The Complainant is LF, LLC of Mooresville, North Carolina, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondents are Domain Admin, Whois Privacy Corp. of Nassau, Bahamas / Maddisyn Fernandes, Fernandes Privacy Holdings of La Paz, Bolivia; Gustavo Winchester of Belo Horizonte, Brazil; Jasper Developments Pty Ltd of Melbourne, Australia; Pearl Admin, Pearl Advertising of Georgetown, Cayman Islands; domain admin, Global Access of Douglas, Isle of Man; Domain Admin, Whois protection, this company does not own this domain name s.r.o. of Praha, Czech Republic / Hulmiho Ukolen, Poste restante of Helsinki, Finland; Namescope Limited of Charlestown, Saint Kitts and Nevis, A Domain Privacy of Beaumaris, Australia / Shu Lin of Dalian, China; and domain admin, Xedoc Holding SA of Luxembourg, represented by L, Spain. 2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , , , , , and are registered with Internet Domain Service BS Corp.
The disputed domain names , , , , and are registered with Uniregistrar Corp.
The disputed domain names , , , , , , , and are registered with A, Inc.
The disputed domain name is registered with Tucows Inc.
The disputed domain name is registered with TLD Registrar Solutions Ltd.
The disputed domain names , , , , , and are registered with F.
The disputed domain names and are registered with Gransy, s.r.o. d/b/a (the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2017. On August 21, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On August 21, 2017, August 22, 2017, August 24, 2017, and September 4, 2017, the Registrars transmitted by email to the Center their verification responses:
(a) confirming that they were the registrars of the respective disputed domain names;
(b) the language of the applicable registration agreements was English;
(c) the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to each registration;
(d) disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on September 4, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 9, 2017.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, 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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on September 12, 2017. In accordance with the Rules, paragraph 5, the due date for a Response was October 2, 2017. On September 13, 2017, the Center received an email communication from the legal representative of Respondent Xedoc Holding SA. On October 6, 2017, the Center informed the Parties that the panel appointment process would commence. On October 6, 2017, the Center received a further email communication from the legal representative of Respondent Xedoc Holding SA. No other Response was received.
The Complaint has been sent, however, to each Respondent at the physical and electronic coordinates confirmed by the relevant Registrar as correct in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on each Respondent.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 26, 2017. 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.
On October 27, 2017, the Center received a further email communication from the Respondent Xedoc Holding SA elaborating on its objections to the Complaint. On October 28, 2017, the Complainant forwarded an email responding to the contentions in Xedoc Holding SA’s email of October 27, 2017. 4. Factual Background
The Complainant operates the “Lowe’s” home improvement and hardware retail outlets in the United States. According to the Complaint, the “Lowe’s” business was founded in 1946. Since then, it has expanded to operate more than 2,355 stores in the United States, Canada and Mexico. According to the Complaint, the Complainant’s stores have more than 17 million customers each week. In 2016, the Complainant was ranked 47 in the “Fortune 500” list, having made that list for the last 22 years.
Amongst other things, the Complainant owns the United States Registered Trademarks Numbers 1168799, 1922425, 3513191, 3034344, 3097334 and 4001201. For present purposes, it is sufficient to notice the details of the following two registrations:
(a) Number 1168799 for LOWE’S which was filed on March 10, 1980 and registered on September 8, 1981 in respect of Retail Outlet Services Specializing in a Variety of Building Materials, Plumbing Supplies, Roofing Materials, Home Furnishings and Items Used in Home Improvement in International Class 42; and
(b) Number 1922425 for LOWE’S which was filed on September 23, 1994 and registered on September 26, 1995 in respect of installation, repair and renovation services for appliances, home furnishings and home improvement items; rental of construction equipment and tools; paint mixing; and computer paint mixing services in International Class 37.
The Complainant claims that it has been using the trademark LOWE’S continuously since 1946 and, by reason of the length and extent of that use, its trademark is well-known in the United States as a leading home improvement retail outlet.
There are 37 disputed domain names registered in the names of 10 Respondents. The Panel will consider whether it is appropriate to allow the Complaint to be consolidated against each Respondent in section 5 below. For present purposes, it is sufficient to note that the disputed domain names have been registered on many different dates ranging from as early as September 12, 2000 to August 24, 2016. The nature of the websites to which they have resolved is discussed further below too. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The communications received from the representative for Xedoc Holding SA object to the admissibility of the Complaint on two grounds. First, this Respondent contends that this dispute has already been the subject of a complaint adjudicated by another dispute resolution provider, which dismissed that complaint. Accordingly, in Xedoc Holding SA’s view the Complaint should be dismissed as an impermissible refiling. Secondly, this Respondent objects to the consolidation of the Complaint. A. The Complaint is not an impermissible refiling
It is common ground between the parties that the Complainant has previously filed a complaint on June 30, 2017 with the National Arbitration Forum (NAF): LF, LLC v. Domain Admin / Whois Privacy Corp., et al., NAF Claim No. FA1706001738011.
