La-Z-Boy Incorporated v. Amigos Furniture / Gustavo Lee
Claim Number: FA1402001544073
Complainant is La-Z-Boy Incorporated (“Complainant”), represented by Elizabeth Brock of Harness, Dickey & Pierce PLC, Michigan, USA. Respondent is Amigos Furniture / Gustavo Lee (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lazyboyfurniture.net>, registered with GODADDY.COM, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2014; the National Arbitration Forum received payment on February 18, 2014.
On February 18, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <lazyboyfurniture.net> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 18, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 10, 2014 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@lazyboyfurniture.net. Also on February 18, 2014, 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 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, La-Z-Boy Incorporated, is a world-famous maker of upholstered and wood furniture for every room in the home, including reclining chairs, and also has a line of outdoor furniture, spas and hot tubs. La-Z-Boy sells its product lines through its own LA-Z-BOY FURNITURE GALLERIES stores, its website at www.la-z-boy.com, and via a global network of distributors. La-Z-Boy is one of the best known and most respected residential furniture companies in the world, doing business in almost every major international country. La-Z-Boy has been doing business under the La-Z-Boy name since 1929 and has developed an unparalleled reputation in the furniture industry. In the last decade, La-Z-Boy's annual worldwide sales of goods and services under the LA-Z-BOY Marks have been in the range of USD $1billion to $2 billion.
Complainant registered the LAZYBOY mark with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 3,129,898 registered on Aug. 15, 2006) and holds numerous related marks worldwide.
Respondent’s <lazyboyfurniture.net> domain name is confusingly similar to Complainant’s mark. The mark merely adds the descriptive term “furniture.” The addition of the generic top-level domain (“gTLD”) “.net” is not relevant here.
Policy ¶ 4(a)(ii)
Respondent is not actually known by the <lazyboyfurniture.net> domain name. Complainant has not authorized or approved of Respondent’s use of the LAZYBOY mark in the <lazyboyfurniture.net> domain name. Respondent uses the <lazyboyfurniture.net> domain name to hold itself out as the original and genuine manufacturer of LAZYBOY products. In doing so, Respondent manages to shuttle Internet users to a competing website.
Respondent seeks to disrupt Complainant’s business by using Complainant’s own trademarks to sell competing goods. Respondent is profiting from a likelihood of confusion in that Respondent passes itself off as Complainant so as to lure Internet users to inquire into the goods sold through the <lazyboyfurniture.net> domain name. Respondent had to have had actual and/or constructive notice of Complainant’s rights in the LAZYBOY mark. Respondent’s use of Complainant’s marks on the competing merchandise illustrates such knowledge.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the USPTO for its LAZYBOY mark as well as for related marks worldwide.
Respondent registered the at-issue domain name subsequent to Complainant acquiring rights in the LAZYBOY mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the <lazyboyfurniture.net> domain name address a website that appears to be, but is not, affiliated with or authorized by Complainant. The website markets products that are similar to those offered by 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."
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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates that it has rights in a mark for the purposes of the Policy by virtue of its USPTO registration for the LAZYBOY mark. For the purposes of Policy ¶4(a)(i), it is irrelevant whether or not Respondent may operate outside the jurisdiction of the relevant trademark registrar. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that its is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent forms the at-issue domain name by adding the descriptive term “funiture” to Complainant’s trademark and appending the top-level domain name “.net” thereto. These slight alterations to Complainant’s LAZYBOY trademark fail to materially distinguish the at-issue domain name from Complainant’s trademark. In fact, including the term “furniture,” which is suggestive of Complainant’s furniture related business, further serves to confuse the mark and the domain name. Likewise, it well settled that the top-level domain name (here “.net”) is immaterial to the Panel’s analysis under Policy ¶4(a)(i). Therefore the Panel finds that Respondent’s <lazyboyfurniture.net> domain name is confusingly similar to Complainant’s LAZYBOY mark. See Best Western Int’l, Inc. v. Lost in Space, SA, FA 126834 (Nat. Arb. Forum Nov. 7, 2012) (finding that the deletion of spacing in a mark and the addition of a gTLD are irrelevant as they are dictated by the standardized nature of second- and top-level domain names, and further that the addition of generic and descriptive terms fails to negate confusing similarity).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies the registrant of the <lazyboyfurniture.net> domain name as “gustavo Lee” of “Amigos Furniture.” Additionally, there is no evidence that tends to prove that, notwithstanding the WHOIS record, Respondent is otherwise commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the <lazyboyfurniture.net> 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent employees the <lazyboyfurniture.net> domains name to address a website which feigns being authorized by Complainant. Under this guise, Respondent’s website offers products which are in the same class of goods as those offered by Complainant. Using the confusingly similar domain name to draw Internet users to a website selling goods competing with Complainant is neither a bona fide use under Policy ¶ 4(c)(i), nor a legitimate or fair use of the domain name under Policy ¶4(c)(iii).See, Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (finding that there was no bona fide offering made through the commercial sale of goods through a confusingly similar domain name). Respondent’s use of the domain name in this manner is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstances are present, as well as non-Policy ¶4(b) circumstance, from which the Panel may conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
First, Respondent’s <lazyboyfurniture.net> domain name directs Internet users to a Chinese-based furniture company called “Amigos Furniture” where, as mentioned above, Respondent’s offers goods that compete with Complainant’s LAZYBOY branded products. Respondent’s misappropriation of LAZYBOY mark to ultimately promote a line of products in Competition with those legitimately sold under that mark disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Second, Respondent uses the LAZYBOY mark and other devices to fake the <lazyboyfurniture.net> website’s affiliation with Complainant. This sham link between Respondent and Complainant benefits Respondent not only from increasing traffic to its website, but also because it inappropriately facilitates Respondent’s trading off the goodwill associated with the LAZYBOY trademark. In passing itself off as Complainant, Respondent’s demonstrates its bad faith registration and use of the at-issue domain name pursuant to Policy ¶ 4(b)(iv). See Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Finally, Respondent had knowledge of Complainant’ LAZYBOY trademark before it registered the at-issue domain name. Not only is Complainant’s long used trademark extremely well-known, Respondent’s use of the mark in a confusingly similar domain name and on its website to promoting competing merchandise further urges that Respondent had prior knowledge of Complainant’s LAZYBOY mark. Respondent’s preregistration knowledge of a trademark that is confusingly similar the <lazyboyfurniture.net> domain name shows Respondent’s bad faith under Policy ¶ 4(a)(iii). 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lazyboyfurniture.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 20, 2014
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