LF, LLC v. Jianhua Wu
Claim Number: FA2303002038061
Complainant is LF, LLC (“Complainant”), represented by Jeanette Eriksson of FairWinds Partners LLC, District of Columbia. Respondent is Jianhua Wu (“Respondent”), CN.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <projectsourceus.com>, registered with Name.com, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to Forum electronically on March 30, 2023; Forum received payment on March 30, 2023.
On March 30, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <projectsourceus.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 March 31, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 20, 2023 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@projectsourceus.com. Also on March 31, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On April 27, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 PROJECT SOURCE trademark established by its ownership of the portfolio of trademark registrations described below and long and extensive use of the mark in connection with the advertising, marketing and sale of goods including bathroom and kitchen products exclusively at Lowe’s retail home improvement supply stores.
Complainant submits that it serves customers through more than 2200 stores in the United States and Canada, had net sales of over USD $96 Billion for fiscal year 2021, and employs approximately 300,000 associates and significant online sales on its website at <www.lowes.com>.
Complainant alleges that the disputed domain name is identical or confusingly similar to Complainant’s registered PROJECT SOURCE mark, arguing that the disputed domain name consists of Complainant’s PROJECT SOURCE mark in its entirety, with the mere addition of the geographic term “US” and the generic Top-Level Domain (“gTLD”) extension <.com>.
It is submitted that decisions of panels established under the Policy, too numerous to mention, have held that the addition of geographic or other words to a trademark, whether as part of a second or top level domain, creates a confusingly similar domain name. See, e.g., CVS Pharmacy, Inc. v. Taku Hans Etengeneng, WIPO Case No. D2023-0124 (“The use of the trademarks with the country abbreviation “usa” in the disputed domain name [cvspharmacyUSA.com] does not prevent finding of confusing similarity with the trademarks. Given the above, the Panel concludes that the disputed domain name is confusingly similar to the registered trademarks of the Complainant.”).
Additionally, Complainant contends that the addition of the gTLD extension <.com> does nothing to alleviate confusion between the PROJECT SOURCE mark and the disputed domain name. See Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (“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 next alleges that Respondent has no rights or legitimate interest in the disputed domain name arguing that there is no evidence that Respondent is commonly known by the disputed domain name or the name “Project Source”, and the public Whois record for the disputed domain name identifies Respondent as Jianhua Wu. See, Montres Breguet S.A. v. Domain Administrator / PortMedia, FA 1417906 (Forum Feb. 7, 2012) (“Based upon the WHOIS information and the lack of contradicting evidence on record, the Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii)”). As such, the Panel may find that Respondent is not commonly known by the disputed domain name.
Complainant adds that there is no evidence that Respondent operates a legitimate business or other organization under the PROJECT SOURCE mark or the disputed domain name, or that it owns any trademark or service mark rights in the Project Source name.
Next, Complainant asserts that it has not licensed, authorized, or permitted Respondent to register the domain name incorporating Complainant’s PROJECT SOURCE trademark. See Guerlain S.A. v. Peikang WIPO Case No. D2000-0055 (WIPO Mar. 21, 2000) (“Therefore, in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.”)
Referring to a screen capture of the website to which the disputed domain name resolves which has been exhibited in an annex to the Complaint, Complainant submits it illustrates that the disputed domain name resolves to an online shop claiming to offer Complainant’s PROJECT SOURCE products.
Complainant alleges that Respondent’s website presumably intends to trick users into placing orders and entering their credit card and other personal information as part of a phishing attempt or perhaps for the sale of counterfeit or non-existent merchandise. Complainant argues that it is especially telling that Respondent uses Complainant’s own product photos on its website, as shown in exhibits annexed to the Complaint.
Complainant argues furthermore, that the word “Project Source” in combination with Complainants products and other products directly competing with those of the Complainant, clearly shows that the Respondent uses the disputed domain name to confuse and misleadingly divert consumers, or to tarnish the PROJECT SOURCE mark through its phishing or counterfeiting activities.
Should Respondent claim to be a legitimate reseller, this must be rejected as its website offers the sale of products that Complainant does not sell under the PROJECT SOURCE mark and there is no disclaimer or other notice of Respondent’s lack of affiliation with Complainant. Its use thus fails the well-accepted test for resellers. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
Complainant refers to the decision in LF, LLC v. Fenglan Liu, FA 1985157 (Forum Mar. 22, 2022), which it submits is a nearly identical recent case involving the domain name <KobaltStore.com>, where the panel stated that “[t]he disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a website that attempts to pass off as Complainant, displaying Complainant's mark and logo and offering what likely are counterfeit, unauthorized, or nonexistent versions of Complainant's goods. Such use does not give rise to rights or legitimate interests under the Policy.”
