The Complainant is STL Group B.V. of Venlo, the Netherlands, represented by Hoyng Monegier LLP, Netherlands.
The Respondent is B, Inc. of College Station, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2011. On March 4, 2011, the Center transmitted by email to I Corp. a request for registrar verification in connection with the disputed domain name. On March 5, 2011, I Corp. 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 March 8, 2011, 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 amended Complaint on March 10, 2011.
The Center verified that the Complaint together with the amended 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 March 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2011.
The Center appointed James A. Barker as the sole panelist in this matter on April 13, 2011. 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 disputed domain name was registered on February 15, 1996.
The Complainant is a Dutch company, and is a manufacturer and distributor of devices such as CD players, television sets, DVD players, home cinema systems and speaker systems. The Complainant uses the trademark LENCO on all these products, which are sold worldwide. The Complainant’s head office is located in the Netherlands, with an additional office in Hong Kong and sale offices in Belgium, France, Germany, the Netherlands and the United Arab Emirates.
The Complainant is the registered owner of the mark LENCO. The earliest registration of the LENCO logo dates back to 1959; and the earliest registration for the LENCO word mark dates back to 1978. The Complainant has registrations for its trademark all over the world, including the European Trademark Registration No. 3799715 for LENCO; and United State Trademark Registration No. 3221689 for LENCO. Apart from these two registrations, the Complainant has registrations for its mark in more than 50 countries. 5. Parties’ Contentions A. Complainant
The Complainant claims that its mark has become well known worldwide. Its mark was established in the 1950s in Switzerland and became well known as a brand for quality turntables. The Complainant’s turntables have dominated the professional music business for the last 50 years. Since the brand was taken over by STL Group B.V. in 1997, the Complainant has sold more than 1.4 million turntables worldwide. Currently, the Complainant is active in the broader field of audio and video electronics.
The Complainant says that its LENCO trademark is inherently distinctive, in particular by reason of the fact that it is an invented word and that it is used exclusively as a trademark for the Complainant’s audio and video equipment, which is put on the market by the Complainant.
The Complainant says that the disputed domain name is identical to its LENCO trademark. The Complainant says that the Respondent initially offered on its website products that are identical to the products of the Complainant. Consequently, the Respondent was infringing Complainant’s trademark rights. After contacting the provider, who forwarded the Complainant’s request to cease and desist, the Respondent changed the website located at the disputed domain name. The Complainant says that it is unlikely that the Respondent in 1996, was not aware of the fact that LENCO was a well-known trademark. It is even less likely that in 2010, after contacting the Respondent several times, the Respondent was not aware of the LENCO trademark. In spite of the absence of legitimate rights, Respondent was not willing to transfer the domain name.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant provides screenshots of the Respondent’s website, which appears to provide a simple search tool under the heading “L”. However, the Respondent’s search engine provides nothing but “sponsored results”, unrelated to the Respondent’s business. Essentially, the “sponsored results” are nothing but a list of links to the websites of companies that pay for the generation of traffic. When this list is populated, the search terms are merely incorporated in the links in such a way that someone who clicks one of the “sponsored results” is directed to the website of the respective companies. Therefore, the website at the disputed domain name is not a search engine, but a “click through” link generator. The Complainant provides copies of screenshots that it says show that the Respondent’s search engine is nothing but a facade. The Complainant says that the Respondent simply presents a list of links to websites from which the Respondent receives (directly or indirectly) revenues for the traffic the Respondent generates to these sites. The Complainant refers to a line of UDRP decisions finding that providing links to other commercial websites unrelated to the Respondent’s business does not amount to a bona fide offering of goods and services.
Additionally, the Complainant says that the Respondent is not commonly known by the domain name. The Respondent is not making a legitimate, non-commercial or fair use of the disputed domain name. The Complainant says that, according to previous UDRP decisions, using domain names for advertising links can only represent legitimate interests for purposes of Paragraph 4(c) of the Policy, when (cumulatively): (i) the Respondent has made good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to trademarks held by others; (ii) the domain name is not identical or confusingly similar to a famous trademark; and (iii) there is no evidence that the Respondent had actual knowledge of the trademark. The Complainant says that none of these requirements are met in the current case.
