LF, LLC v. Yancho Todorov
Claim Number: FA2101001929774
Complainant is LF, LLC (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, Pennsylvania, USA. Respondent is Yancho Todorov (“Respondent”), New Hampshire, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mycheaplowescoupon.com>, registered with GoDaddy.com, LLC.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 26, 2021; the Forum received payment on January 26, 2021.
On January 26, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mycheaplowescoupon.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 28, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@mycheaplowescoupon.com. Also on January 28, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 23, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the LOWE’S service mark, established by its ownership of the portfolio of trademark registrations described below and its extensive use of the mark in its business that serving customers through more than 2,200 stores in the United States and Canada, with net sales of USD 72.15 billion for fiscal year 2019, and employs approximately 300,000 associates.
Complainant submits that the disputed domain name <mycheaplowescoupon.com> is identical or confusingly similar to its LOWE’S service mark, arguing that it consists of the LOWE’S mark, merely adding the words “my”, “cheap”, and “coupon” and the generic Top Level (“TLD”) extension <.com>.
Complainant also argues that the addition of generic or other words to a trademark creates a confusingly similar domain name. Citing Homer TLC, Inc. v. Domains Ventures, FA 0649856 (Forum Apr. 6, 2006) (“Respondent’s <homedepotgiftcard.com> domain name is confusingly similar to Complainant’s HOME DEPOT mark because Respondent’s domain name incorporates Complainant’s mark in its entirety, adding only the terms ‘gift’ and ‘card,’ and the generic top-level domain ‘.com.’”).
Complainant adds that this is especially so, where, as in the present case, the additional elements relate to the business of the trademark holder. Citing Marriott International, Inc. and Marriott Worldwide Corporation v. Manpreet Badhwar, FA 1762333 (Forum Jan. 18, 2018) (“The Panel finds that the disputed domain name [Marriott.menu] is effectively identical to Complainant’s mark as it incorporates its mark entirely, while merely adding the ‘.menu’ gTLD, which only heightens the confusing similarity as the word ‘menu’ is highly relevant to Complainant’s business.”).
Complainant further contends that the service mark “LOWE’S” is an arbitrary term used by Complainant in relation to home improvement and tools and argues that Internet searchers will most certainly be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant and Respondent by Respondent’s use of the disputed domain name.
Finally, Complainant submits that the addition of the gTLD <.com> extension does nothing to alleviate confusion between the LOWE’S mark and the disputed domain name. Citing Focus Do It All Group v. Athanasios Sermbizis, D2000-0923 (WIPO Oct. 12, 2000) (“Indeed, it is well-settled that the mere addition of a TLD to a famous trademark does not avoid confusing similarity”); Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (Finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark.)
Complainant alleges that Respondent has no rights or legitimate interest in the disputed domain name arguing that upon information and belief, Respondent is not commonly known by the disputed domain name or the name “Lowes”, nor does Respondent operate a business or other organization under the LOWE’S mark or the disputed domain name.
Complainant notes that the public Whois record for the disputed domain name identifies Respondent as “Registration Private / Domains By Proxy, LLC” and adds that Respondent does not own any trademark or service mark rights in the LOWE’S name. Citing, Dell Inc. v. George Dell and Dell Net Solutions, D2004-0512 (WIPO Aug. 24, 2004) (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name.”).
Complainant refers to a screenshot of the website to which the disputed domain name resolves on which shows that Respondent is purporting to offer coupons for both Complainant and its main competitor, Complainant submits that these coupons are highly suspect and contends that such actions are not 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).
Complainant adds that previous decisions under the Policy have held that use of a disputed domain name to offer a complainant’s coupons in a misleading manner is not a bona fide offering of goods or services, referring in particular to the decision in Chalhoub Group Limited v. WhoisGuard Protected / Haron Ali, Swaqny, D2020-1653 (WIPO Aug. 7, 2020) where it submits the panel held that there was no bona fide offering of goods or service within the meaning of the Policy, where the domain name at issue <ghawalicoupon.com> resolved to a website which seems to offer coupons for the complainant’s GHAWALI branded products thus creating the misleading impression that it is affiliated with the complainant. Complainant argues that is certainly no more bona fide when the same website offers coupons that are for use at the business of a complainant’s competitor. Also citing Homer TLC, Inc. v. Arnold Brod, FA 1222948 (Forum Oct. 7, 2008) (“Respondent’s sales of coupons bearing Complainant’s THE HOME DEPOT mark without license or authority from Complainant, as well as Respondent’s sales of coupons of Complainant’s competitors and the links to competing third-party websites are neither bona fide offerings of goods or services under Policy ¶ 4(c)(i) nor legitimate noncommercial or fair uses under Policy ¶ 4(c)(iii).”)
