WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lumber Liquidators, Inc. v. Mike Drovko
Case No. D2015-1607
1. The Parties
The Complainant is Lumber Liquidators, Inc. of Toano, Virginia, United States of America, represented by Troutman Sanders, LLP, United States of America.
The Respondent is Mike Drovko of Beverly Hills, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <lumberliquidators.press> ("Disputed Domain Name") is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 9, 2015. On September 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 11, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2015. The Center received an email communication from the Respondent on September 21, 2015. The Respondent confirmed that this communication was his "final response".
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on October 9, 2015. 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
The Complainant is a privately-held Delaware corporation headquartered in Virginia. According to the Complaint, the Complainant is a leading provider and retailer of hardwood flooring and flooring-related products in the United States and throughout the world. The Complainant began its business in 1993 and operates hundreds of retail stores in North America under the name "Lumber Liquidators".
The Complainant has owned the domain name registration for <lumberliquidators.com> since June 6, 1997 that features its mark in connection with flooring products and retail store services. The Complainant claims first use of the LUMBER LIQUIDATORS mark in 1993. It holds several registered trademarks with the United States Patent and Trademark Office ("USPTO") for LUMBER LIQUIDATORS including registration Nos: 2,651,590, 2,726,656 and 3,297,156.
The Disputed Domain Name was created on August 10, 2015. It currently resolves to a website which states "UNDER CONSTRUCTION, this site is down for maintenance. Please check back again soon". In the past, different messages have been displayed on this website. At one point it displayed: "Defective Goods For way way LESS". At another, it displayed "Lumber Liquidators Scam Coming Soon. Facebook Share".
The Respondent's informal Response averred that the Disputed Domain Name has never been live and it is not registered or used for commercial activities, such as selling wood.
5. Parties' Contentions
The Complainant alleges that:
(a) The Disputed Domain Name is confusingly similar to the Complainant's mark.
The Complainant claims that the Disputed Domain Name entirely incorporates the Complainant's mark. It is not sufficient to distinguish the Disputed Domain Name from the Complainant's mark by the mere addition of the top-level suffix ".press".
(b) The Respondent has no rights or legitimate interests with respect to the Disputed Domain Name.
The Complainant avers that there is no affiliation between it and the Respondent, who is not an employee of the Complainant. Further, the Complainant has never authorized or licensed the Respondent to use the mark. The Respondent is not currently using and has never used the Disputed Domain Name in any bona fide commercial or noncommercial manner. The Respondent has never been commonly known by the Disputed Domain Name. The Complainant lastly asserts that the Respondent is not making and has never made any commentary or criticism through the use and registration of the Disputed Domain Name and no expressive message was contained therein.
(c) The Disputed Domain Name was registered and is being used in bad faith.
The Complainant contends that bad faith registration and use are demonstrated through following facts. The Respondent knew of the Complainant's mark at the time of the Disputed Domain Name's registration. The Respondent has registered the Disputed Domain Name to derive website traffic for a website built around the Complainant's mark. Moreover, even if the Respondent's sole intention in creating the Disputed Domain Name was to criticize, good faith cannot be found in an entire incorporation of the mark of the target of the site in the domain name. Lastly, the Complainant alleges that the Respondent acted in bad faith in an effort to disrupt its business.
The Respondent did not formally reply to the Complainant's contentions. However, he did submit an email claiming that the Disputed Domain Name has never been live and that he does not conduct any commercial activities by using the Complainant's mark.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant's mark.
It is well settled that the inclusion of a registered mark in its entirety in a domain name results in confusing similarity for purposes of paragraph 4(a)(i) of the Policy. Here, the Disputed Domain Name consists of the Complainant's mark LUMBER LIQUIDATORS in its entirety, followed by the top-level suffix ".press". It is also an accepted principle that the applicable top-level suffix in a domain name would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), and consequently, the Panel finds that the Disputed Domain Name is identical to the Complainant's trademark.
Therefore, this Policy element has been established.
B. Rights or Legitimate Interests
The Panel concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Although a complainant bears the ultimate burden of proof, UDRP panels recognize that strict compliance would often require the impossible task of proving a negative because such information is frequently within the sole possession of a respondent. See Altria Group, Inc. v. Steven Company, WIPO Case No. D2010‑1762. Accordingly, a complainant need only make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name. "Upon such a showing, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the Disputed Domain Names." Valero Energy Corporation and Valero Marketing and Supply Company v. Kim A Waugh, Kim Consult, WIPO Case No. D2014‑1819.
In this case, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the Disputed Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
This finding is inter alia based on the following, non-disputed circumstances:
(1) The Complainant has no relationship or affiliation with the Respondent and has never authorized or licensed the Respondent to use its trademark to apply for domain name.
(2) The Respondent's use of the Disputed Domain Name has never been in a bona fide commercial or noncommercial manner.
(3) The Respondent's language on the website at the Disputed Domain Name is very limited and cannot constitute any commentary or criticism through the use and registration of the Disputed Domain Name.
As to (3) above, while it is conceivable, in different circumstances, for a reference to "defective goods" or to a "scam" to be interpreted as some sort of criticism of the Complainant, the Panel finds that is not the case here. The previous language on the website to which the Disputed Domain Name resolves was "Defective Goods For way way LESS", or "Lumber Liquidators scam coming soon. Facebook share". The Panel does not consider that either of these statements amounts to any coherent expression of criticism. Further, at no point in his informal Response does the Respondent himself state that the website is intended for criticism. Rather, the Respondent considers the website passively held (stating that it has "never been live").
As nothing in the record rebuts the Complainant's prima facie case, the Panel finds that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by the Complainant and that the Respondent's bad faith registration and use of the Disputed Domain Name have been proven.
Paragraph 4(b) provides the following four (nonexclusive) circumstances which are deemed to provide evidence of bad faith in registering and using a domain name:
(i) Circumstances indicating that you [respondent] have registered or you [respondent] have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trade mark or service mark, or to a competitor of complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) You [respondent] have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) You [respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, you [respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or your location.
This Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith.
In this Panel's view, the Respondent's registration of the Disputed Domain Name was undertaken intentionally and expressly to disrupt the Complainant's activities by misleading Internet users as to the "source, sponsorship, affiliation, or endorsement" of his website.
In addition, bad faith can be found even if the Respondent's sole intention of creating the Disputed Domain Name was to criticize. Further, the website to which the Disputed Domain Name currently resolves qualifies as "passive holding", and it is a consensus view that passive holding does not, by itself, prevent a finding of bad faith (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.2). The Panel, in view of all the circumstances of this case, including the fact that the Complainant is a well-known corporation along with its valid trademarks and that no formal Response to the Complaint has been filed, concludes that the Disputed Domain Name was registered and is being used in bad faith.
Therefore, this Panel finds for the Complainant on the element.
In light of the foregoing, the Panel finds that the Disputed Domain Name <lumberliquidators.press> is identical to the Complainant's trademark; that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and that the Respondent registered and is using the Disputed Domain Name in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel orders that the Disputed Domain Name <lumberliquidators.press> be transferred to the Complainant.
Maxim H. Waldbaum
Date: October 23, 2015