Next, Complainant contends that the disputed domain name and the website to which the disputed domain name resolves, use Complainant’s mark and product images to confuse internet users, as to the source of the products supposedly offered on Respondent’s website, which is not a noncommercial or legitimate use of the disputed domain name. See La-Z-Boy Chair Company v. ReachLocal Hostmaster, FA 1935231 (Forum Apr. 1, 2021) (“Complainant provides evidence of Respondent’s checkout and shipping pages, which allow Internet users who believe they are purchasing legitimate products from Complainant to put in their address, credit card information, and other personal information, which then goes to Respondent. The Panel agrees that Respondent is using the disputed domain name to operate a phishing scheme and finds that Respondent has no rights or legitimate interests in respect of the domain name.”)
Additionally, it is contended that the inclusion of the highly relevant geographic indicator “US” in the disputed domain name further reveals Respondents knowledge of, and intention to target, Complainant’s mark and adds to the risk of implied affiliation with the Complainant. See Le Sportsac, Inc. v. lianjie4 li, WIPO Case No. D2022-5003 (“[T]he Panel finds that the Domain Name [lesportsac-us.com], incorporating the Complainant’s LESPORTSAC trademark in its entirety with the term “-us”, carries a risk of implied affiliation with the Complainant.” )
Complainant next alleges that the disputed domain name was registered and is being used in bad faith, arguing that Respondent was put on actual notice of Complainant’s rights in the PROJECT SOURCE mark through Complainant’s extensive use of the mark which long predates the creation date of the disputed domain name. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service), FA 1612750 (Forum May 13, 2015) (“Complainant further argues that the advertisements for pumps and fluid technology as well as the incorporation of numerous photographs connected with Complainant, which depict the same types of products offered by Complainant, indicate that Respondent had actual knowledge of Complainant and its rights. The Panel infers due to the Respondent’s manner of use of the disputed domain that Respondent had actual knowledge of Complainant and its rights, and thus finds that Respondent registered the <xylemchina.com> domain name in bad faith according to Policy ¶ 4(a)(iii).” )
Arguing that the disputed domain name was registered in bad faith, Complainant submits that Respondent’s website to which the disputed domain name resolves, claims to offer Complainant’s products for sale, and so disrupts Complainant’s business and capitalizes on confusion with the PRODUCT SOURCE mark. In the recent and nearly identical case LF, LLC v. Jianhua Cao / Zhiqiang Zhu / Yuying Li / Hongmei Wang / Xiuying Xia, FA 2211002019506 (Forum Dec. 15, 2022) the Panel confirmed that: “Indeed, as already noted, the resolving websites offer for sale unauthorized or counterfeit versions of Complainant’s products. This is indicative of bad faith registration and use per Policy ¶ 4(b)(iv)”.
Complainant further refers to the screen capture of the website to which the disputed domain name resolve, which illustrates that the website displays images of PROJECT SOURCE branded products, and invites Internet users to place orders for products, enter their personal information, and input their payment information. Complainant submits that this clearly shows that Respondent is seeking to harvest all of this information, likely with the goal of extracting funds from users and engaging in phishing, identify theft, and other cybercrimes.
Complainant adds that that Respondent is using also copyright protected graphic elements owned by Complainant (e.g., photos from Complainant’s www.Lowes.com website) on the website to which the disputed domain name resolves which only adds to the conclusion that Respondent is acting in bad faith. See The Trustees of Columbia University in the City of New York v. Kostiantyn Golubtsov / lama.Media, FA 1925070 (Forum Jan. 13, 2021) (“Respondent’s unauthorized reproduction of Complainant’s copyrighted materials is further evidence of Respondent’s bad faith use and registration of the disputed domain name.”)
Complainant further states that it is also worth noting that Respondent’s website lists a postal address in San Antonio, Texas whereas the Whois record for the domain name indicates and address in China for Respondent, which it submits is a further indication that the website is fraudulent.
Complainant also contends that therefore, by using the disputed domain name in this manner, Respondent is intentionally attempting to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
Finally, Complainant submits that its representative made good-faith efforts to communicate with the Respondent prior to the filing of this Complaint using the email address provided in the public Whois record, and despite several attempts at communicating with the Respondent, no response has been received and the website on the disputed domain name remains active.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant carries on a retail business with home improvement supply stores and is the owner of the PROJECT SOURCE trademark for which it holds an international portfolio of registered trademarks including the following:
· United States registered trademark PROJECT SOURCE, registration number 4,541,435 registered on the Principal Register on June 3, 2013 for goods in international classes 8, 9 and 11;
· United States registered trademark PROJECT SOURCE, registration number 5,034,115 registered on the Principal Register on September 6, 2018, for goods in international classes 9, 11. 17 and 20;
· United States registered trademark PROJECT SOURCE, registration number 5,034,117 registered on the Principal Register on September 6, 2016. for goods in international classes 6,19,20,21,24 and 27;
· PRC registered trademark, PROJECT SOURCE, registration number 12917054, registered on December 21, 2014 for goods in international class 11;
· PRC registered trademark, PROJECT SOURCE, registration number 13020118, registered on May 7, 2015 for goods in international class 11;
· PRC registered trademark, PROJECT SOURCE, registration number 13020123, registered on December 28, 2014 for goods in international class 11;
· Canadian registered trademark PROJECT SOURCE, registration number TMA903461, registered on May 12, 2015 for goods in classes 6, 8, 9 and 11.
