Complainant is La-Z-Boy Chair Company of Michigan, United States of America, represented by FairWinds Partners, LLC, United States of America.
Respondent is PrivacyP of Queensland, Australia / Joey Kenyatta of Jakarta, Indonesia / 2. The Domain Name and Registrar
The disputed domain name is registered with PT Ardh Global Indonesia (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2012. On August 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 11, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amend Complaint on September 11, 2012.
The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 4, 2012.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on October 17, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant La-Z-Boy Chair was founded in Michigan in the year 1927 and is a manufacturer and retailer of reclining furniture. Complainant is traded on the New York Stock Exchange under the ticker symbol LZB. In its recent fiscal year, Complainant reported revenues of US $1.2 Billion. The trademark LA-Z-BOY is registered in the United States since the year 1954 and in Indonesia since the year 2004.
The disputed domain name was registered on July 6, 2012. 5. Parties’ Contentions A. Complainant
Complainant states that the disputed domain name is confusingly similar to Complainant’s LA-Z-BOY trademarks. Searchers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant’s trademarks and Respondent by Respondent’s use of the disputed domain name.
Complainant argues Respondent initially attracts searchers to its website by using an identical copy of the Complainant’s trademarks followed by the geographically descriptive term “Indonesia”, thereby making visitors to its website think that they are being linked to one of Complainant’s legitimate sites.
According to the Complaint, Respondent’s actions are not a bona fide offering of goods or services under Policy paragraph 4(c)(i). Complainant states that through the use of a classic pay-per-click website, Respondent’s domain name diverts Complainant’s customers and potential customers to Respondent’s pay-per click website and then to other websites which are not associated with Complainant. Panels have found that leading consumers who are searching for a particular business, to a site where the same or similar services provided by others are listed, is not a bona fide use.
In addition, Complainant adds that Respondent is not commonly known by the disputed domain name or the name “LA-Z-BOY”.
Finally, Complainant states that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Respondent intentionally used the LA-Z-BOY trademarks without consent from Complainant. Respondent was put on constructive notice of Complainant’s rights in its trademark through Complainant’s extensive prior use of the trademarks as well as its various trademark registrations, all of which predate the creation date of the disputed domain name.
According to Complainant, Respondent is obtaining commercial gain from its use of the website at the disputed domain domain. The content of the disputed domain name is a directory or “pay-per-click” website providing a listing of hyperlinks, some of which lead to Complainant’s websites and some to the websites of Complainant’s competitors prior to the filing of the Complaint.
Complainant request as a remedy the transfer of the domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. Complainant must satisfy that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of such domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant has established trademark rights in LA-Z-BOY as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.
The Panel is also prepared to find that the disputed domain name is confusingly similar to Complainant’s trademark LA-Z-BOY. The name “lazboy” is clearly the dominant element of the domain name and is nearly identical to the trademark LA-Z-BOY, except for the dashes. The Panel has had little difficulty in finding that the disputed domain name is confusingly similar to the trademark LA-Z-BOY.
As stated, the dominant part of the disputed domain name is “la-z-boy”, to which the geographical identifier “indonesia” and the “.com” suffix has been added. Under paragraph 4(a)(i) of the Policy, a domain name is confusingly similar to a mark where the domain name fully incorporates the mark and simply adds a generic or geographically descriptive term that does not negate the confusing similarity. See LEGO Juris A/S v. Pawel Tykwinski / WP-3,WIPO Case No. D2012-1322 ( domain name confusingly similar to complainant’s mark).
Therefore, the Panel finds that Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(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 trademark or service mark at issue.
There is no evidence of the existence of any of those rights or legitimate interests. Complainant has not authorized, licensed, or permitted Respondent to register or use the disputed domain name or to use the trademarks. Complainant has prior rights in the trademarks which precede Respondent's registration of the domain name by several decades. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1).
Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
Respondent’s use of the disputed domain name for sponsored links to paid advertising is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See, e.g., Swarovski Aktiengesellschaft v. Transure Enterprise Ltd.,WIPO Case No. D2009-1638.
Therefore, the Panel finds that Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive examples of circumstances which, if proven, shall be evidence of the registration and use of a domain name in bad faith, including, in subparagraph 4(b)(iv):
“by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location.”
The disputed domain name was registered on July 6, 2012 by Respondent. Complainant has submitted evidence that on August 23, 2012, the website at the disputed domain name website was being used by Respondent for commercial gain through sponsored links to third party websites (according to a screenshot available in exhibit F of the Complaint). Respondent has not denied these statements. This use of the disputed domain name incorporating Complainant’s LA-Z-BOY trademark for advertising revenues from sponsored links constitutes bad faith use under paragraph 4(b)(iv) of the Policy, and the bad faith use shown is close enough in time to the registration of the disputed domain name to support an inference that the registration was made in bad faith with the intent to use the disputed domain name for this impermissible purpose. See Barclays Bank PLC v. Rico Martinez,WIPO Case No. D2010-1987; Swarovski Aktiengesellschaft v. Transure Enterprise Ltd.,WIPO Case No. D2009-1638; Asian World of Martial Arts Inc. v. Texas International Property Associates;WIPO Case No. D2007-1415; LEGO Juris A/S v. Pawel Tykwinski / WP-3, supra.
The Panel finds that Complainant has established Respondent’s registration and use of the disputed domain name in bad faith, and that Complainant has therefore satisfied the third element of its claim, under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Pablo A. Palazzi
Sole Panelist
Dated: October 31, 2012
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