The Complainant is LPG Systems of Valence, France, represented by CSC Digital Brand Services AB, France.
The Respondent is Viana Rugaybat of Limassol, Cyprus. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2013. On December 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2013, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on January 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2014. The Center received three informal email communications from the Respondent on January 24, 2014.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on January 30, 2014. 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.
As a preliminary matter, the Panel notes the Respondent’s contention that it was not provided with sufficient notice of the Complaint by the Center. The case file demonstrates that the Notification of Complaint and Commencement of Administrative proceeding was sent to the email address designated by the Respondent on the WhoIs for the disputed domain name on January 3, 2014. The Center did not receive any delivery error message. The Panel notes that the same documents were sent to the Respondent by courier and that the courier company indicated successful delivery thereof on January 10, 2014. In these circumstances, the Panel is satisfied that the Center has discharged its obligations to notify the Respondent of the administrative proceeding in a fair and proper manner, all in accordance with paragraph 2(a) of the Rules.
The Panel notes that the Respondent did not make contact with the Center regarding the administrative proceeding until two weeks had passed after the delivery of the requisite notification into the Respondent’s hands by courier. Such notification contained clear information regarding the deadline for filing the Response, namely January 23, 2014. The Panel also notes that despite having been informed of the appointment of the Panel by the Center, the Respondent has not made any formal request for an extension of time in which to file a formal Response. The Respondent has, however, found the time to file an informal response together with supporting documentation. Furthermore, despite the passage of time since the Respondent first contacted the Center, the Respondent has not attempted to file a late Response by way of unsolicited supplemental filing.
In all of the above circumstances, the Panel considers that the Respondent has received a fair opportunity to present its case in accordance with paragraph 10(b) of the Rules. The Panel will therefore proceed to a Decision on the Complaint. The Panel will take the Respondent’s informal response into account however will accord this less weight than a fully compliant Response as it lacks the certification of completeness and accuracy required by paragraph 5(b)(viii) of the Rules. 4. Factual Background
The Complainant is an entity based in France which specializes in the manufacture of machines for cellular stimulation used in the treatment of connective tissue. The Complainant maintains a worldwide network of nearly seventy official distributors including entities having commercial territories with which the Respondent appears to be connected, namely Serbia and Cyprus. One of the Complainant’s devices, known as “Cellu M6”, was introduced in 1986. From 2002, the Complainant equipped this device with an interchangeable attachment named a “Keymodule”. The Complainant states that in France the “Cellu M6 Keymodule” is used by more than 16,100 professionals including physiotherapists and estheticians.
The Complainant is the owner of a figurative trademark for a device featuring the letters “LPG”, namely International Registered Trademark no. 636962, registered on June 6, 1995 in international classes 3, 10, 16, 38, 41 and 42 and designated for a variety of territories including Cyprus and Serbia. The Complainant is also the owner of a word mark for the word “keymodule”, namely French Registered Trademark no. 02 3 182 002, registered on September 5, 2002 in international classes 10 and 38. In addition to these marks, the Complainant maintains a variety of similar marks relative to other territories.
The disputed domain name was created on June 4, 2012. The website associated with the disputed domain name offers repair services for the Complainant’s “Cellu M6 Keymodule” heads and promotes the sale of competitive machines. The Complainant states that one of the machines on offer is a potential counterfeit product. The mailing address on the said website is an address in Serbia and the site is available to varying extents in different languages, namely English, Italian, Serbian and Russian. The said site contains a disclaimer stating “LPG Keymodule repair is not in any way related to LPG Systems” which is found among other text on a payment page and is displayed in small type.
The Parties engaged in brief correspondence initiated by a cease and desist letter issued by the Complainant on September 4, 2012 and replied to by the Respondent on September 12, 2012. A further cease and desist email was sent to the Respondent by the Complainant on July 5, 2013 however this did not elicit a response.
The Complainant has conducted searches in the Serbian Business Register Agency for a company or an entrepreneur with the Respondent’s business name however no results were returned. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to trademarks in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant acknowledges that its LPG trademark is figurative however contends that the word element is prominent and that it is obvious that the Respondent is targeting the mark via the disputed domain name as this contains another trademark owned by the Complainant. The Complainant submits that the LPG mark is protected as a registered trade name in France and has become a distinctive identifier associated with the Complainant.
The Complainant notes that its trademarks predate the creation date of the disputed domain name and argues that its LPG and KEYMODULE marks had acquired strong notoriety internationally including in Cyprus before such creation date. The Complainant adds that Internet searches on the Google search engine for “lpg keymodule” provide relevant information, press articles and references to the Complainant in the first results.
