Squatting on a domain name incorporating a famous brand such as Lowe’s, doesn’t mean you’re insensitive.
In the case of LowesCodes.com, a domain presumably aimed at Lowe’s coupons and discounts, the registrant faced a UDRP after creating a WordPress site and making it look like Lowe’s. Eventually, he listed the domain name for sale.
Lowe’s filed the UDRP and by that time it was clear that the case was lost for the Indian Respondent, who nevertheless sent a response that flowed like a poem:
I am owner of lowescode.com
I am not using that site from far ago
I don’t need that domain
So can you let me know what can I do
I got the message about dispute
…
actually i dont know how to send him this
i asked him to help how to send him
but he did not said anything
also i am not fully sure about he is genuine or not
…
when they said i deleted my site but after that i dont know how by default something published which is not published by me
and i dont have too much knowledge about that so i dont know what to doThey need to help me how to send him in between i dont know how to send domain
i want to send my domain bcz its automatically withdraw money from my bank
Help me to resolve this as soon as possible
The sole panelist at the Forum (NAF) acknowledged the Respondent’s intention to transfer the domain to the Complainant; the UDRP had to go forward, however.
Final result: Grant transfer of LowesCodes.com to the Complainant. Everyone should appreciate the poem as well.
LF, LLC v. Geeta Talukdar / sellingmart
Claim Number: FA2202001983672
PARTIES
Complainant is LF, LLC (“Complainant”), represented by Steven M. Levy, District of Columbia, USA. Respondent is Geeta Talukdar / sellingmart (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is (“Domain Name”), registered with IONOS SE.
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.
Nicholas J.T. Smith as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on February 8, 2022; the Forum received payment on February 8, 2022.
On February 14, 2022, IONOS SE confirmed by e-mail to the Forum that the domain name is registered with IONOS SE and that Respondent is the current registrant of the name. IONOS SE has verified that Respondent is bound by the IONOS SE 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 February 16, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 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@lowescodes.com. Also on February 16, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 14, 2022 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 formal response from Respondent.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a home improvement retail store chain. Complainant has rights in the LOWE’S mark through its registrations with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g. LOWE’S Reg. 1,168,799, registered Sep. 8, 1981). Respondent’s domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark, removes the apostrophe, and adds the word “codes” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized or licensed Respondent to use its LOWE’S mark in the disputed domain name. Respondent does not use the Domain Name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead presently hosts pay-per-click links at the Domain Name. Prior to that the Respondent operated a website at the Domain Name (“Respondent’s Website”) in which the respondent purposed to offer unauthorised codes and coupons for Complainant’s stores.
Respondent registered and uses the domain name in bad faith. Respondent attracts internet users for commercial gain by hosting either unauthorised discount coupons and then pay-per-click links on the Respondent’s Website. Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the LOWE’S mark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding but sent a series of informal e-mails on February 16 and 17, 2022, which relevantly state:
‘I am owner of lowescode.com
I am not using that site from far ago
I don’t need that domain
So can you let me know what can I do
I got the message about dispute ”
…
“actually i dont know how to send him this
i asked him to help how to send him
but he did not said anything
also i am not fully sure about he is genuine or not”
…
“when they said i deleted my site but after that i dont know how by default something published which is not published by me
and i dont have too much knowledge about that so i dont know what to doThey need to help me how to send him in between i dont know how to send domain
i want to send my domain bcz its automatically withdraw money from my bank
Help me to resolve this as soon as possible “
In certain cases where the Respondent has clearly consented to the transfer of the Domain Name to the Complainant, the Panel is authorized to forgo traditional UDRP analysis. In the present case, while Respondent is clearly seeking a resolution of the proceeding, it is not clear whether they are prepared to consent to the transfer of the Domain Name to the Complainant and as such it is not appropriate to issue an order for relief without being satisfied that the elements of the UDRP are satisfied.
FINDINGS
Complainant holds trademark rights for the LOWE’S mark. The Domain Name is confusingly similar to Complainant’s LOWE’S mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
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 formal 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
Complainant asserts rights in the LOWE’S mark through its registration of the mark with the USPTO (e.g., Reg. 1,168,799, registered Sep. 8, 1981). Registration of a mark with the USPTO is generally sufficient to establish rights in the mark per 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 demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that the domain name is confusingly similar to Complainant’s LOWE’S mark because it incorporates the portion of the Complainant’s mark that can be reproduced in a domain name in its entirety, adding only the generic term “codes” and the gTLD “.com.” Addition of generic or descriptive words and a gTLD and the removal of an apostrophe does not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i); see also Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the LOWE’S mark. Respondent has no apparent relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Geeta Talukdar / sellingmart” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to website which at various points has featured pay-per-click advertisements that refer to Complainant and/or purported to offer unauthorized discount coupons for Complainant’s stores. Neither of these activities are a bona fide offering or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business); see also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of also does not qualify as a bona fide offering… the domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”); see also Walgreen Co. v. Privacy protection service – whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, October 15, 2020, Respondent had actual knowledge of Complainant’s LOWE’S mark as it would be unlikely for a party to register a domain name that is consists of the LOWE’S mark and a word “codes” that describes a discount method Complainant offers and redirect it to a website that directly refers to Complainant and purports to offer discount coupons absent any awareness of Complainant and its LOWE’S mark (and intention to capitalize on Complainant’s reputation in its LOWE’S mark). In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s LOWE’S mark for commercial gain by using the Domain Name to resolve to a website containing advertisements and links to third party websites for commercial gain. Use of an identical or confusingly similar domain name to redirect Internet users to a website containing advertisements and links to third party websites for commercial gain is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
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 domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: March 15, 2022
