Complainant is Lucifer Lighting Company, San Antonio, Texas, United States of America, represented by Ladas & Parry, Digital Brands Practice, United States of America.
Respondent is Ben Cameron, Daytona Beach, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2013. On April 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on April 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 2, 2013.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on May 13, 2013. 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’s Company, Lucifer Lighting, has been manufacturing and selling high quality lighting and related goods for over 30 years under the LUCIFER LIGHTING name.
Complainant is the owner of U.S. Trademark Registration No. 1217441 for the mark LUCIFER for “Electrical lighting systems for interior lighting, comprising light bulbs, brackets, mountings, finished strips, trim, and light covers”, registered on November 23, 1982.
In addition, Complainant owns worldwide registrations for the LUCIFER trademark in Canada, Mexico, the United Kingdom of Great Britain and Northern Ireland, Germany, and the European Union, amongst others.
Complainant registered the domain on June 4, 1996
Respondent registered the disputed domain name on November 13, 2011. 5. Parties’ Contentions A. Complainant
With respect to paragraph 4(a)(i) of the Policy, Complainant alleges that:
Lucifer Lighting owns trademark registrations for the LUCIFER mark in the U.S. and other countries as noted above.
The disputed domain name incorporates in its entirety Complainant’s LUCIFER mark and Lucifer Lighting name, merely omitting the “ing” from “lighting.” The Panel should, therefore, find that the domain name is confusingly similar to Complainant’s trademarks under Policy 4(a)(i).
With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:
Without Complainant’s authorization or consent, Respondent registered the disputed domain name and used the disputed domain name to divert Internet traffic to the websites of Complainant’s direct competitors. The use demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain
Although the disputed domain name originally resolved to a website featuring links to Complainant’s direct competitors, Respondent deactivated the website upon receipt of Complainant’s cease and desist letter. Respondent is now passively holding the domain name.
Complainant has not authorized, licensed or consented to Respondent’s registration and use of a domain name incorporating the LUCIFER trademark and/or Lucifer Lighting name, or any confusingly similar variation of Complainant’s marks. To the best of Complainant’s knowledge there are no current trademark applications or registrations in the name of Respondent for any mark incorporating LUCIFER anywhere in the world. Moreover, nothing in the WhoIs information related to the disputed domain name at issue indicates that Respondent is commonly known by the designation LUCIFER or LUCIFER LIGHTING.
With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:
Respondent registered the disputed domain name which is confusingly similar to Complainant’s name and trademark. Respondent used the disputed domain name to divert Internet users to Respondent’s website, where Respondent likely garnered click-through fees for each Internet user who selects one of the links, thus using the disputed domain name to attract Internet users for commercial gain. Prior to the filing of the Complaint the links on Respondent’s website further diverted Internet traffic to websites that promote the goods and services of Complainant’s direct competitors. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith.
Respondent must have been aware of Complainant’s rights in its LUCIFER mark and LUCIFER
LIGHTING name when Respondent acquired the disputed domain name because the disputed domain name incorporates Complainant’s LUCIFER trademark in its entirety and merely omits the “ing” from the “lighting” in the LUCIFER LIGHTING name, the associated website content contains links concerning lighting and related goods, and the website content links to websites advertising the direct competitors of Complainant.
Although the disputed domain name originally resolved to a website redirecting Internet users to Complainant’s direct competitors, Respondent is now passively holding the disputed domain name. UDRP panels have consistently held that such passive holding and nonuse of a domain name consists of bad faith registration and use under the Policy.
As further evidence of bad faith registration and use, on December 8, 2012, Complainant sent Respondent a cease-and desist letter regarding the disputed domain name. Respondent’s failure to counter the allegations of the cease-and-desist letter and rather simply shut down the website amounts to adoptive admission of the allegations and constitutes evidence of bad faith.
For the above reasons, the disputed domain name was registered and used in bad faith. B. Respondent
Respondent did not timely reply to the Complainant’s contentions.
Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations in the Complaint, and may draw appropriate inferences. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(e) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”). 6. Discussion and Findings A. Identical or Confusingly Similar
Given Complainant’s trademark registrations and over 30 year use of the LUCIFER trademark and the Lucifer Lighting tradename in the United States and worldwide, the Panel finds that Complainant has trademark rights in the LUCIFER mark.
