Lazyboy.xyz: Here’s what not to do with famous trademarks

Famous trademarks such as LA-Z-BOY attract domain investors like flies to cow dung!

The “art” of registering domain names that incorporate famous trademarks is lost in the mist of time and many domainers have gotten in deep poop for infringing on such trademarks.

The very least you can lose is the domain and in the case of Lazyboy.xyz it proves another point: even if you list the domain for $388 dollars you won’t stop companies from spending $1,500 plus billable corporate lawyer time to file a UDRP!

That’s the current price, at least, although we can see a listing of $1,988 dollars on Afternic which indicates the registrant dropped the price after receiving a UDRP notice.

The sole panelist at the Forum (NAF) had an easy decision to make and ordered the domain Lazyboy.xyz to be transferred to the Complainant:

La-Z-Boy Incorporated v. Michael Nava

Claim Number: FA2206002001410

PARTIES

Complainant is La-Z-Boy Incorporated (“Complainant”), represented by Paul A. Keller of Harness, Dickey & Pierce, PLC, Michigan, USA. Respondent is Michael Nava (“Respondent”), Nevada, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is lazyboy.xyz, registered with Sav.com, LLC – 10.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

The Honorable Neil Anthony Brown QC as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 22, 2022; the Forum received payment on June 22, 2022.

On June 30, 2022, Sav.com, LLC – 10 confirmed by e-mail to the Forum that the lazyboy.xyz domain name is registered with Sav.com, LLC – 10 and that Respondent is the current registrant of the name. Sav.com, LLC – 10 has verified that Respondent is bound by the Sav.com, LLC – 10 registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On July 5, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@lazyboy.xyz. Also on July 5, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

On August 1, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant made the following contentions.

Complainant is a Michigan-based furniture company. Complainant claims rights in the LA-Z-BOY mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,943,118 registered December 19, 1995). See Compl. Ex. 3. The disputed domain name lazyboy.xyz is confusingly similar to the LA-Z-BOY mark because it differs only through the addition of the letter “y” and the “.xyz” generic top-level domain (“gTLD”).

Respondent lacks rights or legitimate interests in the lazyboy.xyz domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the LA-Z-BOY mark in any way. Additionally, Respondent fails to use the disputed domain name in connection with make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent fails to make active use of the disputed domain. Furthermore, Respondent makes an offer of sale to the public.

Respondent registered and uses the lazyboy.xyz domain name in bad faith. Respondent has had prior adverse judgments. Furthermore, Respondent offers the disputed domain name for sale to the public. Respondent had actual knowledge of Complainant’s rights in the LA-Z-BOY mark prior to registration of the disputed domain. Finally, the resolving website is inactive and lacking substantive content.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

1. Complainant is a United States company engaged in the furniture industry.

2. Complainant has established its trademark rights in the LA-Z-BOY mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,943,118 registered December 19, 1995).

3. Respondent registered the lazyboy.xyz domain name on May 22, 2022.

4. Respondent has failed to make active use of the disputed domain and has been offering to sell the domain name.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

Identical and/or Confusingly Similar
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant has rights to the LA-Z-BOY mark through its registration with the USPTO (e.g., Reg. No. 1,943,118 registered December 19, 1995). See Compl. Ex. 3. Registration of a mark with a trademark agency, such as the USPTO, is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). As Complainant provides evidence of registration with the USPTO, the Panel finds Complainant has rights in the LA-Z-BOY mark under Policy ¶ 4(a)(i).

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s LA-Z-BOY mark. Complainant argues that Respondent’s lazyboy.xyz domain name is confusingly similar to Complainant’s LA-Z-BOY mark because it incorporates wholly Complainant’s mark differing only through the addition of the letter “y” and the “.xyz” gTLD. The addition of a letter and a gTLD generally fails to distinguish a disputed domain name sufficiently from a mark per Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) (“The domain name contains the mark in its entirety, with only the addition of the generic letters ‘sb’ and the digits ‘2018,’ plus the generic Top Level Domain (“gTLD”) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).

Complainant has thus made out the first of the three elements that it must establish.

