LF, LLC v. Venkateshwara Distributor Private Limited.
Claim Number: FA1202001428517
Complainant is LF, LLC (“Complainant”), represented by J. Mark Wilson of Moore & Van Allen PLLC, North Carolina, USA. Respondent is Venkateshwara Distributor Private Limited (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lowescom.com>, registered with Tirupati Domains and Hosting Private Limited.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2012; the National Arbitration Forum received payment on February 7, 2012.
On February 9, 2012, Tirupati Domains and Hosting Private Limited confirmed by e-mail to the National Arbitration Forum that the <lowescom.com> domain name is registered with Tirupati Domains and Hosting Private Limited and that Respondent is the current registrant of the name. Tirupati Domains and Hosting Private Limited has verified that Respondent is bound by the Tirupati Domains and Hosting Private Limited 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 February 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 29, 2012 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@lowescom.com. Also on February 9, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 March 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 <lowescom.com> domain name is confusingly similar to Complainant’s LOWE’S mark.
2. Respondent does not have any rights or legitimate interests in the <lowescom.com> domain name.
3. Respondent registered and used the <lowescom.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LF, LLC, owns a plethora of trademark registrations for the LOWE’S mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,168,799 registered September 8, 1981). Complainant licenses the mark to other companies to use it in conjunction with the sale of home improvement products and services.
Respondent, Venkateshwara Distributor Private Limited., registered the disputed domain name on December 28, 2005. The disputed domain name resolves to a pay-per-click website offering links to third parties, some of which are Complainant’s competitors.
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 claims that it has established its rights in the LOWE’S mark by registering it with the USPTO (e.g., Reg. No. 1,168,799 registered September 8, 1981). Complainant has provided sufficient evidence to verify that the mark is registered and that it is the owner of the registration. As a result, the Panel finds that Complainant has satisfied the rights requirement of Policy ¶ 4(a)(i) by registering the LOWE’S mark with the USPTO. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant also claims that Respondent’s <lowescom.com> domain name is confusingly similar to its LOWE’S mark. The disputed domain name includes the portion of the mark that is actually able to be included, omitting only the apostrophe as punctuation is not allowed in domain names. Respondent’s disputed domain also includes the generic top-level domain (“gTLD”) “.com” and the generic term “com.” The Panel finds that Respondent has failed to differentiate its disputed domain name from Complainant’s mark in a material way, thereby making them confusingly similar under Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Am. Online, Inc. v. Karan dish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been established.
The Panel finds that Complainant has shifted the burden of proof to Respondent by making a prima facie case that indicates a lack of rights or legitimate interests in the disputed domain name on the part of Respondent. See 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)). Because Respondent did not file a response in this matter, the Panel may accept Complainant’s allegations as true as long as the evidence on record is not clearly contradictory. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). Therefore, the Panel will examine the entire record and determine whether Respondent has rights or legitimate interests in the disputed domain name in accordance with the factors enumerated in Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name. When the Panel considers the WHOIS information, which identifies the registrant as “Venkateshwara Distributor Private Limited,” in conjunction with the other evidence on record, or lack thereof, it concludes that Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to a classic pay-per-click website, created for the sole purpose of generating click-through revenue. The Panel notes that some of the links do in fact appear to resolve to other companies in the home improvement industry. The Panel determines that such a use does not constitutes a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See 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)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant contends that Respondent registered the disputed domain name and selected the current use in an attempt to confuse Internet users and then gain commercially from that confusion. The Panel is inclined to agree with Complainant due to the fact that the disputed domain name resolves to a classic pay-per-click website that offers links to both unrelated and competing third parties. As a result, the Panel finds that Respondent registered and is using the confusingly similar domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to commercially gain off of the inclusion of Complainant’s mark in its domain. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lowescom.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: March 22, 2012
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