Complainant submits that the screenshots of the website to which the disputed domain name resolves, displays an offer for “ONE (1X) 10% OFF LOWE’S PRINTABLE IN-STORE or ONLINE COUPON”. Immediately next to this is displayed an offer for “ONE (1X) 15% OFF HOME DEPOT COUPON FOR ONLINE ONLY – ENTIRE ORDER DISCOUNT” as well as other suspicious looking coupon offers. Complainant asserts that it does not offer its own legitimate coupons in the manner shown on Respondent’s website and notes that each of these offers displays the respective LOWE’S or THE HOME DEPOT company logos. The page also contains a footer that says “© MyCheapLowesCoupon 2018. Powered by MyCheapLowesCoupon.com”. Complainant contends that this can only further confuse users of the site into believing that it is in some way affiliated with Complainant.
Additionally, Complainant argues that Respondent cannot claim that it is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, and so its actions do not fall within Policy ¶ 4(c)(iii).
For completeness Complainant notes that Respondent’s website contains a “Disclaimer” stating: “MyCheapLowesCoupon.com is [sic] independent website and in no way [sic] affiliated with ©Lowe’s or @lowes.com.” However Complainant points out that the copyright notice followed by the word “Disclaimer” is in black lettering against a dark blue background. When compared with the white lettering used for the rest of the footer, Complainant submits that this clearly indicates that Respondent is trying to hide its disclaimer and perpetuate the passing off of its website as originating with Complainant. Complainant argues that this disclaimer utterly fails to satisfy the third prong of the test for legitimate use of a trademark set out in the seminal case of Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001).
Complainant alleges that the disputed domain name was registered and is being used in bad faith arguing that the word “LOWE’S” is a coined term that does not have any generic or descriptive meaning in relation to discount coupons; and that Respondent was put on actual notice of Complainant’s rights in its famous LOWE’S mark because of Complainant’s extensive use of the mark which long predates the creation date of the disputed domain name.
Furthermore, Complainant argues that given the fame of the Complainant’s LOWE’S mark and the fact that Respondent’s website specifically references the LOWE’S mark and its related logo, it is inconceivable that Respondent was not aware of the existence of the mark. Citing, LF, LLC v. Metro Concourse Limited / Domain Handler, FA 1430498 (Forum Apr. 5, 2012) (“the Panel finds that, due to the fame of Complainant's [LOWE’S]mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).”).
Complainant argues that the evidence shows that Respondent’s use of the disputed domain name is intended to confuse users regarding the source of the coupons supposedly offered at its site, mislead Internet traffic and has therefore tarnished Complainant’s mark and diminished the public’s capacity to associate the mark with the quality products and services offered by Complainant. Citing Carrefour SA v. WhoisGuard Protected, WhoisGuard, Inc. / Alaa Mohamed, Bluemedia, D2020-1664 (WIPO Aug. 19, 2020) (Respondent’s <carrefourcoupon.com> website “offers discount coupons” for Complainant’s stores “the composition of the disputed domain name, comprising the Complainant’s well‑known trademark plus an additional term, and use of the disputed domain name falsely suggest an affiliation with the Complainant and do not support any fair use in the circumstances of this case”).
Complainant concludes in summary, that Respondent is seeking to obtain commercial gain by creating confusion with Complainant’s mark and such action by the Respondent constitutes bad faith use of the disputed domain name to attract, for commercial gain, exploiting the likelihood of confusion among Internet users with the Complainant’s trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant operates retail home improvement supply stores, and is engaged in sale of hand and power tools and the provision of related services for which it uses the LOWE’S mark. Complainant is the owner of a portfolio of registered service marks including the following:
· United States registered trademark LOWE'S, registration number 116879, registered on September 8, 1981, for services on international class 42
· United States registered trademark LOWE’S, registration number 1922425 registered on the Principal Register on September 26, 1995 for services in international classes 36, 37, 38, 40, 41, and 42;
· EUTM, LOWE’S, registration number, 002303923, registered on July 25, 2003, for services in classes 35, 36, 37, 40, 41, and 42.
The disputed domain name was registered on February 25, 2018 and resolves to a website that purports to offer coupons for use in Complainant’s business and the businesses of third-party competitors.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name in the course of this proceeding.
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."
