WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LG Corporation v. Domains by Proxy, Inc. / satayu basu Case No. D2010-0488 1. The Parties
The Complainant is LG Corporation of Seoul, Republic of Korea, represented by Simmons & Simmons of London, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America / satayu basu of Pune, Maharashtra, India. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2010. On March 31, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On April 1, 2010, GoD, Inc. transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 6, 2010, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 7, 2010. 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 29, 2010.
The Center appointed Francine Tan as the sole panelist in this matter on May 6, 2010. 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 was founded in 1958 and is the world's second largest manufacturer of televisions. It has 114 local subsidiaries worldwide. In 2005, the Complainant became the world's fourth largest provider of mobile handsets. It has for many years offered a mobile phone repair services.
The Complainant owns more than 4,000 trade mark registrations and applications around the world that consist of or contain the letters “LG”, in respect of a broad range of goods and services. The Complaint has Community trade mark, United States, International and United Kingdom trade mark registrations for the LG mark and also United States, United Kingdom and Community trade mark registrations that consist of a logo which incorporates the letters “LG” (“the LG logo”). The Complainant also asserts that the LG mark is a well-known mark and submitted, inter alia, evidence consisting of a copy of the judgment of the Korean Patent Court in relation to the case of LG Electronics Inc. v. LGS Co. Ltd. in which the court acknowledged the reputation of the LG brand and held that it was a well-known brand.
As regards the manner of use of the disputed domain name, the Complainant submitted (under Annex 9 to the Complaint) copies of printouts of the website at the disputed domain name (“the website”). These showed that the Respondent was using the disputed domain in relation to “unlocking” services. It is worth quoting some of the statements found on the website:
“LGtron is arguably the fastest growing LG Unlocking service online. We have unlocked over 98,000 LG Handsets from all across the world. 100% reliable & time tested code generation servers. We have over 2000 resellers regularly purchasing LG Unlock Codes.”
“Supported Handsets – We support each and every model. If you have a LG handset even any of the classic handset we can generate the Unlock code.”
“LGtron is one of the première companies dedicated in unlocking LG handsets only. Our code generation technology is absolutely the most trusted amongst our peers. The company specializes in the unlocking of all kinds of LG phones available in the market currently.”
The Complainant's LG logo is apparently reproduced 17 times in the website, including as part of the LGtron logo.
The disputed domain name was registered on July 14, 2009. 5. Parties' Contentions A. Complainant
The Complainant's contends that:
(1) The disputed domain name is confusingly similar to the Complainant's LG trade mark since it wholly contains the letters “LG”. The suffix “tron” is not particularly distinctive for any goods or services and, in fact, is likely to be understood to be an abbreviation for the word “electronic”. Previous WIPO UDRP panels have long since held that the addition of a generic or descriptive term to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. The addition of “tron” in the disputed domain name therefore does nothing to distinguish it from the Complainant's mark.
Moreover, the disputed domain name starts with the letters “LG” and it is commonly acknowledged that Internet users pay closer attention to the beginning of a word or name than to the middle or end of a word or name. The letters “LG” are therefore the more memorable part of the disputed domain name.
(2) The Respondent does not have any rights or legitimate interests in the disputed domain name:
(i) There is no evidence that the Respondent has been commonly known by the disputed domain name or made a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain or to misleadingly divert consumers or to tarnish the Complainant's trade mark. In fact, the Respondent's activities would involve facilitating a breach of the terms of the standard agreement between an individual and a service provider. This is likely to lead to consumers believing that the Complainant endorses the unlocking of mobile phones and, consequently, the Complainant's trade mark is highly likely to be tarnished.
(ii) There is no explicable reason why the Respondent chose the disputed domain name (incorporating the trade mark LG) other than because the Respondent wished to trade off the Complainant's LG trade mark, particularly since the Respondent is offering an “unlocking” service for LG phones.
(iii) The disputed domain name was registered after the Complainant had established its rights in the trade mark LG through use and/or registration.
(iv) The Complainant has no legal or business relationship with the Respondent which would give rise to any licence, permission or authorisation for the Respondent to use the disputed domain name. Nor is there any legitimate use of the LG logo on the website. The use of the LG logo on the website gives the impression that it is an official website of the Complainant.
(3) The Respondent registered and is using the disputed domain name in bad faith:
(i) The disputed domain name constitutes an infringement of the Complainant's registered trade mark rights, and the website incorporates use of the Complainant's registered marks without their consent.
(ii) The disputed domain name was registered in July 2009 whereas the Complainant had by then been the owner of registered rights in the LG trade mark and the LG logo for a number of years, and had acquired extensive reputation in the LG trade mark and logo.
(iii) The Respondent is not a licensee of the Complainant and the latter has never consented to the former's registration or use of the disputed domain name.
