La-Z-Boy Chair Company v. Privacy Ltd. Disclosed Agent for YOLAPT
Claim Number: FA1103001377397
Complainant is La-Z-Boy Chair Company (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Privacy Ltd. Disclosed Agent for YOLAPT (“Respondent”), Isle of Man.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <laz-boy.com>, registered with Fabulous.com Pty Ltd.
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 March 11, 2011; the National Arbitration Forum received payment on March 17, 2011.
On March 14, 2011, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <laz-boy.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 March 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 2011 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@laz-boy.com. Also on March 18, 2011, 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 April 12, 2011, 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 (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 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 <laz-boy.com> domain name is identical to Complainant’s LA-Z-BOY mark.
2. Respondent does not have any rights or legitimate interests in the <laz-boy.com> domain name.
3. Respondent registered and used the <laz-boy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, La-Z-Boy Chair Company, is a furniture manufacturer and retailer. Complainant uses the LA-Z-BOY mark in connection with the creation, manufacturing, advertising, distribution and sale of upholstered furnishings including recliners, sofas, stationary chairs, sleeper sofas, and other types of furniture products. Complainant holds numerous 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 registered the <laz-boy.com> domain name on October 6, 2004. Respondent uses the disputed domain name to resolve to a website that contains hyperlinks to third-parties that offer products which compete with Complainant’s products.
Complainant provides evidence that Respondent has been subject to prior UDRP disputes in which panels have ordered domain names transferred from Respondent to the respective complainants. See Facebook Inc. v. Privacy Ltd.Disclosed Agent for YOLAPT, D2007-1193 (WIPO Sept. 23, 2007); see also La Quinta Worldwide LLC v. Privacy Ltd. Disclosed Agent for YOLAPT, D2009-0524 (WIPO June 30, 2009).
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 rights in the LA-Z-BOY mark through its numerous registrations of the mark with the USPTO (e.g., Reg. No. 599,684 issued December 21, 1954). The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the mark pursuant to 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 Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel also finds it is irrelevant whether Complainant holds a trademark registration with the trademark authority in the country in which Respondent resides. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant contends Respondent’s <laz-boy.com> domain name is identical to its LA-Z-BOY mark. Respondent omits the first hyphen from Complainant’s mark in the disputed domain name. In addition, Respondent affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel finds hyphens and gTLDs are irrelevant to the Policy ¶ 4(a)(i) identical or confusingly similar analysis. 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 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Accordingly, the Panel holds Respondent’s <laz-boy.com> domain name is identical to Complainant’s LA-Z-BOY mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
According to Policy ¶ 4(a)(ii), Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <laz-boy.com> domain name. The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. 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 Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Although Respondent has failed to submit a Response, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The WHOIS information lists “Privacy Ltd. Disclosed Agent for YOLAPT” as the registrant of the disputed domain name, which the Panel finds is not similar to the <laz-boy.com> domain name. Without evidence to the contrary, the Panel concludes Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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 Policy ¶ 4(c)(ii) does not apply); 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 alleges Respondent uses the <laz-boy.com> domain name to operate a pay-per-click website that features hyperlinks for Complainant’s competitors. Complainant submits evidence of the website resolving from the <laz-boy.com> domain name. This image shows a directory website that provides hyperlinks with titles like “Top Sites for Recliners,” “Looking for recliners,” “recliners,” “furniture,” and “Discount Furniture.” The Panel presumes that Respondent profits from its use of the disputed domain name through the receipt of pay-per-click fees. Therefore, the Panel holds Respondent does not use the disputed domain name to make 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has been subject to prior UDRP proceedings wherein the panelists ordered the disputed domain names transferred from Respondent to the respective complainants in those cases. See Facebook Inc. v. Privacy Ltd.Disclosed Agent for YOLAPT, D2007-1193 (WIPO Sept. 23, 2007); see also La Quinta Worldwide LLC v. Privacy Ltd. Disclosed Agent for YOLAPT, D2009-0524 (WIPO June 30, 2009). Therefore, the Panel finds Respondent has engaged in a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Arai Helmet Am., Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been the subject of numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
The Panel finds the Respondent uses the <laz-boy.com> domain name to redirect Internet users seeking Complainant’s website to a site that provides hyperlinks for Complainant’s competitors. Therefore, the Panel determines the <laz-boy.com> domain name disrupts Complainant’s business, which constitutes registration and use in bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
As previously discussed, Respondent uses the disputed domain name to profit from the receipt of pay-per-click fees. Moreover, the <laz-boy.com> domain name is identical to Complainant’s LA-Z-BOY mark. Accordingly, the Panel finds Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Consequently, the Panel concludes Respondent’s behavior amounts to registration and use in bad faith under Policy ¶ 4(b)(iv). See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
The Panel finds Complainant has satisfied 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 <laz-boy.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 25, 2011
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