DECISION

 

La-Z-Boy Incorporated v. Mohammed Iqbal

Claim Number: FA1010001355601

 

PARTIES

Complainant is La-Z-Boy Incorporated (“Complainant”) represented by Elizabeth K. Brock of Harness, Dickey & Pierce, P.L.C., Michigan, USA.  Respondent is Mohammed Iqbal (“Respondent”), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <la-z-boy.us>, registered with Melbourne It Ltd.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 29, 2010; the Forum received a hard copy of the Complaint on November 12, 2010.

 

On November 14, 2010, Melbourne It Ltd confirmed by e-mail to the Forum that the domain name <la-z-boy.us> is registered with Melbourne It Ltd and that the Respondent is the current registrant of the name.  Melbourne It Ltd has verified that Respondent is bound by the Melbourne It Ltd registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On November 23, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 13, 2010 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

A timely Response was received on December 13, 2010.  However, the Response was not received in hard copy and, therefore, is not in compliance with usTLD Rule 5(b).

 

On December, 16, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.

 

 

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

            A.  Complainant makes the following assertions:

1.      Respondent’s <la-z-boy.us> domain name is confusingly similar to Complainant’s LAZYBOY family of marks.

 

2.      Respondent does not have any rights or legitimate interests in the <la-z-boy.us> domain name.

 

3.      Respondent registered and used the <la-z-boy.us> domain name in bad faith.

 

B.  Respondent filed a Response asserting that Complainant does not have exclusive rights in the LAZYBOY mark, that Respondent does have rights and legitimate interests in the domain name at issue and that it was not registered and used in bad faith.

 

C. Additional Submissions:  Complainant filed an Additional Submission which principally focused on the failure of Respondent to satisfy its shifted burden on the second and third elements of the Policy and noted that Respondent has no real presence in the United States of America and thus no legitimate basis for registering a .us ccTLD domain.

 

FINDINGS

Complainant, La-Z-Boy Incorporated, makes upholstered and wood furniture and uses the LA-Z-BOY mark in connection with its furniture, including chairs, recliner chairs, love seats, ottomans, tables, desks, credenzas, sofas, and sleep sofas.  Complainant has been doing business under the LA-Z-BOY mark since 1929.  In addition, Complainant asserts that it holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the LA-Z-BOY mark (e.g., Reg. No. 599,684 issued December 21, 1954).  Respondent’s <la-z-boy.us> domain name is identical to its LA-Z-BOY mark.  Complainant has not licensed or otherwise authorized Respondent to use any variation of its LA-Z-BOY mark for any purpose.  The domain name at issue was first registered in September of 2005 by a Pakistani entity and, on November 13, 2010, Respondent edited the WHOIS records changing ownership and contact information to a Chicago, Illinois, USA address.

 

Respondent, Mohammed Iqbal, alleges that it is an agent for a company called “La-z-boy Pvt Ltd.”  Respondent submits a certificate of incorporation on change of name from the Securities & Exchange Commission of Pakistan.  Respondent states that this document shows that its company changed its name to “LA-Z-BOY (PRIVATE) LIMITED” on April 26, 2007.  The Panel declines to find that Respondent’s company is commonly known by the <la-z-boy.us> domain name.  Respondent claims that furniture made by many companies in Pakistan is referred to by the LA-Z-BOY mark, even though there is no connection with the Complainant.  Accordingly, Respondent claims legitimate use and that the registration and use of the domain name is in good faith.

 

DISCUSSION

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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

The Panel finds that the trademark registrations proven by Complainant sufficiently prove its rights in the LA-Z-BOY mark pursuant to Policy ¶ 4(a)(i).  See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to UDRP ¶ 4(a)(i)).

 

Respondent’s <la-z-boy.us> domain name is identical to Complainant’s LA-Z-BOY mark and Respondent fully incorporates this mark in the disputed domain name and then merely attaches the country-code top-level domain (“ccTLD”) “.us” to its mark. Affixing a ccTLD to a mark does not sufficiently distinguish a domain name from the mark.  See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the  Policy”).  Consequently,  Respondent’s <la-z-boy.us> domain name is identical to Complainant’s LA-Z-BOY mark under Policy ¶ 4(a)(i).

 

While Respondent contends that the <la-z-boy.us> domain name is comprised of common and generic terms and as such cannot be found to be identical to Complainant’s mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under UDRP ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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).  The burden then shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

The Panel finds there is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <la-z-boy.us> domain name.  Therefore,

Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i).  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).

 

Complainant asserts it is not affiliated with or otherwise connected to Respondent.  Additionally, the WHOIS information lists “Mohammed Iqbal” as the registrant of the disputed domain name.  The Panel finds the name of the registrant is not similar to the <la-z-boy.us> domain name.  The Panel determines that Complainant’s assertions combined with the WHOIS registrant information indicate that Respondent is not commonly known by the <la-z-boy.us> domain name under Policy ¶ 4(c)(iii).  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 UDRP ¶ 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).

 

The <la-z-boy.us> domain name redirects Internet users to a website resolving from the <alibaba.com> domain name.  This website advertises counterfeit versions of Complainant’s LA-Z-BOY goods.  The Panel finds that Respondent uses the <la-z-boy.us> domain name to resolve to a website to advertise counterfeit versions of Complainant’s goods.  Accordingly, the Panel finds that Respondent does not use the <la-z-boy.us> domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).  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 [UDRP] ¶ 4(c)(i).”); see also Am. Tool & Machining, Inc. v. EZ Hitch Inc., FA 113961 (Nat. Arb. Forum July 16, 2002) (holding that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant, selling a product that is arguably identical to Complainant's product and under the same name”). 

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

As noted above, Respondent uses the <la-z-boy.us> domain name to resolve to a website that provides advertisements for counterfeit versions of Complainant’s goods.  Accordingly, the Panel finds that Respondent’s domain name disrupts Complainant’s business and that this practice constitutes registration and use in bad faith under Policy ¶ 4(b)(iii).  See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under [UDRP] ¶ 4(b)(iii).”); see also 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).

 

Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the LA-Z-BOY mark.  While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel nonetheless finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights.  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).

 

Furthermore, the Panel finds that Respondent attempts to pass itself off as Complainant.  Accordingly, the Panel finds that this behavior constitutes registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).  See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).

 

Finally, Respondent’s registration of the <la-z-boy.us> domain name violates the usTLD nexus requirement.  The nexus requirement provides that registrants of a usTLD domain name must be either a United States citizen or resident, or a United States entity or organization, or a foreign entity or organization that has a bona fide presence in the United States.  It clearly appears that: (1) Respondent originally listed a Pakistan address in the WHOIS registrant information; (2) Respondent provided a Pakistan address on the previous website resolving from the <la-z-boy.us> domain name; (3) the disputed domain name currently forwards to a website that indicates that it is located in Karachi, Pakistan; (4) Respondent has incorporated as a Pakistan company; and (5) Respondent does not do business in the United States.  The Panel finds that Respondent does not have a nexus with the United States and further determines that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).  See Swiss Reinsurance Company v. Purtschert, FA 114666 (Nat. Arb. Forum Sept. 16, 2002) (finding that a registrant is required to have a sufficient nexus with the United States under the usTLD and that the respondent’s lack of the required nexus constituted bad faith registration and use); see also Chamber of Commerce of the United States of America v. Albert Bauer, FA 1335605 (Nat. Arb. Forum Sept. 24, 2010) (finding that a German-language website that provides information about business financing in Germany does not have a sufficient nexus with the United States).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

 

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <la-z-boy.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist
Dated: December 21, 2010

 

 

 

 

 

 

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