Lumber Liquidators, Inc. v. Click Cons. Ltd, Domain Privacy Ltd DNS Admin
Case No. D2007-1846
1. The Parties
The Complainant is Lumber Liquidators, Inc. of Toano, United States of America, represented by Troutman Sanders, LLP, United States of America.
The Respondent is Click Cons. Ltd of Nassau, Bahamas and Domain Privacy Ltd, DNS Admin, of Marblehead, United States of America.
2. The Domain Name and Registrar
The disputed domain name <lumberliquidators.org> is registered with DomainCentre.ca Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2007. The Respondent named in the Complaint was Click Cons. Ltd. On December 14, 2007, the Center transmitted by email to DomainCentre.ca Inc. a request for registrar verification in connection with the domain name at issue. On that same day (December 14, 2008), DomainCentre.ca Inc. transmitted by email to the Center its verification response stating that the Respondent Domain Privacy Ltd. DNS Admin is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 19, 2007, naming Click Cons. Ltd. and Domain Privacy Ltd DNS Admin as Respondents. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint and the proceedings commenced on December 24, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was January 13, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2008.
The Center appointed Brigitte Joppich as the sole panelist in this matter on January 21, 2008. 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 paragraph 7 of the Rules.
4. Factual Background
Founded in the United States of America in 1995, the Complainant, a Massachusetts corporation, is the largest retailer in the United States of America specializing in hardwood flooring. The Complainant has more than 500 employees working in over 100 stores in 42 states and has annual revenues of almost US$ 250 million. The Complainant owns numerous service marks worldwide consisting of or including the term “lumber liquidators”, inter alia a word mark LUMBER LIQUIDATORS (Reg. No. 2,726,656) in international class 35 for retail and wholesale store services and distributorship services featuring hardwood flooring products, used in commerce as early as January 5, 1993, and registered on June 17, 2003 with the United States Patent and Trademark Office (the “LUMBER LIQUIDATORS Marks”).
The Respondents in this administrative proceeding are Click Cons. Ltd (registrant of the disputed domain name as of June 2007), Domain Privacy Ltd. (a privacy service to whom such domain name was apparently transferred by Click Cons. Ltd upon receipt of a letter of warning from the Complainant at some point between June 20, 2007 and July 10, 2007), and DNS Admin (an entity seemingly related to Domain Privacy Ltd. that was identified, along with Domain Privacy Ltd as the “Registrant Organization”, as being the “Registrant Name” of the disputed domain name, by the registrar DomainCentre.ca Inc.). The Respondent Click Cons. Ltd is the named registrant of more than 6,730 domain names many of them including (variations of) third parties’ trademarks and has been involved in at least nine different WIPO UDRP cases in 2007, which all ended with the transfer of the disputed domain name to the complainant.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case:
(1) The domain name <lumberliquidators.org> is identical to the LUMBER LIQUIDATORS Marks.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as the LUMBER LIQUIDATORS Marks are uniquely associated with the Complainant, as the Respondent is neither known nor identified by the name “Lumber Liquidators”, as it does not operate a business under such name and as it did not acquire trademark or service mark rights in the name “Lumber Liquidators”. Moreover, the Complainant contends that the Respondent does not make any legitimate non-commercial or fair use of the disputed domain name, misleadingly diverting users searching for the Complainant’s products to the Respondent’s website for commercial gain. Finally, the Respondent is not a licensee of the Complainant nor otherwise authorized by the Complainant to apply for registration of or use the disputed domain name.
(3) The Complainant finally contends that the domain name was registered and is being used in bad faith inter alia for the following reasons: The Respondent does not conduct any legitimate commercial or non-commercial business under the domain name <lumberliquidators.org>, it has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s marks, seeking to unjustly enrich itself by misappropriating the Complainant’s goodwill and creating a likelihood of confusion with its marks, it has registered a domain name identical to the Complainant’s marks and is using it to promote flooring products and services, it has engaged in “cyberflying” and a pattern of registering domain names including third parties’ trademarks or variations thereof.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The use of a privacy shield and changes of registrant identity as described above suggest that this is a case where the disputed domain name was transferred repeatedly to delay or avoid UDRP jurisdiction.
