LF, LLC v. Domain Admin c/o eCommerce Advertising
Claim Number: FA0608000772865
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 Domain Admin c/o eCommerce Advertising (“Respondent”), P.O. Box 533 WB, West Bay, Granc Caym KY.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <reliabilt.com>, registered with Bulkregister, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of her 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 August 8, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 10, 2006.
On August 9, 2006, Bulkregister, LLC confirmed by e-mail to the National Arbitration Forum that the <reliabilt.com> domain name is registered with Bulkregister, LLC and that Respondent is the current registrant of the name. Bulkregister, LLC has verified that Respondent is bound by the Bulkregister, LLC 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 August 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 5, 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@reliabilt.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 12, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <reliabilt.com> domain name is identical to Complainant’s RELIABILT mark.
2. Respondent does not have any rights or legitimate interests in the <reliabilt.com> domain name.
3. Respondent registered and used the <reliabilt.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LF, LLC, operates a large network of home improvement retail stores in the United States under the LOWES mark. Complainant and its licensees market and distribute a line of window and door products at these stores under the RELIABILT mark. Complainant and its licensees have continuously used the RELIABILT mark in connection with windows and doors since 1990. Complainant and its licensees use the <reliabiltdoors.com> (registered on January 21, 1999) and <lowes.com> domain names to promote and advertise doors and windows under the RELIABILT mark.
Complainant holds a trademark registration for the RELIABILIT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,689,814 issued June 2, 1992).
Respondent registered the <reliabilt.com> domain name on March 18, 1998. Respondent’s domain name resolves to a web page with links to various content unrelated to Complainant, including links to other providers of windows and doors.
On April 23, 2006, Respondent allegedly sent Complainant an e-mail offering to sell the <reliabilt.com> domain name registration to Complainant for $6,500. Respondent gave Complainant 48 hours to decide whether to purchase the disputed domain name registration, at which point Respondent stated it would contact other interested parties. Complainant replied to Respondent asking for an extension of time to consider purchasing the domain name registration, to which Respondent allegedly replied “[u]ntil 5/4/06? This time period should be enough for you guys to file an ICANN dispute application and lock the name. Even though I know I can win, I don’t want to waste the time for things like this.”
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.
For purposes of Policy ¶ 4(a)(i), Complainant has established rights in the RELIABILT mark through registration of the mark with the USPTO in 1992, before Respondent registered the disputed domain name in 1998. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
The <reliabilt.com> domain name is identical to
Complainant’s federally registered mark because the disputed domain name
contains the entire mark and merely adds the generic top-level domain (“gTLD”)
“.com.” The mere addition of a gTLD to
Complainant’s registered mark does not sufficiently differentiate the disputed
domain name from the mark pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also
Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept.
27, 2002) ( “[I]t is a well established principle that generic top-level
domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights and
legitimate interests in the <reliabilt.com> domain name. Complainant must first make a prima facie
case in support of its allegations, and the burden then shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See 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 has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist); 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).”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <reliabilt.com>
domain name. See BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”); see
also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000)
(finding no rights or legitimate interests where the respondent fails to
respond). However,
the Panel will now examine the record to determine if Respondent has rights or
legitimate interests under Policy ¶ 4(c).
In addition, the WHOIS information lists the registrant of
the <reliabilt.com> domain name as “Domain Admin c/o eCommerce
Advertising,” and there is no other evidence in the record to indicate that
Respondent is commonly known by the disputed domain name. Hence, Respondent does not have rights or
legitimate interests in the <reliabilt.com> domain name under
Policy ¶ 4(c)(ii). See The Braun
Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that
the respondent was not commonly known by the disputed domain names where the
WHOIS information, as well as all other information in the record, gave no
indication that the respondent was commonly known by the disputed domain names,
and the complainant had not authorized the respondent to register a domain name
containing its registered mark); see also 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).
Moreover, Respondent is using the <reliabilt.com> domain name to forward Internet users to its own commercial website where it displays links to other companies selling doors and windows in direct competition with Complainant. In Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum Jul. 29, 2005), the Panel concluded that the respondent’s use of a domain name to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i). In this case, Respondent is also using a domain name in order to attract Internet users to competing service providers. Accordingly, the Panel finds that Respondent is not using the <reliabilt.com> domain name in connection with 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)).
The Panel further finds that Respondent’s offer to sell the <reliability.com> domain name registration to Complainant for $6,500 and its subsequent conduct demonstrate that Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent offered to sell the <reliabilt.com> domain name registration to Complainant for $6,500 and gave Complainant only 48 hours to decide whether to purchase it or not, at which time Respondent stated that it would attempt to sell the disputed domain name registration to interested third parties. The Panel infers that $6,500 is in excess of Respondent’s out-of-pocket costs in registering the disputed domain name and finds that this offer to sell demonstrates bad faith registration and use according to Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
Furthermore, by registering a domain name identical to
Complainant’s RELIABILT mark, and using it to operate a website displaying
links to websites competing with Complainant, Respondent has registered the
domain name for the purpose of disrupting Complainant’s business. Such use of the disputed domain name
constitutes bad faith registration and use 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 Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)).
Respondent’s
website at the <reliabilt.com> domain name resolves to a
commercial web directory with sponsored links to various content unrelated to
Complainant, including links to Complainant’s competitors in the windows and
doors industry. The Panel infers that
Respondent earns referral fees for each Internet user it diverts to other
websites. The Panel thus finds that
Respondent taking advantage of the confusing similarity between the disputed
domain name and Complainant’s RELIABILT mark in order to profit from the
goodwill associated with the mark, which suggests bad faith registration and
use according to Policy ¶ 4(b)(iv). See BPI
Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30,
2002) (“Complainants are in the music and entertainment business. The links associated with
<billboard.tv> and <boogie.tv> appear to be in competition for the
same Internet users, which Complainants are trying to attract with the
<billboard.com> web site. There
is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD
as to the source, sponsorship, affiliation, or endorsement of the web site or
of a product or service on the web site.”); 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 concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <reliabilt.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 25, 2006
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