In its email on October 28, 2017 responding to Xedoc Holding SA’s email of October 27, 2017, the Complainant stated that the earlier complaint had been withdrawn as one or some respondents wished to surrender the domain names they held in dispute.
According to the NAF’s online database and contrary to the Respondent Xedoc Holding SA’s contentions, the earlier complaint was not dismissed but withdrawn. In addition, while the Panel notes that some twenty domain names are the subject of both complaints, four domain names the subject of the prior complaint are not the subject of the present Complaint (thus supporting the Complainant’s claim as to an earlier settlement). Further, 17 disputed domain names which are the subject of this Complaint were not involved in the prior complaint.
The Panel notes that the general rule that refiled complaints are not accepted is not an absolute prohibition. Moreover, generally, a “refiled complaint” is one concerning identical domain names and identical parties where the earlier Panel has decided the case on the merits. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.18. As the prior complaint was withdrawn rather than dismissed and the two disputes concern many different (as well as overlapping) domain names, the Panel rejects this objection. B. Consolidation
The Complainant has requested consolidation as there are possibly ten different registrants of the disputed domain names.
Paragraph 3(c) of the Rules expressly permits a complaint to relate to more than one domain name where all the domain names are registered by the same domain name holder. Notwithstanding this express provision, panels have frequently held that the Panel’s powers under paragraph 10(e) of the Rules may permit consolidation of multiple domain name disputes, subject to satisfaction of the other requirements of Policy and Rules. In particular, paragraph 10(b) of the Rules requires the Panel to ensure that all parties are treated equally, and each is given a fair opportunity to present his, her or its case.
In accordance with those requirements, panels have typically allowed joinder against multiple respondents who have registered different domain names where the domain names in question, or the websites to which they resolve, appear to be under common control, and consolidation would be fair and equitable to all parties. The onus of establishing that these requirements have been met falls on the party seeking consolidation. WIPO Overview 3.0, section 4.11.2.
In assessing whether or not several disputed domain names are under common control of the same person or network of persons, the panelist in Guccio Gucci S.p.A v. Andrea Hubner, Beijing Harmony Software Co.Ltd., jiang wang, brian miller, Pornsawang Chotima, Domain Whois Protection Service, Whois Agent, Jie Zhou, Jayzhou, Hi to everyday in Zhengzhou Medical Devices Co., Ltd., tian jin hua jin you xian gong si, lihong jay, hu, lizhu hu, da tou, Tamia Liu, Wang Jie, Yijiwangluo,WIPO Case No. D2012-2212 took into account the following matters:
“(1) The use of common registration information such as administrative contact details, technical contact details, postal addresses, email addresses, IP addresses, and telephone and fax numbers; (2) The use of the same or similar names in the registration information; (3) Resolving disputed domain names to the same or similar Websites; (4) Using the same domain name servers; (5) Using the same registrars; and (6) Close similarity between the disputed domain names, each of which incorporates the Trade Mark in its entirety in conjunction with non-distinctive, generic or geographical terms.”
See also Yahoo! Inc. v. Mahesh Rohatgi / Prakhar Rastogi, B / Prakhar Rastogi, Best Web Experts / Privacy Protection Service INC d/b/a PrivacyP / Prashant Mishra, Vipra Busines Solution / Rina Rohatgi / Wemo Tech Support / Charu Rohatgi / Alina Jain / Raju Hirani, Alfa Infosystem / Brijesh Pandey, IBS Infosystem / Registration Private, Domains By Proxy, LLC / Amit Singh / Satya Prakash / Rajveer Singh Chawla / Pooja Pandey, Innovative Business Solutions,WIPO Case No. D2015-2323 and Yahoo! Inc. v. Aman Anand, Ravi Singh, Sunil Singh, Whois Privacy Corp., Domains By Proxy, LLC,WIPO Case No. D2016-0461.
In the present case, the Respondent Xedoc Holding SA correctly points out that the several Respondents have different names, have different contact details, are located in different countries and there are differences in some Registrars and the name servers used. It also says that a review of the history of the domain names reveals even more inconsistencies, but does not otherwise elaborate on them. According to the Respondent Xedoc Holding SA, the Panel should issue a procedural order requiring the Complainant to substantiate its claim for consolidation properly or choose which Respondent the Complaint should be limited to proceed against.
