La-Z-Boy Incorporated v. Imran Shuja / La-z-boy Pvt Ltd. / Kamran Sheikh
Claim Number: FA1010001350009
Complainant is La-Z-Boy Incorporated ("Complainant"), represented by Elizabeth K. Brock of Harness, Dickey & Pierce, P.L.C., Michigan, USA. Respondent is Imran Shuja / La-z-boy Pvt Ltd. / Kamran Sheikh ("Respondent"), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <la-ze-boy.com>, <la-z-boygalleries.com>, <la-z-boygalleries.net>, <lazboygallery.net>, <la-z-boygallery.com>, and <la-z-boygallery.net>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide, and <la-z-boy-international.net>, registered with eNom, Inc.
The undersigned, Daniel B. Banks, Jr., as Panelist, 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 2, 2010; the National Arbitration Forum received payment on October 2, 2010.
On October 4, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <la-z-boy-international.net> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 October 5, 2010, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <la-ze-boy.com>, <la-z-boygalleries.com>, <la-z-boygalleries.net>, <lazboygallery.net>, <la-z-boygallery.com>, and <la-z-boygallery.net> domain names are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 October 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 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@la-ze-boy.com, postmaster@la-z-boygalleries.com, postmaster@la-z-boygalleries.net, postmaster@lazboygallery.net, postmaster@la-z-boygallery.com, postmaster@la-z-boygallery.net, and postmaster@la-z-boy-international.net. Also on October 8, 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.
On October 27, 2010 Respondent requested an extension of time to respond to the Complaint. Complainant opposed Respondent’s request and submitted information in support of this opposition. The National Arbitration Forum attempted repeatedly to obtain proper payment from Respondent, but was unable to do so after several attempts. The National Arbitration Forum requested payment several times but could not obtain proper payment and therefore denied Respondent’s requested extension of time to respond.
An untimely Response was received and determined to be complete on November 8, 2010.
An Additional Submission was submitted by Complainant on November 16, 2010.
An Additional Submission was submitted by Respondent on November 19, 2010.
On November 11, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
La-Z-Boy Incorporated is a world-famous maker of upholstered and wood furniture with world-wide trademark registrations for the mark La-Z-Boy and doing business in almost every major international country. It has been doing business under the La-Z-Boy name since 1929. In the last decade, its annual world-wide sales of goods and services under its marks have been in the range of USD $1billion to $2 billion.
Respondent's disputed domain names are identical and/or confusingly similar to the La-Z-Boy marks. Respondent has no rights or legitimate interests in the domain names but is merely using the domain names to route Internet users to a manufacturer/distributor of counterfeit La-Z-Boy goods sold in Pakistan. There are no authorized products for sale on the websites and Complainant's investigation did not disclose any legitimate business being conducted by Respondent. Five of the websites have content that gives consumers the mistaken impression that Respondent is the original and genuine manufacturer of La-Z-Boy products. Respondent's websites deceitfully attempt to trade on the goodwill of Complainant by stating that La-Z-Boy is a Pakistan company.
Respondent incorporated under the name La-Z-Boy in Pakistan in March 2007 however, Complainant asserts that such incorporation was illegal and a blatant attempt to trade on the goodwill of Complainant. Respondent has no connection or affiliation with Complainant nor has Respondent been granted a license or consent to use Complainant's marks in a company name, domain name, or any other manner.
Respondent has registered and used the disputed domain names in bad faith. Said domain names were registered with both constructive and actual knowledge of Complainant's rights. Respondent uses the websites to hold itself out as La-Z-Boy and provides contact information for Respondent's counterfeit La-Z-Boy Limited company. Respondent intends to sell products purported to be genuine La-Z-Boy brand products while competing with Complainant's authorized distributors, thereby disrupting Complainant's business by intentionally diverting consumers to Respondent's fake websites.
B. Respondent
Respondent failed to submit a timely response and the panel has decided not to accept or consider the Response.
C. Additional Submissions
Complainant submitted an additional submission which was primarily directed at Respondent’s failure to submit a timely response. Since the Respondent's response is not being considered, there is no need to recite the lengthy contents of the additional submission.