The Complainant asserts that the dominant components of the disputed domain name are its LPG and KEYMODULE marks and that the additional word “repair” does not distinguish the disputed domain name therefrom. The Complainant submits that it has not found any competitive registered trademarks or trade names corresponding to the disputed domain name. The Complainant states that it has not found any competitive rights that would suggest that the name “lpgkeymodulerepair” could be used in any way that would confer rights and legitimate interests upon the Respondent. The Complainant notes that it has not given any license or authorization of any kind to the Respondent to use the trademarks LPG and KEYMODULE.
The Complainant notes that the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. The Complainant submits that it is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the brands LPG and KEYMODULE at the time of registration of the disputed domain name and asserts that it is the fame of these brands that motivated the Respondent’s registration. The Complainant argues that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant submits that an analysis of the website associated with the disputed domain name shows that the Respondent not only offers repair services but promotes several third party machines on its Serbian language webpage which are dedicated to the Complainant’s field of expertise and core business. The Complainant asserts that such machines are thus competitive to those of the Complainant. The Complainant also notes that the said website offers blade rollers, body suits and filters under the heading “consumable LPG” but does not mention whether such consumables are original or third party products.
The Complainant notes the presence of a machine described as a “used device” on the Respondent’s website which it suspects is counterfeit. The Complainant states that such machine may infringe the Complainant’s patents, trademarks and designs. The Complainant gives details supporting its suspicions based upon investigations at the likely site of manufacture in China. The Complainant states that it will shortly seek to enforce its rights against the alleged manufacturer in the Chinese courts. The Complainant indicates that it has found this device on a different website operated by the Respondent and that the Respondent has voluntarily removed all references to the Complainant from that website.
The Complainant notes that its devices are dedicated to esthetical and medical treatments such that they are sensitive products where the quality of results and the safety of users must be guaranteed.
The Complainant argues that the disclaimer on the website associated with the disputed domain name cannot be considered as effective or as an accurate disclosure of the Respondent’s relationship with the trademark owner. The Complainant also asserts that the Respondent fails the test laid down in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
The Complainant contends that its trademarks have a well-known status and that professionals’ awareness thereof is significant and substantial. The Complainant refers to the case of LPG Systems v. Marie Lauret,WIPO Case No. D2013-0333 in which the panel stated that the Complainant’s CELLU and M6 trademarks were well-known in their sector, such that the domain name in that case had not been registered by chance. The Complainant states that the disputed domain name is used to attract professionals by inclusion of the LPG and KEYMODULE trademarks and that it is obvious that the Respondent knew of such trademarks at the time of registration. The Complainant asserts that the disputed domain name is designed to attract Internet users looking for the Complainant’s services and to cause confusion with the Complainant’s marks and websites. The Complainant also contends that the Respondent’s use of the disputed domain name constitutes a deliberate “bait and switch” operation. B. Respondent
The Respondent did not submit a formal Response in the administrative proceeding. However, the Respondent sent three informal emails to the Center on January 24, 2014 following notification of the Complaint. In the first of these, the Respondent states that it has not received any email regarding the Complaint and cannot therefore respond. The Respondent also notes that time has run out. The Respondent adds that it makes the following contentions in the event that the Complaint relates to the disputed domain name. The Respondent states that the Complainant’s LPG trademark is figurative and not a word mark. The Respondent asserts that the Complainant’s KEYMODULE trademark is not registered having been refused registration as a European Community Trademark. The Respondent submits that the word “repair” is not a registered trademark.
In addition to the above contentions, in its second email of January 24, 2014, the Respondent forwards a copy of a database extract in respect of the Complainant’s application for a European Community Trademark no. 3062585 for the word mark KEYMODULE, which application was refused. The Respondent also discusses further the Complainant’s LPG trademark, noting that the figurative nature thereof means that the graphic logo and color of the mark is protected and not the word LPG. The Respondent adds that the latter is much more commonly used as an abbreviation for liquid petroleum gas and as such is not capable of registration as a trademark.
