Lowe's Food Stores, Inc. v. Domain Admin
Claim Number: FA0702000924557
Complainant is Lowe's Food Stores, Inc. (“Complainant”), represented by Brian
M. Davis, of Alston & Bird, LLP, Bank of America
Plaza,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lowesfoodtogo.com>, registered with Enom, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 23, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 26, 2007.
On
On March 5, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 26, 2007 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@lowesfoodtogo.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <lowesfoodtogo.com> domain name is confusingly similar to Complainant’s LOWES FOODS mark.
2. Respondent does not have any rights or legitimate interests in the <lowesfoodtogo.com> domain name.
3. Respondent registered and used the <lowesfoodtogo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Lowe's Food
Stores, Inc., is a well-known retail grocery store chain that has operated for
over 50 years. Complainant holds a
registered trademark with the United States Patent and Trademark Office (“USPTO”)
for the LOWES FOODS mark (Reg. No. 1,443,627 issued June 16, 1987).
Beginning in 1998,
Complainant began using the phrase “Lowes Foods to Go” to advertise its online
ordering services. Complainant
registered the <lowesfoodstogo.com> domain name to provide a webpage
where customers can take advantage of these online ordering services.
Respondent, Domain Admin,
registered the <lowesfoodtogo.com> domain name on
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’s registration of its LOWES FOODS mark with the
USPTO is sufficient to establish Complainant’s rights in the mark pursuant to
Policy ¶ 4(a)(i).
See America Online, Inc. v. Thomas
P. Culver Enters., D2001-0564 (WIPO
Respondent’s <lowesfoodtogo.com>
domain name incorporates Complainant’s LOWES FOODS mark without the “s” at the
end, and adds the generic words “to go,” which describe Complainant’s
business. The omission of the “s” and
addition of the generic terms render the domain name confusingly similar to
Complainant’s LOWES FOODS mark, especially since
Complainant has also registered the
<lowesfoodstogo.com> domain name to promote its online grocery ordering
services. The addition of the generic
top-level domain (“gTLD”) “.com” is without relevance to this analysis. Therefore, the Panel finds that Respondent’s <lowesfoodtogo.com>
domain name is confusingly similar to Complainant’s LOWES FOODS mark pursuant
to Policy ¶ 4(a)(i).
See Universal City Studios,
Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that
deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did
not change the overall impression of the mark and thus made the disputed domain
name confusingly similar to it); see also
Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding that “[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <lowesfoodtogo.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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) (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). Although Respondent has not responded to the Complaint, the Panel will nevertheless examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
The Panel finds no evidence in the record indicating that Respondent is commonly known by the <lowesfoodtogo.com> domain name. The WHOIS information identifies Respondent as “Domain Admin.” Without any information indicating otherwise, the Panel concludes that Respondent is not commonly known by the <lowesfoodtogo.com> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Communications, Inc. 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); see also 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).
Respondent is using the <lowesfoodtogo.com> domain name to display hyperlinks advertising competing online grocery ordering services. Such use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2004) (“Respondent’s appropriation of the SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <lowesfoodtogo.com> domain name to display hyperlinks advertising competing online grocery ordering services. This is likely to disrupt Complainant’s business by diverting potential customers looking to order groceries online away from Complainant. Therefore, the Panel finds that Respondent’s registration and use of the <lowesfoodtogo.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Personal Fin. Ltd. v. Domain Mgmt. Svcs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors); see also Puckett 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 <lowesfoodtogo.com> domain name, which is confusingly similar to Complainant’s LOWES FOODS mark, is likely to cause confusion among customers searching for Complainant’s online grocery ordering services. Specifically, customers may become confused as to the affiliation, endorsement, or sponsorship of the competing services advertised by the links on Respondent’s website. Respondent presumably receives click-through fees for each misdirected Internet user, and is therefore attempting to commercially benefit from this likelihood of confusion between Respondent’s domain name and the goodwill associated with Complainant’s LOWES FOODS mark. Therefore, the Panel finds that Respondent’s registration and use of the <lowesfoodtogo.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (bad faith registration and use pursuant to Policy ¶ 4(b)(iv) exists because respondent is taking advantage of the confusing similarity between the domain name and complainant’s mark in order to profit from the goodwill associated with the mark); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
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 <lowesfoodtogo.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 10, 2007
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