Respondent also submitted an additional submission which was also primarily directed at a failure to submit a timely response. Since the original response is not being considered, the additional submission is not considered.
1 - The disputed domain names are identical and/or confusingly similar to Complainant's trademark.
2 - The Respondent has no rights or legitimate interests in respect of the domain names.
3 - The disputed domain names were registered and are being used 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.
Preliminary Issue - Untimely Response
Respondent’s Response was received after the Response deadline of October 28, 2010. On October 27, 2010 Respondent requested an extension of time to respond to the Complaint. Complainant opposed Respondent’s request and submitted information in support of this opposition. The National Arbitration Forum attempted repeatedly to obtain proper payment from Respondent, but was unable to do so after several attempts. The National Arbitration Forum therefore denied Respondent’s requested extension of time to respond. Respondent’s Response was subsequently received on November 6, 2010. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel elects to not consider the response. See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that the respondent’s failure to submit a hard copy of the response and its failure to include any evidence to support a finding in its favor placed the respondent in a de facto default posture, permitting the panel to draw all appropriate inferences stated in the complaint).
Complainant submits evidence to show that it owns numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") for its LA-Z-BOY (e.g., Reg. No. 599,684 issued December 21, 1954), LA-Z-BOY GALLERY (e.g., Reg. No. 1,446,910 issued July 7, 1987), and LA-Z-BOY FURNITURE GALLERIES marks (e.g., Reg. No. 1,768,274 issued April 27, 1993). The Panel finds that such evidence establishes Complainant’s rights in its marks under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also 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).
Complainant alleges that Respondent’s <la-ze-boy.com> and <la-z-boy-international.net> domain names are confusingly similar to Complainant’s LA-Z-BOY mark. Complainant contends that both of the disputed domain names contain its entire LA-Z-BOY mark with the additions of the letter “e” or the generic term “international” and the generic top-level domain (“gTLD”) “.com” or “.net.” Complainant contends that such additions are not sufficient to establish domain names that are distinct from Complainant’s mark. The Panel agrees and finds that Respondent’s disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) where the names contain Complainant’s mark entirely while adding one letter or one generic term and the gTLD “.com” or “.net.” See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); 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).
Complainant also contends that Respondent’s <lazboygallery.net>, <la-z-boygallery.com>, and <la-z-boygallery.net> domain names are identical to Complainant’s LA-Z-BOY GALLERY mark. Complainant notes that the disputed domain names all contain a version of its mark with one name removing the hyphens and the space between the terms of its mark, and the other two names removing the space between the terms BOY and GALLERY of its mark. Further, Complainant argues that the disputed domain names all add the gTLD “.net” or “.com.” The Panel finds that the disputed domain names are identical to Complainant’s mark under Policy ¶ 4(a)(i) because the removal of hyphens and space from a mark while adding a gTLD are not sufficient to differentiate the domain names from Complainant’s 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 Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
Complainant further alleges that Respondent’s <lazboygallery.net> domain name is confusingly similar to Complainant’s LA-Z-BOY GALLERY mark. Complainant claims the disputed domain name contains Complainant’s entire mark with the exception of the hyphens and space separating the terms in Complainant’s mark and the addition of the gTLD “.net.” The Panel finds that such subtractions of components of Complainant’s mark and the addition of the gTLD “.net” to Complainant’s mark fail to adequately distinguish the disputed domain name from Complainant’s mark. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Thus, the Panel concludes that Respondent’s <lazboygallery.net> domain name is confusingly similar to Complainant’s LA-Z-BOY GALLERY mark pursuant to Policy ¶ 4(a)(i).
Lastly, Complainant argues that Respondent’s <la-z-boygalleries.com> and <la-z-boygalleries.net> domain names are confusingly similar to Complainant’s LA-Z-BOY FURNITURE GALLERIES mark. Complainant contends that the disputed domain names contain the dominant portions of its mark, absent the space between the terms of the mark and the FURNITURE term from the mark, while adding the gTLD “.com” or “.net.” The Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK); see also supra Hannover Ruckversicherungs-AG v. Ryu.