The Complainant provided evidence that the disputed domain name was registered with the Respondent Click Cons. Ltd until June 20, 2007, i.e. until after the receipt of two letters of warning sent by the Complainant’s lawyers to the Respondent Click Cons. Ltd. When the Complainant learnt that the disputed domain name had been transferred to the Respondent Domain Privacy Ltd, a privacy service, shielding the identity of the registrant, it asked the Respondent Domain Privacy Ltd to reveal the name of the true registrant, however, without receiving a response. Finally, as a result of the Center’s registrar verification, it became clear that another change had taken place and that an apparently related entity of the Respondent Domain Privacy Ltd, i.e. DNS Admin, was also listed as registrant of the disputed domain name (the former being identified in the registrar’s verification response under “Registrant Name”, and the latter under “Registrant Organization”. Given that the Respondent Click Cons. Ltd is the named registrant of more than 6,730 domain names, many of them including (variations of) third parties’ trademarks, and in the absence of a response submitted by the Respondents in the present administrative proceedings, the Panel considers these facts as evidence of an attempt by the true registrant to avoid or delay the consequences of UDRP proceedings.
Previous panels have in similar cases been prepared to treat both the initially listed registrant and the subsequently disclosed registrant as Respondent (cf. TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services,WIPO Case No. D2006-1620; Bibby Financial Services Limited and Bibby Leasing Limited v. Click Consultancy Services Limited and WhoisGuard,
WIPO Case No. D2007-1319; The Bank of Nova Scotia v. Domain Privacy Group, Inc. c/o scotiabanktheatre.com / Mario Osvaldo Rayo / Ultra.Life Media c/o Domain Privacy Group, Inc.,
WIPO Case No. D2007-1584; Group Kaitu, LLC , Darkside Productions, Inc. v. Group Kaitu LLC aka Manila Industries, Inc.,
WIPO Case No. D2005-1087; BolognaFiere S.p.A. v. Currentbank-Promotools, SA. Inc/Isidro Sentis a/k/a Alex Bars,
WIPO Case No. D2004-0830). Accordingly, it is in the Panel’s view appropriate for all of these entities to be included as Respondent in the present case, and the Panel will refer to them collectively as the Respondent except as noted otherwise.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s distinctive LUMBER LIQUIDATORS Marks in which the Complainant has exclusive rights.
It is well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,
WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,
WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,
WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Respondent did not file a response in this proceeding. Therefore, the Complainant’s assertions that the Respondent lacks rights or legitimate interests stand unrebutted.
Based on the evidence before the Panel, in the absence of any use of the disputed domain name by the Respondent or other pertinent facts, the Respondent apparently is neither commonly known by the domain name nor contends to make a legitimate non-commercial or fair use of the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(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 the 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, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location.
The two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.
With a view to the high level of distinctiveness of the LUMBER LIQUIDATORS Marks and the fact that Respondent Click Cons. Ltd is the named registrant of more than 6,730 domain names, many of them including (variations of) third parties’ trademarks it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s rights therein. This finding is supported by the fact that the website under the disputed domain name has always provided links to flooring services, i.e. services competing with those offered by the Complainant. The Panel is therefore satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant’s marks and thus in bad faith.
Moreover, the Respondent has also used the disputed domain name in bad faith. Screen shots of the Respondent’s web pages under the disputed domain name as of May 17, 2007 as well as of September 10, 2008 and of December 24, 2007 show that links on the website under the disputed domain name referred the user inter alia to all types of flooring services, allowing the Respondent to earn click through fees for redirecting Internet users to competing websites and thus capitalizing on the goodwill of the Complainant’s trademarks. This behavior qualifies as bad faith under paragraph 4(b)(iv) of the Policy in that the Respondent’s use of the domain name attempts to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website.
The finding of bad faith use is supported by the fact that the Respondent Click Cons. Ltd has been involved in at least nine eight different WIPO UDRP cases in 2007, which all ended with the transfer of the disputed domain name to the complainant. This leads to the conclusion that the Respondent, following a pattern of conduct, registered the disputed domain name in order to prevent the Complainant from reflecting its trademarks in a corresponding domain name which constitutes bad faith under paragraph 4(b)(ii) of the Policy.
On this evidence, the Panel finds bad faith proven under paragraphs 4(b)(ii) and 4(b)(iv) of the Policy.
Therefore, the Complainant has also satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lumberliquidators.org> be transferred to the Complainant.
Brigitte Joppich Sole Panelist
Dated: January 25, 2008
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