interests in the disputed domain name. See Broadcom Corp. v. Ibecom PLC,
FA 361190 (Nat. Arb. Forum
Complainant contends that Respondent is neither commonly
known by nor licensed to register the disputed domain name.
Respondent’s WHOIS information identifies Respondent as “Moniker Privacy
Services.” The Panel finds that
Respondent’s failure to respond to the Complaint and the WHOIS information
demonstrate that Respondent is not commonly known by the disputed domain
name. Therefore, pursuant to Policy ¶
4(c)(ii), Respondent lacks rights and legitimate interests in the disputed
domain name. See G.D. Searle & Co. v.
Cimock, FA 126829 (Nat. Arb. Forum Nov.
13, 2003) (“Due to
the fame of Complainant’s mark there must be strong evidence that Respondent is
commonly known by the disputed domain name in order to find that Respondent has
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). However, there is no evidence
on record, and Respondent has not come forward with any proof to establish that
it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
Respondent is using the <lumberliquidator.com> domain name to display links advertising third-party websites in competition with Complainant. The Panel infers that Respondent is using the disputed domain name to earn click-through fees, and thus finds that Respondent has not made 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 Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is 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) because the registrant presumably receives compensation for each misdirected Internet user); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <lumberliquidator.com> domain name to intentionally divert Internet users to the associated website, which displays third-party links to competing websites. In cases such as this, the Panel may assume that Respondent is collecting click-through fees and attempting to profit by creating a likelihood of confusion between Complainant’s mark and the disputed domain name. The Panel finds that Respondent’s use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 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.’”); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
In addition, the Panel finds that Respondent’s use of the <lumberliquidator.com> domain name to disrupt Complainant’s
business by offering advertisements and links to competitors is further
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent
registered and used the domain name in bad faith, pursuant to Policy ¶
4(b)(iii), because it is operating on behalf of a competitor of Complainant . .
also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
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 <lumberliquidator.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. RalphYachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: February 5, 2009
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