Complainant asserts that Respondent is not commonly known by the <la-ze-boy.com>, <la-z-boygalleries.com>, <la-z-boygalleries.net>, <lazboygallery.net>, <la-z-boygallery.com>, <la-z-boygallery.net>, and <la-z-boy-international.net> domain names. Complainant alleges that Respondent is not authorized or licensed to use Complainant’s LA-Z-BOY marks. The Panel finds that the WHOIS information fails to provide evidence that Respondent is commonly known by the disputed domain names. The Panel also finds that Respondent is not commonly known by the <la-ze-boy.com>, <la-z-boygalleries.com>, <la-z-boygalleries.net>, <lazboygallery.net>, <la-z-boygallery.com>, <la-z-boygallery.net>, and <la-z-boy-international.net> domain names pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Complainant alleges that Respondent’s <la-ze-boy.com>, <la-z-boygalleries.com>, <la-z-boygalleries.net>, <lazboygallery.net>, <la-z-boygallery.com>, <la-z-boygallery.net>, and <la-z-boy-international.net> domain names resolve to Respondent’s website that sells counterfeit versions of Complainant’s furniture products bearing Complainant’s LA-Z-BOY marks. The Panel finds that Respondent’s use of the confusingly similar disputed domain name to sell counterfeit versions of Complainant’s products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <la-ze-boy.com>, <la-z-boygalleries.com>, <la-z-boygalleries.net>, <lazboygallery.net>, <la-z-boygallery.com>, <la-z-boygallery.net>, and <la-z-boy-international.net> domain names under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).
The Panel finds that Respondent registered six of the trademark infringing domain names between October 19, 2005 and November 1, 2005. Further, the Respondent then registered the seventh domain name on September 3, 2010. Previous panels have found that when a respondent registers multiple trademark infringing domain names that such registrations are deemed to have been made in bad faith under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)). The Panel agrees and finds that Respondent’s registration of the <la-ze-boy.com>, <la-z-boygalleries.com>, <la-z-boygalleries.net>, <lazboygallery.net>, <la-z-boygallery.com>, <la-z-boygallery.net>, and <la-z-boy-international.net> domain names constitutes bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant argues that Respondent uses its <la-ze-boy.com>, <la-z-boygalleries.com>, <la-z-boygalleries.net>, <lazboygallery.net>, <la-z-boygallery.com>, <la-z-boygallery.net>, and <la-z-boy-international.net> domain names to resolve to a website selling counterfeit versions of Complainant’s products containing Complainant’s LA-Z-BOY marks with assertions that it is a LA-Z-BOY authorized manufacturer and distributor. The Panel finds that Respondent is a competitor of Complainant as Internet users interested in Complainant’s furniture products may purchase the counterfeit versions of Complainant’s products available on Respondent’s website instead. Based on Respondent’s competing use of the disputed domain name, the Panel finds that Respondent’s use of the <la-ze-boy.com>, <la-z-boygalleries.com>, <la-z-boygalleries.net>, <lazboygallery.net>, <la-z-boygallery.com>, <la-z-boygallery.net>, and <la-z-boy-international.net> domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”).
The Panel finds that Respondent presumably profits from the sale of counterfeit furniture and related products on the website resolving from the <la-ze-boy.com>, <la-z-boygalleries.com>, <la-z-boygalleries.net>, <lazboygallery.net>, <la-z-boygallery.com>, <la-z-boygallery.net>, and <la-z-boy-international.net> domain names. Further, the Panel finds that Respondent’s use of confusingly similar disputed domain names coupled with the sale of counterfeit versions of Complainant’s furniture products is likely to cause Internet users confusion as to Complainant’s affiliation with the disputed domain names, resolving website, and featured counterfeit products. Therefore, the Panel finds that Respondent’s use of the <la-ze-boy.com>, <la-z-boygalleries.com>, <la-z-boygalleries.net>, <lazboygallery.net>, <la-z-boygallery.com>, <la-z-boygallery.net>, and <la-z-boy-international.net> domain names for such a purpose constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
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-ze-boy.com>, <la-z-boygalleries.com>, <la-z-boygalleries.net>, <lazboygallery.net>, <la-z-boygallery.com>, <la-z-boygallery.net>, <la-z-boy-international.net> domain name be transferred from Respondent to Complainant
Daniel B. Banks, Jr, Panelist
Dated: November 23, 2010
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