The Complainant says that the Respondent has also registered and used the disputed domain name in bad faith. According to the Policy, the presence of bad faith in case of acquisition of a domain name may be demonstrated where a respondent has, by using the domain name, attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website. The fact that the Respondent chose a domain name that is legally identical to the Complainant’s mark is sufficient evidence that the Respondent intentionally suggests a link between its website and the Complainant; and intentionally creates a likelihood of confusion with the LENCO trademark. The Complainant says that it is difficult to conceive of a good-faith reason for the Respondent to have selected the disputed domain name, precisely because of the fame and distinctiveness of the Complainant’s LENCO mark, and especially as the mark is an invented word without a secondary meaning. B. Respondent
The Respondent did not reply to the Complainant’s contentions or make any other communication in connection with this case. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed 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; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. A. Delay in bringing Complaint
As noted above, the disputed domain name was first registered in 1996. This means that the disputed domain name was registered around 15 years before the Complainant filed the Complaint. The Complainant provides no explanation as to why it took so long to file the Complaint. Such a lack of explanation is notable. The disputed domain name is registered in the “.com” TLD, which is one of the more obvious domain spaces in which a domain name (that in this case wholly comprises a trademark) may be registered.
However, as this Panel has discussed in other cases, a delay in bringing a complaint does not provide a defense per se under the Policy. See Chocolaterie Guylian, Naamloze Vennootschap (N.V.) v. Zeugma,WIPO Case No. D2010-2256. While the disputed domain name was first registered before the commencement of the Policy, the Registrar in this case has confirmed that the Policy applies to the domain name. The Complainant has otherwise demonstrated rights in a mark subsisting before the registration of the disputed domain name. In choosing not to respond, the Respondent has provided no evidence as to whether the Complainant’s delay should be held against it. B. Identical or Confusingly Similar
The Panel finds that the Complainant has sufficiently demonstrated that it has rights in a mark for the purpose of paragraph 4(a)(i) of the Policy. In the Panel’s view, it is self-evident that the disputed domain name is identical to that mark. The Complainant’s mark is wholly incorporated in the disputed domain name. The only difference is the “.com” extension. It is well-established that the “.com” extension is to be disregarded for the purpose of comparison. As such, there is no distinguishing feature between the Complainant’s mark and the disputed domain name which wholly incorporates that mark.
Accordingly, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish, also, that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant establishes a prima facie case against the Respondent on this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with the Complainant. See, e.g., Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270.
In this case, the Panel finds that the Complainant has presented a prima facie case against the Respondent. The Respondent has chosen not to respond to that Complaint. There is no evidence in the case file which suggests to the Panel that the Respondent might have a right or legitimate interest in the disputed domain name. As indicated in the Complaint, the Respondent has used the disputed domain name to revert to a simple ‘search’ website. By choosing to submit no reply, the Respondent has provided no explanation or evidence as to what the connection is between the term “lenco” and its activities. In the absence of such an explanation, the Panel considers that the only reasonable inference is that the Respondent registered the disputed domain name to exploit the value of the Complainant’s mark. Such a use cannot be a basis for a right or legitimate interest under the Policy.
This does not, however, mean that the Complainant has established a strong case against the Respondent. The Complainant provided little direct evidence of the reputation of its mark, beyond a mere list of the number of its registered marks in a number of countries. The Complainant provided no evidence of the extent of its reputation on the Internet, its market share, the extent of its advertising or revenue, or its reputation in a particular segment of the relevant market. Despite this, establishing a prima facie case requires only that the Complainant establish a colourable case against the Respondent. The Panel considers that the Complainant has established such a case, by its argument and evidence. Further, the case file otherwise contains no evidence which suggests that the Respondent has rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Bad faith may be demonstrated where the evidence indicates that the Respondent registered and used the disputed domain name primarily with a view to taking unfair advantage of the Complainant’s registered trademark rights and reputation. See e.g. SingTel Optus Pty v. Xnet,WIPO Case No. D2004-0734.
In this case, there is no direct evidence as to the Respondent’s motivation in registering and then using the disputed domain name. However, as indicated in the Complaint, the Respondent’s website reverted (for at least some period) to advertisements for commercial products. There is no evidence of an objective connection between the Respondent and the term “lenco”. The Complainant states that the term “lenco” is an invented term and is, as such, a term which only has meaning in connection with the Complainant’s products. The Complainant’s registrations for LENCO substantially predate the registration of the disputed domain name. Accordingly, there is an inference that the Respondent was aware of the Complainant’s mark when it registered and then used the disputed name.
The Complainant has therefore established its case under paragraph 4(a)(iii) of the Policy. 7. Decision
For 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.
James A. Barker
Sole Panelist
Dated: April 27, 2011
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