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WIPO Arbitration and Mediation Center

 

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lumber Liquidators, Inc. v. Domain Hold Co.

Case No. D2006-0887

 

1. The Parties

The Complainant is Lumber Liquidators, Inc., Toano, Virginia, United States of America, represented by Troutman Sanders, LLP, United States of America.

The Respondent is Domain Hold Co., Los Angeles, California, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <lumberliquidaters.com> and <lumberliquidater.com> are registered with eNom. There is conflicting evidence as to the registrant and control of the disputed domain name <lumberliquidater.com>, but for reasons explained below the Panel concludes that this domain name is the proper subject of a Administrative Panel Decision under the Uniform Domain Name Dispute Resolution Policy.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2006. On July 13, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue.

On July 18, 2006, eNom transmitted by email to the Center its verification response. On July 21, 2006, the Center notified the Complainant that, pursuant to paragraph 4(b), the Complaint was formally deficient in that eNom had identified person(s) other than those named in the complaint as the registrant of the <lumberliquidater.com> domain name. The Center invited the Complainant to cure the deficiency in the Complaint.

On July 24, 2006, the Complainant provided an “Amendment to Complaint” clarifying that the Complainant “cannot access the domain name” and that reverse Whois records indicate that the named Respondent controls the domain name. The Center then verified that the Complaint together with its amendment 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2006.

The Center appointed Justin Hughes as the sole panelist in this matter on September 4, 2006. 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 is a company organized under the laws of the state of Massachusetts and headquartered in the state of Virginia, United States; the company sells wood flooring. The Complainant has over 50 stores in 38 states, has annual revenues of almost US dollars 200 million (Complaint paragraph 13), and has used the <lumberliquidators.com> domain name for its own business activities since 1997.

The Respondent does not appear to have any commercial activities related to the domain names in question except to redirect Internet traffic to “sponsored links” who presumably provide the Respondent with a source of revenue. Questions concerning the actual registrant of the <lumberliquidater.com> domain name are discussed in section 6. D below. Other facts bearing on the matter are discussed in section 6. A-C below.

 

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions, as they bear on resolution of this dispute, are discussed individually under section 6. A-C below.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. Therefore, for purposes of this decision, the Panel accepts the Complainant’s contentions when supported by evidence, as shown above and below.

 

6. Discussion and Findings

To prevail in a UDRP action, paragraph 4(a) of the Policy requires that the complainant must prove each of the following:

(i) The domain name at issue 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 domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Because this dispute is between two parties who are United States citizens and would otherwise be subject to jurisdiction before American courts to resolve any disagreement regarding the trademark(s) and domain name in question, the Panel concludes that pursuant to the Rules, paragraph 15(a), it is appropriate to apply rules and principles of American trademark law between the parties.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) essentially involves a two step analysis. First, the Panel must establish “the trademark or service mark in which the complainant has rights.” The trademark(s) is/are the foundation for considering, second, whether the domain name at issue is identical or “confusingly similar.”

The Complainant has provided extensive evidence of its trademark registrations (Complaint paragraph 4 and Exhibit 2), but the Complainant did not receive any of its registrations until after the domain names in question were registered on June 13, 2002.

While the Policy is crafted in a sufficiently broad way as to permit parties to proceed on common law trademark rights, Panels should be cautious in handling claims of common law trademark rights; in part because a broadunderstanding of such rights may give persons in common law jurisdictions a significant advantage over persons in jurisdictions that do not recognize unregistered trademark rights.

The record provided by the Complainant’s counsel is regrettably thin on the establishment of common law trademark rights prior to June 13, 2002. The Complainant’s own webpage provides little or no relevant information (Complaint Exhibit 5 and visited by Panel, September 17, 2006). Because of the dearth of evidence, this is a close case.