If the Complaint were limited to the differences identified by the Respondent Xedoc Holding SA, that may be an appropriate course. However, the Complaint carries things much further than the differences in registrant name, contact details, registrars and name servers referred to by the Respondent. The objection by Xedoc Holding SA does not deal with the substance of the grounds for consolidation raised by the Complainant.
For ease of reference, the Panel adopts the numbering of the disputed domain names proposed by the Complainant:
1.
2.
3.
4.
5.
6.
7.
8.
9.
10.
11.
12.
13.
14.
15.
16.
17.
18.
19.
20.
21.
22.
23.
24.
25.
26.
27.
28.
29.
30.
31.
32.
33.
34.
35.
36.
37.
Disputed domain names 1-5 and 7-15 are registered in the name of the Respondent Maddisyn Fernandes, Fernandes Privacy Holdings (First Respondent). Disputed domain name 6 is registered in the name of a further privacy service, but has the same Registrar, name server, ASN and IP address 1 as at least one other disputed domain name held by the First Respondent. Disputed domain names 16 and 17 are registered in the name of Namescope Limited (Second Respondent). Disputed domain name 18 is registered in the name of Xedoc Holding SA (Third Respondent). Disputed domain names 19-21 are registered in the name of domain admin/Global Access (Fourth Respondent). Disputed domain names 22 and 23 are registered in the name of Jasper Developments Pty Ltd (Fifth Respondent). Disputed domain names 24 to 31 are registered in the name of Shu Lin (Sixth Respondent). Disputed domain names 32 to 34 are registered in the name of Gustavo Winchester (Seventh Respondent). Disputed domain names 35 and 36 are registered in the name of Hulmiho Ukolen (Eighth Respondent) and disputed domain name 37 is registered in the name of Pearl admin/Pearl Advertising (Ninth Respondent).
By reference to a table included in Annex G to the Complaint, the Complainant identifies a range of commonalities between the various disputed domain names:
- First, they all incorporate or are based on the Complainant’s trademark;
- Disputed domain name Nos. 1-5 and 7-15 are registered to the same registrant, Maddisyn Fernandes / Fernandes Privacy Holdings;
- Disputed domain name No. 6 has the same registrar, Internet Domain Service BS Corp, name server; ASN, 2 and IP address 3 in common with one or more of disputed domain names Nos 1-5 and 7-15.
- Disputed domain names Nos. 2, 11-17, and 32-34 share the same ASN as disputed domain name No. 2 (First, Second, and Seventh Respondents) and Nos. 11-17 and 33-35 share the same name server;
- Disputed domain names Nos. 11, 13, 16, 17, and 33 (First, Second, and Eighth Respondents) have the same IP address;
- Disputed domain names Nos. 14, 15, 32, and 34 (First and Eighth Respondent) have the same IP address;
- Disputed domain names Nos. 16-21 (Second, Third, and Fourth Respondents) use the same registrar, F Pty Ltd.;
- Disputed domain names Nos. 11-17 (First and Second Respondents) have the same name server, ASN and, in the case of disputed domain names Nos 11, 13, 16 and 17, a common IP address;
- Disputed domain names Nos. 21-31 (Fourth, Fifth, and Sixth Respondents) share the same name server, ASN and nearly identical IP addresses, i.e., they share the same first three octets;
- Disputed domain names Nos. 22-23 and 32-34 use the same registrar, Uniregistrar Corp;
- Disputed domain names Nos. 35-37 (Eighth and Ninth Respondents) share the same name server, and nearly identical IP addresses, i.e., they share the same first three octets, the final octet being, respectively, “.24”, “.25” and “.23”;
- Disputed domain names Nos. 18-20, namely, , and , (Third and Fourth Respondents) all resolve to parked webpages prominently displaying disputed domain name No. 21, ;
- Disputed domain names Nos. 18-20 (Third and Fourth Respondents) also have the same name server, ASN and IP address.
In addition to these technical matters, the Complainant contends that all the disputed domain names are being used to present a rotating series of webpages as summarised more fully in Annex I to the Complaint.
All of the disputed domain names have resolved to “” which distributes what the Complainant contends is browser hijacking software known as “ClickCheckVirus”. According to the Complainant, this software collects without permission personally identifying information from the browser’s computer and redirects the user’s browser to competing websites or pay-per-click (“PPC”) websites.
