LF, LLC v. Steve Marinich
Claim Number: FA1612001710091
Complainant is LF, LLC (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Steve Marinich (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lowes-stores.com>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 29, 2016; the Forum received payment on December 29, 2016.
On December 30, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lowes-stores.com> 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 January 3, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 23, 2017 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@lowes-stores.com. Also on January 3, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 31, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 made the following contentions.
Complainant uses the LOWE’S mark in connection with its business in home improvement and hardware stores in the U.S., Canada and Mexico. Complainant owns the LOWE’S mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1168799, registered September 8, 1981). The disputed domain name is confusingly similar to Complainant’s LOWE’S mark, as Respondent has simply used the mark in its entirety, less the apostrophe, added a hyphen, the descriptive term “stores” and the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as evidenced by the available WHOIS information for the disputed domain name. Further, Respondent is neither licensed nor authorized to use the LOWE’S mark in connection with any registration of domain names. Additionally, Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Rather, Respondent uses the disputed domain name as part of a phishing scheme.
Respondent has registered and is using the disputed domain name in bad faith. First, Respondent uses the disputed domain name in connection with a phishing scheme. Further, Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant and its rights in the LOWE’S mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of operating home improvement and hardware stores.
2. Complainant has trademark rights in the LOWE’S mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1168799, registered September 8, 1981).
3. Respondent registered the disputed domain name on September 23, 2016.
4. Respondent uses the disputed domain name as part of a phishing scheme.
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(f), 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 (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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant uses the LOWE’S mark in connection with its business in home improvement and hardware stores in the U.S., Canada and Mexico. Complainant submits that it owns the LOWE’S mark through its trademark registrations with the USPTO (e.g., Reg. No. 1168799, registered September 8, 1981). Typically, panels find that such registrations indicate rights in a mark under Policy ¶ 4(a)(i). See Dell Inc. v. Rino Manangkalangi, FA 1626784 (Forum Aug. 5, 2015) (holding that Complainant has rights in the ALIENWARE trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO.). Accordingly, this Panel finds that Complainant has rights in the LOWE’S mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s LOWE’S mark. Complainant argues that Respondent’s disputed domain name is confusingly similar to Complainant’s LOWE’S mark under Policy ¶ 4(a)(i), as Respondent has simply removed the apostrophe from the mark, added a hyphen, the descriptive term “stores” and the gTLD “.com.” Past panels have found that all such changes do not remove a disputed domain name from the realm of confusing similarity. See Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). As such, the Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s LOWE’S mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s LOWE’S mark and to use it in its domain name, adding only the generic word ”stores” preceded by a hyphen;
(b) Respondent registered the disputed domain name on September 23, 2016;
(c) Respondent has used the domain name as part of a phishing scheme;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). In so arguing, Complainant points to the available WHOIS information, which lists “Steve Marinich” as registrant of the disputed domain name. Complainant also notes that Respondent is neither licensed nor authorized to use Complainant’s LOWE’S mark. The Panel recalls that Respondent has failed to submit a response in this proceeding and thus has not refuted any of Complainant’s contentions. Given the lack of evidence to find otherwise, the Panel holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name);
(f) Additionally, Complainant contends that Respondent has failed to show a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Rather, Complainant contends that Respondent uses the disputed domain name as part of a phishing scheme. Complainant argues that Respondent uses the disputed domain name to pose as Complainant and sends fraudulent emails to third parties in an attempt to phish for personal or company information. Complainant notes that the signature block in the emails includes Complainant’s name and actual address. Complainant has provided evidence of this behavior in Exhibit H and I. As the Panel agrees with Complainant’s argument and the evidence produced, the Panel finds that Respondent has failed to establish a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii), respectively. See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum March 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretences. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, while Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Complainant reiterates that Respondent uses the disputed domain name in connection with a phishing scheme. The Panel recalls, as discussed above, that Complainant argues that Respondent uses the disputed domain name to pose as Complainant and sends fraudulent emails to third parties in an attempt to phish for personal or company information. Complainant notes that the signature block in the emails includes Complainant’s name and actual address. Complainant has provided evidence of this behavior in Exhibit H and I. Generally, panels have held that such behavior is indicative of bad faith under Policy ¶ 4(a)(iii). See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). As the panel agrees, it finds that Respondent has acted in bad faith under Policy ¶ 4(a)(iii).
Secondly, Complainant argues that due to Complainant’s numerous trademark registrations and the fame of its company, it is inconceivable that Respondent registered the disputed domain name without actual and/or constructive knowledge of Complainant and its rights in the mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Thirdly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the LOWE’S mark and in view of the conduct that Respondent has
engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lowes-stores.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 1, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page