Nonetheless, the Panel concludes that the Complainant had established common law trademark rights in LUMBER LIQUIDATORS prior to June 13, 2002. Complainant’s USPTO registration 2,726,656 shows a first use in commerce date of May 1, 1993 (Complaint Exhibit 2); the Complaint identifies 1995 as the year the company was founded (Complaint paragraph 13). Complainant’s commercial internet presence may date as far back as June 1997, when it registered its own <lumberliquidators.com> domain name. [This information does not appear in the Complaint, but results from the Panel’s own research.] Given the present size of Complainant’s business and the necessary inferences that the USPTO examiner would have made to register an otherwise descriptive term for Complainant’s line of business, it is reasonable to conclude that as of June 2002, the Complainant had common law trademark rights in the United States in the name LUMBER LIQUIDATORS.

As to the second issue, while the disputed domain names differ from the LUMBER LIQUIDATORS trademark in only 1-2 letters, this Panel has previously cautioned against the development of a per se rule that any one or two letter variation with a well known trademark produces a confusingly similar sign. Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150 (June 15, 2004). In order for a domain name to constitute a case of “typosquatting,” the domain name should reflect predictable typographical errors or common misspellings of the Complainant’s trademark.

The Panel concludes that substitution of “er” for “or” is a very predictable spelling mistake. For example, Burchfeld’s edition of Fowler’s Modern English Usage reports that “[i]n received spelling, the choice between the two forms is often capricious, or determined by other than historical reasons.” For a study of children and adults making errors between –ar, –er, and –or endings for words, see Bryan Bardine, Research to Practice: A Review of “A Study of the Spelling Development of Adult Literacy Learners Compared with that of Classroom Children, available at

http://literacy.kent.edu/Oasis/Pubs/0200-22.html. The slight difference between “ers” and “ors” makes <lumberliquidaters.com> confusingly similar to the LUMBER LIQUIDATORS trademark.

Omission of letters are a predictable form of typographical error. See, e.g. Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, d/b/a Cupcake Patrol, WIPO Case No. D2001-0302 (May 18, 2001) [<wallsteetjournal.com> confusingly similar to WALL STREET JOURNAL]; CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273 (June 18, 2003) [omission of “.” made “wwwamctv.com” confusingly similar to “www.amctv.com” and AMC TV mark ]. The dropping of the final “s” from LUMBER LIQUIDATORS is a predictable omission and, in combination, the misspelling and the dropping of the “s” are predictable errors, so as to render <lumberliquidater.com> confusingly similar to LUMBER LIQUIDATORS.

For these reasons, the Panel concludes that both <lumberliquidaters.com> and <lumberliquidater.com> are confusingly similar to Complainant’s LUMBER LIQUIDATORS family of marks.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii), the Panel must establish that the Respondent has no rights or legitimate interests in the domain names.

According to the Complainant, Respondent is not licensed in any way to use the LUMBER LIQUIDATORS trademark. (Complaint paragraph 26(g)). Nor is Respondent commonly known by the words in the domain name at issue. (Complaint paragraph 26(b)) There is no evidence that the Respondent has ever used LUMBER LIQUIDATER or LUMBER LIQUIDATERS or any similar trademark or trade name in the offering of goods or services.

The domain name <lumberliquidaters.com> currently directs Internet users to a web page offering several relevant categories for those in the market for wood flooring. Clicking on any of these links produces another page of relevant, direct links to advertisers of hardwood flooring, decks, bamboo flooring, etc. Some of these sponsored links are, in fact, links back to the Complainant. The domain name <lumberliquidater.com> directs Internet users to a more general page of links to commercial offerings – travel, finance, business, entertainment – that have nothing to do with the lumber or wood flooring businesses. Neither of these activities in the circumstances of this case can be considered to be a bona fide offering of goods or services under the UDRP.

Accordingly, the second requirement of the Policy is met. The Panel concludes that the Respondent has no rights or legitimate interests in the domain names.

C. Registered and Used in Bad Faith

The third element that must be established under the UDRP is that the Respondent “registered and used” the domain name in “bad faith”. Bad faith is established by a constellation of facts in this case.

