LF, LLC v. Sugarman Studios
Claim Number: FA0512000610161
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 Sugarman Studios (“Respondent”), 87 Sugarman Ave., Millville, NJ 08332.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lowesexposed.com>, registered with Go Daddy Software, Inc.
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, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 15, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 19, 2005.
On December 15, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <lowesexposed.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 December 20, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 9, 2006 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@lowesexposed.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 11, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, 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." 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 <lowesexposed.com> domain name is confusingly similar to Complainant’s LOWE’S mark.
2. Respondent does not have any rights or legitimate interests in the <lowesexposed.com> domain name.
3. Respondent registered and used the <lowesexposed.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LF, LLC, owns the rights to the United States Patent and Trademark Office (“USPTO”) registered LOWE’S mark (Reg. No. 1,168,799 issued September 8, 1981). Complainant’s licensees operate one of the largest and best-known networks of home improvement retail stores in the United States. Complainant’s licensees employ more than 160,000 employees in 1,100 stores nationwide and generated approximately $36.5 billion in revenue in 2004.
Respondent registered the <lowesexposed.com> domain name on August 13, 2004. Respondent’s domain name currently resolves to an inactive website that contains no substantial content other than a directory listing and two image files.
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 has established rights in the LOWE’S mark through registration with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning”).
Complainant contends that Respondent’s <lowesexposed.com>
domain name is confusingly similar to Complainant’s registered mark. Respondent’s disputed domain name features
complainant’s entire LOWE’S mark and adds the generic term “exposed” and
eliminates the apostrophe mark. The
Panel finds that the addition of a generic term and the elimination of an
apostrophe fails to sufficiently distinguish a domain name from a mark with
established rights pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of the complainant combined with a
generic word or term); see also 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).
Complainant has alleged that Respondent does not have rights or legitimate interests in the <lowesexposed.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel infers that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent has connected the <lowesexposed.com> domain name to an inactive website containing no substantial content other than a directory listing and two image files. The Panel finds that such use fails to establish either 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 Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that the respondent had not established any rights or legitimate interests in the domain name); see also Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that the respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).
Furthermore, no evidence has been set forth suggesting that Respondent is either a licensee of Complainant’s mark or commonly known by the disputed domain name. As such, the Panel finds that no rights or legitimate interests exist pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Finally, the website associated with the <lowesexposed.com>
domain name displays a parent directory and files of a FTP site. An image reading “Lowe’s Exposed”
appropriates Complainant’s stylized mark.
The Panel infers from this appropraition that Respondent had actual
knowledge of Complainant’s rights in the LOWES mark. The Panel holds that Respondent registered the <lowesexposed.com>
domain name while it had knowledge of Complainant’s rights in the LOWE’S
mark. The Panel finds that this is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187
(WIPO Apr. 24, 2002) (finding that because the link between the complainant’s
mark and the content advertised on the respondent’s website was obvious, the
respondent “must have known about the Complainant’s mark when it registered the
subject domain name”); Samsonite Corp. v.
Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that
evidence of bad faith includes actual or constructive knowledge of a commonly
known 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 <lowesexposed.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Panelist
Dated: January 23, 2006
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