LF, LLC v. Lowes Construction
Claim Number: FA0509000566618
PARTIES
Complainant
is LF, LLC (“Complainant”),
represented by Henry B. Ward, of Alston & Bird, LLP,
Bank of America Plaza, 101 S. Tryon Street, Suite 4000, Charlotte, NC
28280-4000. Respondent is Lowes Construction (“Respondent”),
12115 Hitchcock, Forest Park, OH 45240.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <lowesconstruction.com>,
registered with Tucows Inc.
PANEL
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.
Terry
F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on September
21, 2005; the National Arbitration Forum received a hard copy of the Complaint
on September 23, 2005.
On
September 21, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the <lowesconstruction.com>
domain name is/ registered with Tucows Inc. and that the Respondent is the
current registrant of the name. Tucows
Inc. has verified that Respondent is bound by the Tucows Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On
September 26, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 17, 2005 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@lowesconstruction.com by e-mail.
An
e-mail Response was received on September 30, 2005. Because Respondent did not include a hard copy, the Response was
deficient pursuant to Rules ¶ 5(a).
On October 12, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Terry F. Peppard as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends, among other things, that:
1. Complainant LF, LLC, is the owner of the
service mark LOWE’S for use in conjunction with the marketing and distribution
of home improvement products and services.
2. Complainant’s licensees operate one of the
largest and best known networks of home improvement retail stores in the United
States.
3. The products and services offered by
Complainant’s licensees under the LOWE’S mark include construction products and
related project planning services.
4. Complainant’s mark is the subject of
numerous registrations with the United States Patent and Trademark Office, the
earliest dating from 1981.
5. The LOWE’S mark, which was first used in commerce
in 1946, has become famous through Complainant’s efforts and is now
incontestable under United States law.
6. Although Respondent registered the domain
name <lowesconstruction.com> in
May of 2004, it has, in the period since that registration, employed that name
only to resolve to an inactive web site that is labeled “under construction.”
7. Complainant has not licensed or otherwise
authorized Respondent’s use of the disputed domain name, which is confusingly
similar to Complainant’s mark.
8. Respondent has offered to sell the subject
domain name to Complainant for the sum of $25,000 U.S.
B.
Respondent
Respondent
contends, among other things, that:
1. Respondent has validly registered and used
the disputed domain name.
2. Respondent’s offer to sell the subject
domain name to Complainant was withdrawn as of October 15, 2005.
3. Complainant having failed to purchase the
disputed domain name as offered, Respondent intends to develop a related web
site for its own purposes.
FINDINGS
a.
The domain
name registered by Respondent is confusingly similar to a service mark in which
Complainant has rights.
b.
Respondent
has no rights or legitimate interests in respect of the same domain name.
c.
The domain
name at issue has been registered and is being used by Respondent in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 and is being used in bad faith.
Preliminary
Consideration: Response in Violation of
ICANN Supplemental Rules
Respondent’s
Response, although filed timely in conformity with the pertinent rule, was
filed in electronic form only and not also in hard copy as is required by ICANN
Supplemental Rule 5(a). A failure to
comply with this supplemental rule constitutes grounds sufficient to justify a
refusal of the Panel to consider the Response.
Nonetheless, in the interests of supplying a complete record of this
proceeding, the Panel has determined to include the substance of the deficient
Response in this decision. See J.W. Spear & Sons PLC v. Fun League
Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003).
In order to
prevail under Policy ¶ 4(a)(i), Complainant must first show that it has rights to
the referenced service mark LOWE’S.
Rights sufficient for purposes of the Policy are established by proof of registration of the
mark with the pertinent authorities. Vivendi Universal Games v. XBNetVentures Inc.,
FA 198803 (Nat. Arb. Forum Nov. 11, 2003);
Innomed
Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004).
Respondent does not contest that
Complainant’s mark LOWE’S has been registered for more than twenty years with
the United States Patent and Trademark Office, as alleged. This element of Complainant’s proof
requirements is therefore admitted.
Complainant’s rights in the mark having
been established, we turn to an examination of whether the challenged domain
name is either identical to or confusingly similar to Complainant’s mark. Complainant does not allege that the subject
domain name is identical to its mark, but only that the two are confusingly
similar. We need not, therefore,
consider the issue of identity.
Respondent’s domain name incorporates
Complainant’s mark in its entirety, adding only the generic term
“construction.” Because this generic
term is closely associated with Complainant’s home improvement and construction
products and services business, thus implying an association with Complainant
which does not exist, Respondent’s domain name is confusingly similar to
Complainant’s mark, as alleged. Brambles Indus. Ltd. v. Geelong Car Co. Pty.
Ltd., D2000-1153 (WIPO Oct. 17, 2000). For this reason, and because
Respondent does not contest this allegation, Complainant must be found to have
satisfied the proof requirements of Policy ¶ 4(a)(i).
To satisfy the requirements of Policy ¶ 4(a)(ii),
Complainant must show that Respondent has no rights or legitimate interests in
respect of the challenged domain name.
In this regard, Complainant alleges, and
Respondent does not deny, that Complainant has never authorized Respondent to
use its registered mark for any purpose.
Likewise, Complainant alleges, and
Respondent does not deny, that in the nearly eighteen months since its domain
name was registered, Respondent has not developed a web site associated with
that name, instead merely resolving the name to a site labeled “under
construction.”
It has been held, and we agree, that the
mere creation and maintenance of a web site “under construction,” without more,
does not support a claim by a domain name holder that it has rights or interests
in the name sufficient for purposes of Policy ¶ 4(a)(ii). Hewlett-Packard Co. v.
Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001).
Accordingly,
and because Respondent does not offer any other basis upon which it might be
judged to have established rights or interests in respect of the domain name,
we conclude that Complainant also prevails under this heading. Boeing
Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000).
Policy ¶ 4(a)(iii) obliges Complainant to demonstrate
that Respondent has both registered and is using the subject domain name in bad
faith.
On the facts before us, our discussion of
the question of bad faith begins with the consideration that, by virtue of the
fact of its years-long registration with the pertinent authorities, Respondent
had at least constructive knowledge of Complainant’s mark when Respondent
registered the competing domain name.
Registration and use of a domain name in the face of such constructive
knowledge has many times been held to constitute evidence of bad faith
registration and use of the name for purposes of Policy ¶ 4(a)(iii).
See, e.g.: Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000).
Further
evidence of bad faith registration and use of the subject domain name is found
in Respondent’s admitted attempt to sell the domain name to Complainant for the
sum of $25,000.00 U.S., a sum palpably in excess of the expectable cost of
obtaining and maintaining that name. Matmut v. Tweed, D2000-1183 (WIPO Nov.
27, 2000); Dollar Rent A Car Sys., Inc. v. Jongho, FA 95391 (Nat. Arb. Forum
Sep. 11, 2000). Indeed, this factor is deemed to evidence such bad faith by the
express terms of Policy ¶ 4(b)(iv).
Accordingly, we
find that Complainant has presented proof of Respondent’s bad faith
registration and use of the subject domain name adequate for purposes of Policy ¶ 4(a)(iii).
DECISION
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that the relief requested shall be, and it is, hereby, GRANTED.
Accordingly, it is Ordered that the <lowesconstruction.com>
domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 24, 2005
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