LF, LLC v. Thomas Russell
Claim Number: FA0510000572903
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 Thomas Russell (“Respondent”), 2580 Paul Harris Road, Dallas, GA 30157.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lowesdiscounts.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that he acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 5, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 7, 2005.
On October 6, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <lowesdiscounts.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 October 10, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 31, 2005 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@lowesdiscounts.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 4, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 <lowesdiscounts.com> domain name is confusingly similar to Complainant’s LOWE’S mark.
2. Respondent does not have any rights or legitimate interests in the <lowesdiscounts.com> domain name.
3. Respondent registered and used the <lowesdiscounts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LF LLC, is the holder of the LOWE’S mark for use in conjunction with the marketing and distribution of home improvement products and services. Complainant registered the LOWE’S mark (Reg. No. 1,168,799) with the U.S. Patent and Trademark Office (“USPTO”) on September 8, 1981.
Respondent, Thomas Russell, registered the disputed domain name on March 6, 2005. Respondent is using the domain name to provide a list of “sponsored links,” including “Hogan Building Supplies,” “Free $250 to Lowe’s,” “Get Free Coupons Online,” “Building Supplies,” “Give the Gift of Travel,” “Wholesale Door Sale,” and “Gift Certificate Template.”
On August 30, 2005, Complainant sent Respondent a cease-and-desist letter. Respondent responded with an offer to sell the disputed domain name registration for $50,000 and 500 shares of Complainant’s stock or, alternatively, 1500 shares of Complainant’s stock.
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.
The Panel finds that Complainant has established rights in
the LOWE’S mark by providing evidence of trademark registrations with the
USPTO. See Vivendi Universal Games
v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); Innomed Techs., Inc. v.
DRP Servs., FA 221171 (Nat. Arb. Forum
Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
Respondent’s <lowesdiscounts.com> domain name
is confusingly similar to Complainant’s LOWE’S mark. The Panel holds that adding “discounts” to Complainant’s mark and
removing the apostrophe does not significantly distinguish the domain name from
the mark. See Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business); Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb.
Forum Mar. 13, 2000) (finding that the respondent’s domain name
<marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT
mark); LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups,
FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an
apostrophe did not significantly distinguish the domain name from the mark); Gurney’s
Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19,
2003) (“Punctuation and spaces between words are not significant in determining
the similarity of a domain name and a mark because punctuation and spaces are
not reproducible in a domain name.”).
Complainant has established Policy ¶ 4(a)(i).
Respondent is not a licensee of Complainant. Respondent is using the resultant website to
offer links to services such as “Hogan Building Supplies,” “Free $250 to
Lowe’s,” “Get Free Coupons Online,” “Building Supplies,” “Give the Gift of
Travel,” “Wholesale Door Sale,” and “Gift Certificate Template.” The Panel finds that appropriating
Complainant’s mark to refer Internet users to third-party websites is 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). See Nike, Inc. v. Dias, FA 135016
(Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods
or services where the respondent used the complainant’s mark without
authorization to attract Internet users to its website, which offered both the
complainant’s products and those of the complainant’s competitors); Pitney Bowes Inc. v. Ostanik, D2000-1611
(WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the
<pitneybowe.com> domain name where the respondent purports to resell
original Pitney Bowes equipment on its website, as well as goods of other
competitors of the complainant).
There is nothing in the record, including Respondent’s WHOIS
registration information, which indicates that Respondent is commonly known by
the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark).
Complainant has established Policy ¶ 4(a)(ii).
Respondent has offered to sell the disputed domain name
registration for $50,000 and 500 shares of Complainant’s stock or,
alternatively, 1500 shares of Complainant’s stock. At the time of the offers, Complainant’s stock had a value of
$65.39 a share. The total cash value of
Respondent’s offers are $82,695 and $98,085, respectively. The Panel finds that Complainant has
evidenced bad faith pursuant to Policy ¶ 4(b)(i) by offering the disputed
domain for sale for an amount in excess of out-of-pocket costs. See Dollar Rent A Car Sys., Inc. v. Jongho, FA 95391 (Nat. Arb. Forum
Sept. 11, 2000) (finding that the respondent demonstrated bad faith by
registering the domain name with the intent to transfer it to the complainant
for $3,000, an amount in excess of its out of pocket costs); S. Co. v. Doms, D2000-0184 (WIPO May 8,
2000) (finding that the respondent violated Policy ¶ 4(b)(i), by indicating to
the complainant that he “would consider a cash offer” for the sale of the
disputed domain name registration while inviting the complainant to “submit an
opening cash or stock offer”).
Respondent is also appropriating Complainant’s LOWE’S mark
to refer traffic to third-party links.
The Panel infers that Respondent receives click-through fees for each
referral from these “sponsored links.”
The Panel holds that using another’s mark to refer its customers to
third-party sites to generate commercial gain is evidence of bad faith pursuant
to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”); AltaVista Co. v. Krotov, D2000-1091
(WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the
respondent’s domain name resolved to a website that offered links to
third-party websites that offered services similar to the complainant’s
services and merely took advantage of Internet user mistakes).
Complainant has established 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 <lowesdiscounts.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: November 16, 2005
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