LA-Z-BOY Incorporated v. S neakin D esign
Claim Number: FA1007001333492
Complainant is LA-Z-BOY
Incorporated (“Complainant”), represented by Elizabeth K. Brock, of Harness, Dickey & Pierce, P.L.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lazyboy-recliner.com>, registered with NamesDirect.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 3, 2010.
On July 6, 2010, NamesDirect confirmed by e-mail to the National Arbitration Forum that the <lazyboy-recliner.com> domain name is registered with NamesDirect and that Respondent is the current registrant of the name. NamesDirect has verified that Respondent is bound by the NamesDirect registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 2010 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@lazyboy-recliner.com. Also on July 7, 2010, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 2, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <lazyboy-recliner.com> domain name is confusingly similar to Complainant’s LAZYBOY mark.
2. Respondent does not have any rights or legitimate interests in the <lazyboy-recliner.com> domain name.
3. Respondent registered and used the <lazyboy-recliner.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LA-Z-BOY Incorporated, owns trademark registrations for its LAZYBOY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,129,898 issued August 15, 2006). Complainant also has rights in multiple related marks due to their registrations with the USPTO:
LA Z BOY (Reg. No. 3,634,469 issued June 9, 2009)
LAZYBOY (Reg. No. 3,129,898 issued August 15, 2006)
LAZY BOY (Reg. No. 2,876,840 issued August 24, 2004)
LAZBOY (Reg. No. 2,820,984 issued March 9, 2004)
LAZBOY (Reg. No. 2,716,432 issued May 13, 2003)
LA-Z-BOY (Reg. No. 1,943,118 issued December 19, 1995)
LA-Z-BOY (Reg. No. 1,532,017 issued March 28, 1989)
LA-Z-BOY (Reg. No. 599,684 issued December 21, 1954)
Complainant uses these marks in connection with the manufacture and sale of furniture, chairs, ottomans, recliner chairs, and related sales and store services. Complainant offers information and sales through its official website resolving from its <la-z-boy.com> domain name.
Respondent, S neakin D esign, registered the <lazyboy-recliner.com> domain name on July 17, 2007. The disputed domain name resolves to a website displaying a search engine as well as hyperlinks and advertisements to third-party websites including competitors of 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 it has rights in the LAZYBOY mark due to its trademark registration with the USPTO:
LA Z BOY (Reg. No. 3,634,469 issued June 9, 2009)
LAZYBOY (Reg. No. 3,129,898 issued August 15, 2006)
LAZY BOY (Reg. No. 2,876,840 issued August 24, 2004)
LAZBOY (Reg. No. 2,820,984 issued March 9, 2004)
LAZBOY (Reg. No. 2,716,432 issued May 13, 2003)
LA-Z-BOY (Reg. No. 1,943,118 issued December 19, 1995)
LA-Z-BOY (Reg. No. 1,532,017 issued March 28, 1989)
LA-Z-BOY (Reg. No. 599,684 issued December 21, 1954)
The Panel finds Complainant’s federal trademark registration with the USPTO establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i). See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also 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 Policy ¶ 4(a)(i)).
Complainant alleges Respondent’s <lazyboy-recliner.com> domain name is confusingly similar to Complainant’s LAZYBOY mark. Complainant alleges that the disputed domain name adds a hyphen, adds a descriptive term related to Complainant’s business under its mark, and adds a generic top-level domain (“gTLD”) (“.com”). Previous panels have held these alterations to be insufficient in distinguishing a domain name from a registered mark. 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 InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark); 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.”); 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). The Panel finds Respondent’s <lazyboy-recliner.com> domain name is confusingly similar to Complainant’s LAZYBOY mark pursuant to Policy ¶ 4(a)(i).
The Complainant has satisfied the elements of Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant alleges that Respondent lacks rights and legitimate interest in the <lazyboy-recliner.com> domain name thus, with supporting documentation, establishing a prima facie case. Once the prima facie case has been established, the burden of proof shifts to Respondent to prove that it has rights and legitimate interests in the disputed domain name. Respondent has chosen not to respond to these proceedings, and this lack of response may be construed by the Panel as admission to the claims set forth by the Complainant. However, the Panel has the discretion to review the claims for validity under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); 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.”).
The WHOIS information for the <lazyboy-recliner.com> domain name lists “S neakin D esign” as registrant. Complainant contends that this information removes the ability of Respondent to find relief under Policy ¶ 4(c)(ii). The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant contends that Respondent’s disputed domain name resolves to a search engine website that displays links to third-party websites including Complainant’s competitors. Previous panels have held that offering hyperlinks to third-party competitors of Complainant is not protected under Policy ¶ ¶ 4(c)(i) and 4(c)(iii). This Panel finds Respondent’s use of the <lazyboy-recliner.com> domain name is not 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). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)).
The Complainant has satisfied the elements of Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s disputed domain name
resolves to a website that includes advertisements to competing products of
those offered by Complainant under its mark.
Complainant alleges that the <lazyboy-recliner.com> domain name diverts Complainant’s recliner
chair business under its LAZYBOY mark.
The Panel finds that Respondent’s disputed domain name creates a
diversion of Complainant’s business, which is evidence of bad faith under Policy
¶ 4(b)(iii). See Am. Airlines, Inc. v.
Complainant asserts that Internet users, seeking
Complainant’s business, will become confused as to its sponsorship or
affiliation of Respondent’s website resolving from its <lazyboy-recliner.com>
domain name. Complainant further alleges
that Respondent profits from this confusion.
The Panel finds Respondent’s profiting through Internet users’ confusion
is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Corp. v.
The Complainant has satisfied the elements of 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 <lazyboy-recliner.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 5, 2010
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