LZB Properties, Inc. v. Spiral Matrix
Claim Number: FA0604000697617
Complainant is LZB Properties, Inc. (“Complainant”), represented by Jessica S. Sachs, of Harness, Dickey & Pierce, P.L.C., 5445 Corporate Drive, Troy, MI 48098. Respondent is Spiral Matrix (“Respondent”), 1st Floor Muya House, Kenyatta Ave., P.O. Box 4276-30100, Eldoret, KE 30100, KE.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <lazyboysofa.com>, <lazyboysofas.com>, <lazyboyfurniture.net>, and <la-z-boyrecliners.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 28, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 1, 2006.
On April 28, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <lazyboysofa.com>, <lazyboysofas.com>, <lazyboyfurniture.net>, and <la-z-boyrecliners.com> domain names are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 May 4, 2006, a Notification of Complaint
and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of May 24, 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@lazyboysofa.com, postmaster@lazyboysofas.com, postmaster@lazyboyfurniture.net,
and
postmaster@la-z-boyrecliners.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 30, 2006 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lazyboysofa.com>, <lazyboysofas.com>, <lazyboyfurniture.net>, and <la-z-boyrecliners.com> domain names are confusingly similar to Complainant’s LA-Z-BOY and LAZY BOY marks.
2. Respondent does not have any rights or legitimate interests in the <lazyboysofa.com>, <lazyboysofas.com>, <lazyboyfurniture.net>, and <la-z-boyrecliners.com> domain names.
3.
Respondent registered and used the <lazyboysofa.com>,
<lazyboysofas.com>, <lazyboyfurniture.net>, and
<la-z-boyrecliners.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LZB
Properties, Inc., is a wholly owned subsidiary of La-Z-Boy Inc., an
international leader in making upholstered and wood furniture, including
reclining chairs. In connection with
its furniture retail services, Complainant holds numerous trademark
registrations with the United States Patent and Trademark Office (“USPTO”),
including the LA-Z-BOY mark (Reg. No. 1,489,221 issued May 24, 1988) and the
LAZY BOY mark (Reg. No. 2,876,840 issued August 24, 2004).
Respondent registered the the <lazyboysofa.com> domain name on March 19, 2006, the <lazyboysofas.com> domain name on July 21, 2005, the <lazyboyfurniture.net> domain name on June 16, 2005, and the <la-z-boyrecliners.com> domain name on February 4, 2006. Each of the disputed domain names resolve to a website that diverts Internet users to third-party websites that feature furniture products that compete with 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."
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 LA-Z-BOY and LAZY BOY marks through registration with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the 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 the <lazyboysofa.com>, <lazyboysofas.com>, <lazyboyfurniture.net>, and <la-z-boyrecliners.com> domain names are confusingly similar to Complainant’s LAZY BOY and LA-Z-BOY marks. Respondent’s <lazyboysofa.com>, <lazyboysofas.com>, and <lazyboyfurniture.net> domain names each feature Complainant’s LAZY BOY mark in its entirety and adds various generic terms that describe Complainant’s business. Similarly, Respondent’s <la-z-boyrecliners.com> domain name features Complainant’s LA-Z-BOY mark in its entirety and affixes the generic term “furniture,” which also describes Complainant’s business. The Panel finds that neither the addition of generic terms that describe Complainant’s business nor the addition of a top-level domain differentiate the disputed domain names from Complainant’s marks pursuant to Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also 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 Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant established rights and legitimate interests in the marks contained in their entirety within the disputed domain names. Under Policy ¶ 4(a)(ii), the burden rests with Complainant to prove Respondent does not have rights or legitimate interests in the disputed domain names. Complainant has established a prima facie case that respondent lacks rights or legitimate interests in the disputed domain names through assertions in the Complaint. Therefore, the burden shifts to Respondent to show that it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant asserts that Respondent is using the disputed domain names to redirect Internet users to websites that feature furniture products that compete with Complainant. Respondent’s use of the confusingly similar domain names to redirect Internet users to competing third-party websites is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Furthermore, Complainant contends that Respondent is not commonly known by any of the disputed domain names. Because Respondent has failed to come forward with any evidence to rebut Complainant’s assertion, the Panel finds that Respondent is not commonly known by any of the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); See also DIMC, Inc. v. Phan, D2000-1519 (WIPO Feb. 20, 2001) (rejecting the claim that the respondent was commonly known by the “Krylon” nickname since there was no evidence indicating when the alleged nickname was adopted and how it was used).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s use of confusingly
similar domain names to redirect Internet users to competing third-party
websites amounts to disruption of Complainant’s business. The Panel finds that such registration and
use of the confusingly similar domain names evidences bad faith pursuant to
Policy ¶ 4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see also See EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that the respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain
name to promote competing auction sites); see also Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly
similar to Complainant's mark to divert Internet users to a competitor's
website. It is a reasonable inference that Respondent's purpose of registration
and use was to either disrupt or create confusion for Complainant's business in
bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Moreover, Complainant asserts without contention that
Respondent is receiving commercial gain through click-through fees from the use
of the confusingly similar domain names.
The Panel concludes that Respondent’s use of the confusingly similar
domain names is likely to cause confusion as to Complainant’s affiliation or
sponsorship of Respondent’s websites.
As a result, the Panel finds that Respondent’s confusing use of
Complainant’s marks within the disputed domain names for commercial gain
evidences bad faith pursuant to Policy ¶ 4(b)(iv). See Gardens Alive, Inc. v. D&S
Linx, FA 203126 (Nat. Arb. Forum Nov. 20,
2003) (“Respondent registered and used the <my-seasons.com> domain name
in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is
using a domain name that is confusingly similar to the MYSEASONS mark for
commercial benefit by diverting Internet users to the <thumbgreen.com>
website, which sells competing goods and services.”); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum
Dec. 22, 2003) (“Registration and use of a domain name that incorporates
another's mark with the intent to deceive Internet users in regard to the
source or affiliation of the domain name is evidence of bad faith.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lazyboysofa.com>, <lazyboysofas.com>, <lazyboyfurniture.net>, and <la-z-boyrecliners.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 12, 2006
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