LF, LLC v. Ryan Mundell
Claim Number: FA2308002056437
Complainant is LF, LLC (“Complainant”), represented by Jeanette Eriksson of FairWinds Partners LLC, District of Columbia, USA. Respondent is Ryan Mundell (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onelowes.com>, registered with Register.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on August 7, 2023; Forum received payment on August 7, 2023.
On August 9, 2023, Register.com, Inc. confirmed by e-mail to Forum that the <onelowes.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.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 August 10, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 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@onelowes.com. Also on August 10, 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 August 31, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in LOWE’S and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark LOWE’S in connection with its business operating retail home improvement supply stores;
2. Complainant is the proprietor of United States Patent and Trademark Office (“USPTO”) Reg. No. 1,168,799, registered September 8, 1981, for the mark LOWE’S;
3. Respondent registered the disputed domain name on July 7, 2023, using a privacy service to shield his identity;
4. the disputed domain name resolves to Complainant’s own website; and
5. there is no relationship between the parties and Complainant has not licensed or otherwise given permission to Respondent to use its trademark or to register any domain name incorporating the trademark.
DISCUSSION
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.
Identical and/or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its USPTO trademark registration for LOWE’S, the Panel is satisfied that it has trademark rights (see, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”).
For the purposes of later discussion, the Panel also finds that Complainant has common law trademark rights in LOWE’S. Absent a Response, the Panel must, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide the matter on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
In that regard, the Panel is entitled to accept all reasonable allegations set forth in the Complaint and the relevant claims are that the trademark LOWE’S has been in continuous use since 1946 and that, at the time of the Complaint, the business comprised 2,150 stores in the United States and in Canada, and in the 2021 fiscal year net sales were USD 96.3 billion. The representation that the trademark is famous “worldwide” is a bridge too far, but the Panel accepts that the trademark is well-known in the United States.
For the purposes of comparison of the disputed domain name with the trademark, the non-distinctive gTLD, “.com” can be disregarded (see, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the addition of the top level of the domain name does not affect the determination of whether the compared terms are identical or confusingly similar). The disputed domain name otherwise combines the trademark with the word, “one”, creating a composite expression that Internet users would still associate with Complainant.
The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy (see, for example, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018): (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016): (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”).
Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The name of the holder of the disputed domain name, as disclosed by the Registrar in consequence of these proceedings, Ryan Mundell, does not suggest that Respondent may be known by the disputed domain name. There is no evidence that Respondent has a trademark of its own which might explain creation of the domain name. Complainant states, and the Panel accepts, that the parties are unknown to each other outside these proceedings and that no permission has been given to Respondent to use the trademark. Finally, the evidence shows that the disputed domain name merely redirects Internets users to Complainant’s own website.
The Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name (see, for example, IP S.à r.l., DuoDecad IT Services Luxembourg S.à r.l., WebMindLicenses Korlátolt Felelösségü Társaság v. Peter Williams, D2017-0953 (WIPO July 14, 2017) finding that “the Respondent's use of the disputed domain name to redirect users to the Complainant’s website does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Forum Feb. 6, 2003).
Absent a Response the Panel finds that Complainant has established the second limb of the Policy.
Registration and Use in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith. Guidance on the application of paragraph 4(a)(iii) of the Policy is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Complainant appears to reply on paragraph 4(b)(iv), above, but gives no account of how Respondent might commercially gain. The alternative arguments are better, namely, that (as separate matters) the disputed domain name was registered in bad faith and used in bad faith.
The Panel finds no compelling evidence to support the application of any one of paragraph 4(b) scenarios. Instead, the Panel draws the reasonable inference that the domain name was registered in bad faith given the repute of the trademark and the lack of any obvious reason why another would need to use it as part of a domain name (see, for example, LF, LLC v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, et al., D2017-1622 (WIPO Nov. 9, 2017) finding “a strong inference that the Respondents are well aware of the Complainant and its [LOWE’S] trademark and were so aware when they first registered the disputed domain names. The length of time the Complainant has been using its trademark (at least 50 years before the first disputed domain name was registered) and the scale of that use (albeit largely in the United States, Canada and Mexico) reinforce that conclusion.”).
The residual issue of proof of use in bad faith might be approached in either of two ways, both leading to the one conclusion. Either, the redirection is bad faith use in and of itself (a conclusion supported by numerous earlier UDRP cases), or alternatively the redirection could be treated as no use at all, in which the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 has direct application. The panelist there paid regard to circumstances showing that (i) the complainant’s trademark was widely known, (ii) the respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name, (iii) the respondent has taken active steps to conceal its identity and had provided false contact details, and (iv) it was not possible to conceive of any plausible use of the domain name by the respondent that would not be illegitimate in the sense of infringing complainant’s rights.
The Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <onelowes.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: September 1, 2023
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