Paragraph 4(b) of the Policy provides a set of circumstances that evince bad faith in the registration and use of domain names. Paragraph 4(b)(iv) provides that bad faith is shown where:

“by using the domain name, you [the Respondent]have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”

Thus, use of the confusingly similar domain names as described above in section 6. B to divert Internet traffic to sponsored links constitutes bad faith under paragraph 4(b)(iv).

Registration of multiple domain names that are confusingly similar to established trademarks is also evidence of bad faith. This is true under both American trademark law, see 15 U.S.C. §1125 (d)(B)(i)(VIII) (registration “of multiple domain names which the person knows are identical or confusingly similar to marks of others” is indicia of bad faith), and under the Policy. Toyota Motor Sales, U.S.A., Inc. v. RD Lab, WIPO Case No. D2005-1129 (December 13, 2005) (respondent had registered domain names confusingly similar to several separate automobile manufacturers); Southern Communications Services, Inc. d/b/a Southern LINC v. Henry Chan, WIPO Case No, D2004-0214 (May 10, 2004) (bad faith registration pattern established by Respondent registering “1,100 domain names, many of them incorporating expressions that are confusingly similar to third parties’ marks, including several misspellings”); Stella D’Oro Biscuit Co., Inc. v. The Patron Group, Inc., WIPO Case No. D2000-0012 (February 17, 2000) (respondent held more than 100 domain names confusingly similar to well-known trademarks).

In this case, Respondent has apparently amassed a large stockpile of typosquatting domain names. (Complaint Exhibit 6) On this basis, bad faith is also established.

Separately, the Panel notes that to the degree false contact information was provided by Respondent for the registration of <lumberliquidater.com> as discussed below, the provision of false contact information would be an independent basis for the inference of bad faith in regard to that domain name. See, e.g. 15 U.S.C. § 1125(d)(1)(B)(i)(VII) [“provision of material and misleading false contact information” constitutes bad faith under American law].

D. The status of the <lumberliquidater.com> domain name

Initially, the Center notified the Complainant that the Complaint was defective because eNom reported a different registrant for <lumberliquidater.com> than the Respondent named in the Complaint. In fact, eNom’s records have the name of the Complainant as the registrant for the <lumberliquidater.com> domain name.

Obviously, if the Complainant were actually in control of the <lumberliquidater.com> domain name, it would not have initiated a UDRP action in relation to said domain name.

The Panel notes the following peculiarities with the Whois information available for the <lumberliquidater.com> domain name; these peculiarities suggest the provision of intentionally misleading contact information in the registration of this domain name.

First, both the registrant contact and the administrative contact are listed as “info@lumberliquidaters.com”. Since it is established that <lumberliquidaters.com> is under the control of Domain Hold Co., the only reasonable inference is that emails sent to this email address will go to Domain Hold Co – not Lumber Liquidators, Inc.

Second, on September 17, 2006, the Panel tried the fax contact listed and found it to be a non-working number. (It is nonetheless true, however, that the phone contact listed the direct phone number of Ken Strohschein, the chief information officer of Lumber Liquidators, Inc.)

Third, if this domain name had been registered initially by Lumber Liquidators or an agent thereof, it is highly improbable that it would have the exact same registration date as the registration date of the <lumberliquidaters.com> domain name held by Domain Hold Co.

Since the Complainant contends that there has been no transfer of the <lumberliquidater.com> name to the Complainant and that the Complainant cannot access this domain name, the most reasonable inference is that the domain name remains under the control of the Respondent or a party affiliated with the Respondent.

On the other hand, if the Respondent does not have control of the domain name and if it is somehow actually registered to the Complainant, transfer of the domain name will not harm the interests of the Respondent and will serve the interests of the Complainant in clarifying the situation.

On this basis, the Panel’s decision includes the <lumberliquidater.com> domain name.

 

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 names, <lumberliquidaters.com> and <lumberliquidater.com> be transferred to the Complainant.

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Professor Justin Hughes
Sole Panelist

Dated: September 18, 2006