· Australian registered trademark PROJECT SOURCE, registration number 1567052, registered on July 5, 2023, for goods in classes 2,6,8,9,11,12,16,17,19,20,21,24 and 27.
Complainant has an established Internet presence and maintains a website at <www.lowes.com> on which it markets its PROJECT SOURCE branded products.
The disputed domain name was registered on May 18, 2022 and resolves to a website on which Respondent purports to offer counterfeit goods.
There is no information available about Respondent, except for that provided in the Complaint, the Registrar’s WhoIs and information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain name for the purposes 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’s Rights
Complainant has provided convincing, uncontested evidence that it has rights in the PROJECT SOURCE mark, established by its ownership of the extensive international portfolio of trademark registrations described above and extensive use of the mark on its products including on its website at <www.lowes.com>.
Confusing Similarity
The disputed domain name consists of Complainant’s PROJECT SOURCE mark in its entirety in combination with the letters “us” and the gTLD <.com>.
Complainant’s PROJECT SOURCE mark is the initial, dominant and only distinctive element in the disputed domain name. <projectsourceus.com>. The letters “us” add no distinguishing character to the disputed domain name because in combination with Complainant’s distinctive trademark they are likely to be considered an acronym for the United States and therefore their presence in the disputed domain name do not prevent a finding of confusing similarity with the PROJECT SOURCE mark.
Similarly, the gTLD extension <.com> does not prevent a finding of confusing similarity as the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration,
This Panel finds therefore that the disputed domain name is confusingly similar to the PROJECT SOURCE mark, and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· there is no evidence that Respondent is commonly known by the disputed domain name or the name “Project Source”;
· the Public Whois record for the disputed domain name identifies Respondent as Jianhua Wu;
· there is no evidence that that Respondent operates a legitimate business or other organization under the PROJECT SOURCE mark or the disputed domain name;
· neither is there any evidence that Respondent owns any trademark or service mark rights in the Project Source name;
· Complainant has not licensed, authorized, or permitted Respondent to register the disputed domain name incorporating Complainant’s PROJECT SOURCE trademark;
· the screen capture of the website to which the disputed domain name resolves which has been exhibited in an annex to the Complaint, illustrates that the disputed domain name resolves to an online shop claiming to offer Complainant’s PROJECT SOURCE products;
· it may be assumed that Respondent intends to use the website intends to trick users into placing orders and entering their credit card and other personal information as part of a phishing attempt or perhaps for the sale of counterfeit or non-existent merchandise;
· it is especially telling that Respondent uses Complainant’s own product photographs on its website, as shown in exhibits annexed to the Complaint;
· furthermore, use of the word “Project Source” in combination with Complainants products and other products directly competing with those of Complainant shows that the Respondent uses the disputed domain name to confuse and misleadingly divert consumers, or to tarnish the PROJECT SOURCE mark through its phishing or counterfeiting activities;
· on the website to which the disputed domain name resolves, Respondent is offering for sale under the PROJECT SOURCE mark, products which Complainant does not sell;
· there is no disclaimer or other notice of Respondent’s lack of affiliation with Complainant on the website to which the disputed domain name resolves;
· Respondent is therefore not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain;
· the inclusion of the highly relevant geographic indicator “US” in the disputed domain name further reveals respondents knowledge of, and intention to target, Complainant’s mark and adds to the risk of implied affiliation with the Complainant.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The PROJECT SOURCE mark is distinctive and the uncontested evidence shows that Complainant has established an extensive reputation for the mark by international use including on the Internet.
It is improbable that the disputed domain name, which is confusingly similar to Complainant’s mark was chosen and registered for any reason other than to create an impression that it has some connection with Respondent and its products branded with the PROJECT SOURCE mark.
On the balance of probabilities the disputed domain name was registered in bad faith with Complainant’s mark in mind with the intention of taking predatory advantage of Complainant’s reputation and goodwill.
In making this finding the Panel is fortified in the knowledge that Respondent is using the disputed domain name as the address of a website on which counterfeit products are being sold.
The uncontested evidence of Complainant is that the products which are being offered for sale bearing the PROJECT SOURCE mark on the website to which the disputed domain name resolves are in fact counterfeit, because they are not in Complainant’s product range.
Additionally the uncontested evidence adduces proves on the balance of probabilities that Respondent is using the disputed domain name within the address of a website to which it resolves in an intentional attempt to attract, for commercial gain, Internet searchers to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement of Respondent’s website and products on the website or location.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 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 <projectsourceus.com> domain name be TRANSFERRED from Respondent to Complainant.
______________________________________
James Bridgeman SC
Panelist
Dated: April 27, 2023
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