The Panel also finds that the disputed domain name is either identical or confusingly similar to Complainant’s LUCIFER mark. The disputed domain name incorporates Complainant’s entire registered trademark. Moreover Complainant uses the “Lucifer Lights” as a company name. The mere addition of a generic or descriptive term does not avoid confusion, especially when, as here, Complainant uses the same word or phrase as a tradename or service mark. Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin WIPO Case No. D2003-0888. (The fact that the word “autoparts” is added to Complainant’s trademark does not eliminate the identity, or at least the similarity, between Complainant’s trademark and the disputed domain name, as “autoparts” is a descriptive component of the disputed domain name.) See also, Bayer Aktiengesellschaft v. Dangos & Partners,WIPO Case No. D2002-1115(addition of generic words “healthcare” to form domain name deemed "confusingly similar to the BAYER trademark"); Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037 (addition of “ordinary descriptive” term “buy” to mark LANTUS in domain “does nothing to dispel and serves only to reinforce the connection in the public mind between the word LANTUS and the Complainants, and therefore increases the risk of confusion”); PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696(finding domains such as , , , and confusingly similar to plaintiff’s PEPSI mark; stating that “[t]hat the mere addition of common terms such as ‘sports,’, ‘basketball’ or ‘soccer’ to the PEPSI mark is of no import”); The addition of the “.com” TLD in both of Respondent’s marks likewise does nothing to avoid confusion. Busy Body, Inc. v. Fitness Outlet Inc.,WIPO Case No. D2000-0127 (“the addition of the generic top-level domain (gTLD) name ‘.com’ is … without legal significance since use of a gTLD is required of domain name registrants”).
The Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights. Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
In order for Respondent to demonstrate rights or legitimate interests in the disputed domain name, it must show:
(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name.
It is a complainant’s burden to prove that a respondent lacks rights or legitimate interests in a disputed domain name. National Construction Rentals, Inc. v. T, Inc.,WIPO Case No. D2009-0147. Because it is difficult to prove a negative assertion, the threshold is low. A complainant need only make a prima facie showing on this element, at which point the burden shifts to respondent to present evidence that it has some rights or legitimate interests in the domain name at issue. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. The ultimate burden of proof, however, remains with complainant. Id. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141.
The Panel finds that the above facts establish a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name. Moreover, Respondent has not rebutted such a prima facie showing and therefore Complainant has succeeded with respect to this Policy element. C. Registered and Used in Bad Faith
Respondent did not contest Complainant’s allegations of bad faith registration and use. Also, it is highly unlikely that Respondent was unaware of Complainant’s trademark rights when Respondent registered the disputed domain name on November 13, 2011, more than 30 years after the Complainant began using its LUCIFER trademark.
Under the Policy, it is evidence of bad faith that, “by using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with complainant’s mark as to source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” Paragraph 4(b)(iv) of the Policy.
The evidence shows that the Respondent’s website at “www.” : linked to websites that sell competing lighting products as of the date that Complainant’s counsel sent a cease and desist letter to Respondent about the disputed domain name. Exhibit K of the Complaint shows that the date of the cease and desist letter was December 6, 2012. Exhihit I of the Complaint shows sponsored listings with links to: “Lamps Plus Lighting,” “Save on Lighting Fixtures,” “Buy Chandeliers on Sale,” “Home and Bath Lighting,” and “Pendant Lights Super Sale”. These links redirect Internet users to websites selling the products of Complainant’s direct competitors, respectively “www.LampsP”, “www.LightingS”, “www.Residential-L”, “www.CountryD”, and “www.H”.
Complainant states that Respondent did not reply to the cease and desist letter. Respondent did, however, immediately after receiving the cease and desist letter, take down offending content, but Respondent continues to hold the disputed domain name. Complainant alleges that this amounts to “passive holding”.
Respondent’s discontinuation of the links to competitors does not prevent this Panel from inferring bad faith use. 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 disputed domain name be transferred to the Complainant.
Lawrence K. Nodine
Sole Panelist
Date: May 27, 2013
Full & Egal Universal Law Academy