In addition, almost all of the disputed domain names, including at least one (and usually more) in each group registered by any particular Respondent, have resolved to parked PPC websites promoting goods and services competitive to the Complainant’s offering. At times, almost all have also resolved directly to websites of the Complainant’s competitors. Disputed domain names registered by the First, Third, Fourth, Fifth, and Sixth Respondents have also resolved at times to phishing websites purporting to be a survey undertaken by the Complainant. Disputed domain names registered by each of the First to Eighth Respondents have at times resolved to the Complainant’s own websites. Disputed domain names registered by the First, Second, Third, Seventh, and Ninth Respondents have resolved to general search sites. At times, disputed domain names registered to the First, Third, Fourth, Seventh, Eighth, and Ninth Respondents have been inactive.
These matters are essentially circumstantial. Taken together, however, their cumulative effect raises a prima facie case that the disputed domain names are being exploited by the same person or network of persons. The Respondents have not collectively or individually sought to rebut that, other than pointing to differences identified by the Respondent Xedoc Holding SA. They have not sought to address the substance of the Complainant’s allegations.
There does not seem to be any inherent unfairness in allowing consolidation. Indeed, the Respondents have not advanced any prejudice that any or all of them would suffer if the proceeding were consolidated. On the other hand, the nature of the Complainant’s case is such that, unwieldy though it is, it needs to be presented as one whole. Moreover, if the Complainant were required to bring separate complaints against individual respondents, there would be massive duplication of work and, potentially, the risk of inconsistent decisions. In the absence of any compelling prejudice to any one or more of the Respondents and based on the prima facie case for consolidation, therefore, the Panel considers it is appropriate to permit consolidation.
In the absence of a Response other than that from Xedoc Holding SA, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable. C. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of at least the registered trademarks referred to in section 4 above.
The second stage of this inquiry simply requires a visual and/or aural comparison of each disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system: WIPO Overview 3.0, section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
For present purposes, the disputed domain names can be considered to fall into two broad groupings. The first group consists of domain names which incorporate the Complainant’s trademark in whole (apart from the apostrophe) and add some additional, descriptive elements. Examples include disputed domain names Nos. 8-11, and 36. The second broad grouping contains domain names which appear to involve the Complainant’s trademark and obvious typographical errors of the kind frequently considered “typosquatting”. Examples of this group include disputed domain names Nos. 1-4, 15-16, 19-22, and 28. These are intended to be examples only and not an exhaustive listing of all disputed domain names falling within a particular grouping.
Disregarding the gTLD, therefore, the Panel finds that the Complainant has established that each disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied. D. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondents have no rights or legitimate interests in their respective disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., section 2.1 of the WIPO Overview 3.0.
The Complainant states that it has not authorised any of the Respondents to use any of the disputed domain names. Nor is any Respondent affiliated with the Complainant. It is also plain that none of the disputed domain names is derived from any of the Respondents’ names.
The way the disputed domain names have been used, particularly to resolve to the “” website, and to PPC pages linking to competitive websites or directly to competitive websites or the phishing “survey” website does not qualify as a bona fide offering of goods or services under the Policy.
In these circumstances, the Complainant has established a clear prima facie case that each Respondent has no rights or legitimate interests in the disputed domain names that Respondent has registered. None of the Respondents has sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. E. Registered and Used in Bad Faith
To succeed in respect of any particular disputed domain name under the third requirement of the Policy, the Complainant must show that the relevant Respondent has both registered and used the relevant disputed domain name in bad faith. These are cumulative or conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey LtdWIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The sheer number of disputed domain names, their basing around the Complainant’s trademark plus either a descriptive element or an obvious typographical error (or a combination of both) and the pattern of usage made of each disputed domain name leads to a strong inference that the Respondents are well aware of the Complainant and its 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 way each of the disputed domain names has in fact been used, as set out in section 5B above, demonstrates a clear intention to take advantage of the Complainant’s trademark for its trademark significance. As already noted, that conduct cannot be considered to be in good faith under the Policy. That use is also quite inconsistent with an intention to register the disputed domain names in good faith. It does not seem at all credible that any Respondent would have thought, when registering the disputed domain name, that it was legitimate to redirect it to websites such as “”, phishing “survey” sites or websites competing with the Complainant’s business. Accordingly, the Panel is satisfied that each disputed domain name has been registered and used in bad faith. 6. 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 names, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: November 9, 2017
1 Noting that the final octet ends in .66 rather than .65.
2 According to Wikipedia: “Autonomous System Number” which is an identifier for a collection of IP networks and routers under the control of one entity.
3 The last octet ends in “.66” instead of “.65”.
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