(iv) The Respondent's use of the LG trade mark and logo in the disputed domain name and/or in the website creates a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or of a product or service on its website.
(v) The Complainant offers repair services for LG phones and such a repair service could be regarded as similar to the unlocking service being offered on the website. Internet users may be misled to think that the website is affiliated with the Complainant and/or that the unlocking service is endorsed by the Complainant. Internet users are therefore highly likely to be diverted to the website. Reference is made to the case of Motorola, Inc. v. Mr. Josip Broz,WIPO Case No.D2002-1063 in which the use of a third-party trade mark in a domain name () and in the text of a website offering unlocking software (in conjunction with the Complainant's logo) was held to be use in bad faith.
(vi) Given the international recognition of the Complainant's LG trade mark, it is impossible to conceive of any good faith use of the disputed domain name. Internet users would be misled into thinking that the goods or services sold by the Respondent via the website are associated with the Complainant. Further, the Complainant's customers seeking information on the Complainant and/or the Complainant's products would be diverted away, thereby disrupting its legitimate activities.
On the basis of these allegations, Complainant seeks a transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has undoubtedly trade mark rights in the letters “LG” as evidenced by its many trade mark registrations and reputation through extensive use. The next issue to be addressed is whether the disputed domain name is confusingly similar to the said trade mark.
It is a well-established principle that the gTLD suffix should be disregarded when considering this issue since the suffix is a necessary element. The Panel is therefore required to focus only on the word “lgtron” in its assessment of whether there is confusing similarity. In this case, the Panel agrees with the Complainant that the disputed domain name is confusingly similar to its trade mark, LG. The trade mark LG is adopted completely in the disputed domain name and the fact that these letters appear at the start of the domain name is an element which adds to the confusing similarity. These letters are what would capture one's attention.
The Panel agrees with the position put forward by the Complainant that the addition of the suffix, “tron”, which is suggestive of the “electronic” nature of the goods/services provided on the website, does not serve to remove the confusion with the Complainant's trade mark.
The Panel accordingly finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods or services; or
(2) being commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
For the purposes of paragraph 4(c) of the Policy, the Complainant is required to establish at least a prima facie case with appropriate evidence that the Respondent has no rights or legitimate interests in the disputed domain name. (See e.g., Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252.) Once the Complainant has done so, the burden then shifts to the Respondent to proffer evidence which prove it has rights or legitimate interests in the domain name.
The Panel finds that the Complainant has provided prima facie evidence that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent is commonly known by the domain name and in fact the manner in which it has been used is not bona fide. The prominent and repeated use of the Complainant's LG trade mark and logo on the website, and references to LG handsets without the licence or consent of the Complainant is clearly illegitimate, infringing use. The Respondent's reference to itself as “LGtron is arguably the fastest growing LG Unlocking service online” and statement that is a “première [company] dedicated in unlocking LG handsets” are intentionally misleading in nature, and give Internet users the impression that this company is an offshoot of, associated with, or endorsed by the Complainant when it is not. The Panel finds that this is not a case where the Respondent has made a legitimate noncommercial or fair use of the domain name. The evidence showing the Respondent's blatant reference to the Complainant's products and LG trade mark, and illegitimate adoption of a trading name which incorporates the Complainant's trade mark on the website all weigh in favour of a finding that the Respondent does not at all have rights or legitimate interests in the disputed domain name.
The Respondent has failed or chosen not to file a Response to prove its rights or legitimate interests in the disputed domain name.
In the circumstances and in the absence of contrary evidence, the Panel accordingly finds that the Complainant has established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Complainant also has to prove that the disputed domain name has been registered and is being used in bad faith. As set forth in paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the disputed 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 trade mark 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 disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's 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 the Respondent's web site or location or of a product or service on the Respondent's web site or location.
The Panel finds that the circumstances of this case fall within the example of bad faith registration and use identified in paragraph (iv) above. As mentioned in the case of American Express Marketing & Development Corp. v. Gabriyel Akbulut,WIPO Case No. DME2010-0003: “Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the trade marks in question are well-known, whether there is no response to the complaint, and other circumstances. See e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.” The Panel finds that the LG trade mark is a well-known mark and is clearly one that the Respondent knew about and deliberately adopted in its trading name, LGtron, and in the disputed domain name. The aim was, without doubt, to attract and divert Internet traffic to the website by creating confusion with the Complainant's mark, or by creating the impression that the website was affiliated with or endorsed by the Complainant. Given the other circumstances, namely the failure to respond to the Complainant's assertions and the blatant infringing use of the Complainant's trade mark, the Panel agrees that there has been bad faith registration and use of the disputed domain name by the Respondent.
In the circumstances, the Panel finds that the Complainant has established the third element of paragraph 4(a) 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 be transferred to the Complainant.
Francine Tan
Sole Panelist
Dated: May 10, 2010
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