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has produced clear, convincing and uncontested evidence that it has rights in the LOWE’S service mark, established by its ownership of the portfolio of trademark registrations described above and its extensive use of the mark serving customers through more than 2,200 stores in the United States and Canada, with net sales of USD 72.15 Billion for fiscal year 2019, and employing approximately 300,000 associates
The elements of the disputed domain name <mycheaplowescoupon.com> are the words “my”, “cheap”, and “coupon” in combination with Complainant’s LOWE’S mark together with the gTLD extension <.com>.
Complainant’s LOWE’S mark is the dominant and only distinctive element of the disputed domain name. The other elements are descriptive and in context are, taken together, a reference to coupons to be used in Complainant’s business.
This Panel finds therefore that the disputed domain name is confusingly similar to the LOWE’S service mark in which Complainant has rights. Complainant has therefore satisfied the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name arguing that
· upon information and belief, Respondent is not commonly known by the disputed domain name or the name “Lowes”;
· Respondent does not operate a business or other organization under the LOWE’S mark or the disputed domain name;
· the public WhoIs record for the disputed domain name identifies Respondent as “Registration Private / Domains By Proxy, LLC” and not the disputed domain name or LOWE’S;
· there is no evidence that Respondent owns any trademark or service mark rights in the LOWE’S name;
· the screenshots of the website to which the disputed domain name resolves show that Respondent is offering highly suspect coupons for use in the businesses of both Complainant and its main competitor and such actions cannot be considered 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);
· the form of the coupons that Respondent purports to offer on the website is highly suspect as it is inconsistent with the form of the legitimate coupons in the manner shown on Respondent’s website.
It is well established that when, as in this case, a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in a disputed domain name, the burden of production shifts to the respondent to prove his or her rights. Respondent has failed to discharge the burden of production and therefore this Panel must find that Complainant has succeeded in the second element of the test in Policy….
It is noted that Complainant refers to the “Disclaimer” on Respondent’s website, which states: “MyCheapLowesCoupon.com is [sic] independent website and in no way [sic] affiliated with ©Lowe’s or @lowes.com.” Complainant has drawn the Panel’s attention to the fact that the “Disclaimer” in stated in black lettering against a dark blue background, as compared with the white lettering used for the rest of the footer.
Complainant contends that this is an attempt by Respondent to hide this disclaimer and perpetuate the passing off of its website as originating with Complainant and argues that it therefore fails to satisfy the third prong of the test for legitimate use of a trademark set out in the seminal case of Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001).
For completeness, it should be stated having considered this submission, the Panel is satisfied that the finding that Respondent has no rights or legitimate interest in the disputed domain name would stand even if Respondent had argued that it was a legitimate reseller of Complainant’s goods and that the disclaimer was sufficient to notify consumers that there was no relationship between Respondent’s website and Complainant, relying on OKI data principles addressed by Complainant.
The OKI Data principles require not only that there is an actual offering of goods and services at issue and that the site accurately discloses the registrant’s relationship with the trademark owner, but also that the site is used only to sell the complainant’s trademarked goods. In this case Respondent is purporting to market competitor’s coupons also.
This Panel finds that Complainant has therefore satisfied the second element of the test in Policy ¶ 4(a)(ii).
Given the substantial reputation of Complainant’s business carried out under the LOWE’S mark, in 2,200 stores in the United States and Canada, with net sales of USD 72.15 Billion for fiscal year 2019, and employing approximately 300,000 associates, it is most implausible that the registrant of the disputed domain name was unaware of Complainant, it business and its LOWE’S mark when the disputed domain name was chosen and registered.
Given the distinctive character of the LOWE’S mark, and that the only plausible meaning for the combination of the elements in the disputed domain name <my”, “cheap”, “lowes” and “coupon” is a reference to discounted coupons for use in Complainant’s business, this Panel finds that on the balance of probabilities the disputed domain name was chosen and registered in bad faith in order to take predatory advantage of Complainant, its mark and goodwill.
The subsequent use of the disputed domain name as the address of a website that specifically references Complainant’s business and the LOWE’S mark, supports the finding that the disputed domain name was registered in bad faith with Complainant’s mark in mind.
This Panel finds additionally that the above evidence on the record shows that the disputed domain name is being used in bad faith, as the address of a website that is using, and taking advantage of Complainant’s mark and goodwill in an endeavor to confuse Internet users, in order to attract and divert Internet traffic intended for Complainant, for commercial gain.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore also satisfied the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mycheaplowescoupon.com> domain name be TRANSFERRED from Respondent to Complainant
James Bridgeman SC
Panelist
Dated: February 25, 2021
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