Rights or Legitimate Interests

It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

(a) Respondent has chosen to take Complainant’s mark and to use it in its domain name adding only the letter “y” to the mark;

(b) Respondent registered the domain name on May 22, 2022;

(c) Respondent has failed to make active use of the disputed domain and has been offering to sell the domain name;

(d) Respondent has engaged in these activities without the consent or approval of Complainant;

(e) Complainant argues Respondent lacks rights or legitimate interest in the lazyboy.xyz domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the LA-Z-BOY mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information associated with the disputed domain does not indicate that Respondent is known by the disputed domain name. See Compl. Ex. 1. Rather, the Respondent is known as “Michael Nava.” See Registrar Verification Email. Additionally, there is no evidence Respondent was given rights to use the LA-Z-BOY mark nor was commonly known by the disputed domain name. Therefore, the Panel finds Respondent lacks rights or legitimate interests under Policy ¶ 4(c)(ii);

(f) Complainant argues that Respondent does not use the lazyboy.xyz domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead, the disputed domain name resolves to an inactive page and offers the domain name for sale. When a disputed domain name resolves to a webpage lacking content, panels have found a lack of rights and legitimate interests based on a lack of bona fide offerings of goods or services and/or legitimate noncommercial or fair uses. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 0296583 (Forum Sept. 2, 2004) (Finding that resolving to an empty page featuring no substantive content or links is evidence that Respondent fails to actively use the disputed domain name, suggesting a lack of rights and legitimate interests in the disputed domain name). Furthermore, an offer for sale may suggest that a respondent has no rights in a disputed domain. See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Complainant has provided a screenshot of the disputed domain name’s resolving webpage indicating that the only content on the page is an offer for sale. See Compl. Ex. 5. The Panel therefore finds that Respondent is not making a bona fide offering of goods or services under ¶ 4(c)(i) nor a legitimate noncommercial or fair use under ¶ 4(c)(iii).

All of these matters go to make out the prima facie case against Respondent.

As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.

Complainant has thus made out the second of the three elements that it must establish.

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

First, Complainant argues that Respondent has a history of bad faith registration and prior adverse UDRP judgments. Previous adverse UDRP decisions against a respondent may demonstrate a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“Complainant has provided evidence that Respondent has a history of UDRP and USDRP decisions decided against it. This establishes bad faith within the meaning of Policy ¶ 4(b)(ii).”). As such, as the Panel agrees, it finds bad faith under Policy ¶ 4(b)(ii).

Secondly, Complainant submits that Respondent registered and uses the disputed domain in bad faith because it makes a general offer of sale to the public. An offer of sale on an inactive website has been found by previous panels in appropriate circumstances to evidence bad faith. See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith). The Panel may again note the screenshots Complainant provided indicating that Respondent makes no active use of the resolving webpage and makes an offer for sale to the public. See Compl. Ex. 5. The Panel therefore finds further evidence of bad faith registration and usage.

Thirdly, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the LA-Z-BOY mark at the time of registering the lazyboy.xyz domain name, evidenced by the fame of the mark. The Panel will disregard arguments of bad faith based on constructive notice as prior UDRP decisions generally decline to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel will, however, determine if Respondent had actual knowledge of complainant’s rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this submission, Complainant points to the overall fame of its mark and the fact that Respondent registered a disputed domain that incorporates the entirety of this mark. See Compl. Exs. 3-4. As such, the Panel finds that Respondent did have actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii).

Fourthly, Complainant states that Respondent’s lazyboy.xyz domain name resolves to an inactive website. Inactive use of a disputed domain name may suggest bad faith under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). The Panel again refers to the screenshot of the disputed domain name provided by Complainant as evidence of Respondent’s inactive holding. See Compl. Ex. 5. Therefore, the Panel finds bad faith under bad faith under Policy ¶ 4(a)(iii).

Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the LA-Z-BOY mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.

Complainant has thus made out the third of the three elements that it must establish.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the lazyboy.xyz domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Neil Anthony Brown QC

Panelist

Dated: August 3, 2022

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