In its final email of January 24, 2014, the Respondent states that the period for calculation of the due date for Response should have been the date of receipt by the Respondent of formal notification by courier, namely January 10, 2014. The Respondent adds that emails may have been caught in a spam trap and would have been deleted. The Respondent submits that the period of notice cannot be two weeks. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant asserts that the disputed domain name contains two of its trademarks, first its LPG figurative mark and secondly its KEYMODULE word mark. The Complainant’s case is that despite its figurative nature, the LPG mark may nevertheless be examined in terms of the Panel’s assessment of identity or confusing similarity under paragraph 4(a)(i) of the Policy. The implication of the Respondent’s remarks on this subject is that as a mere logo, protected with reference to font and color only, the LPG mark should be disregarded.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) deals with the question of figurative trademarks at paragraph 1.11 under the heading “Are disclaimed or design elements of a trademark considered in assessing identity or confusing similarity?” The consensus view is given as follows:
“[…] as figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark. However, design elements in a trademark may be relevant to the decision in certain circumstances - such as where, for example, they form an especially prominent or distinctive part of the trademark overall. Some panels have found it to be a matter of impression in the circumstances of each case. Where the entire textual component of a complainant’s relevant trademark has been disclaimed, or the only protectable component of such mark is comprised of design elements which generally cannot be represented in the alpha-numeric string of a domain name, then (absent a showing of acquired distinctiveness through use of the relevant mark) the complainant may lack any relevant rights under the UDRP on the basis of such mark, rendering moot any assessment of the disputed domain name’s identity or confusing similarity with it.”
The Panel respectfully adopts the consensus view. In the present case, there is no disclaimer of any textual content in the Complainant’s LPG trademark. In the Panel’s opinion, the textual component is clearly dominant in that the mark contains no design elements apart from the three letters “LPG” presented in a blue colored stylized typeface which features reduced horizontal scaling such that the letters appear joined to one another. In these circumstances, the Panel finds that it is appropriate to compare the alpha-numeric string “LPG” with the disputed domain name for the purposes of paragraph 4(a)(i) of the Policy.
With regard to the Complainant’s KEYMODULE mark, the Respondent refers to the fact that the Complainant’s corresponding application for a European Community Trademark (word mark) has been refused. It is not immediately clear to the Panel why the Respondent has cited this application, given that the Complainant relies not upon any European Community Trademark but rather upon its French trademark as noted in the factual background section above. The Respondent does not challenge or raise any issue regarding the latter which appears to the Panel to be in full force and effect.
It occurs to the Panel that the point which the Respondent may be trying to make is that the Complainant’s KEYMODULE marks do not cover the territory where the Respondent is based. If so, that argument does not avail the Respondent. It is well established in cases under the Policy that the location of a registered trademark is irrelevant for the purposes of the assessment in terms of paragraph 4(a)(i) of the Policy (see for example the discussion in paragraph 1.1 of the WIPO Overview 2.0).
Accordingly, when both of the Complainant’s LPG and KEYMODULE marks are compared with the disputed domain name it can be seen that they appear side by side, in that order, at the beginning of the second level of the disputed domain name. It has been held in many previous cases under the Policy that the incorporation of a trademark in its entirety in a domain name is typically sufficient to establish that such domain name is confusingly similar to the incorporated trademark. Furthermore, in the present case, the Panel considers that the use of two of the Complainant’s marks as they appear in the disputed domain name exacerbates the impression of confusing similarity as these marks indicate both the Complainant’s trading name and one of its products.
The second level of the disputed domain name is completed by the addition of the generic word “repair”. Numerous previous decisions under the Policy have found that the use of descriptive or generic words, or abbreviations thereof, in addition to a trademark in a domain name do not prevent the domain name from creating a likelihood of confusion. One or more descriptive elements cannot remove the overall impression made on the public by the trademark which is the dominant part of the domain name (Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 and see also paragraph 1.9 of the WIPO Overview 2.0). In this case, the Panel considers that the dominant element of the disputed domain name is the two trademarks of the Complainant.
The generic Top-Level Domain (“gTLD”) “.com” is typically disregarded for the purposes of comparison under paragraph 4(a)(i) of the Policy on the grounds that this is required for technical reasons only and is wholly generic.
In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. In the present case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that it has provided no license or authorization to the Respondent in respect of its trademarks, that the Respondent has never had a business relationship with the Complainant and that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of such rights or legitimate interests.
Although the Respondent does not go into any detail, it appears to the Panel that its case is directed to paragraph 4(c)(i) of the Policy, namely that in using the disputed domain name in connection with repair services for the Complainant’s devices the Respondent is making a bona fide offering of goods and services. In the recent case of Aktiebolaget Electrolux v. Pablo Rodriguez Guirao,WIPO Case No. D2013-1223, the panel considered that the offering of after-sales repair services for ELECTROLUX and other branded appliances could potentially be a bona fide offering of services and consequently that the respondent in that case might therefore have a legitimate interest in respect of the domain name . In order to determine the question, the panel in that case had regard to the criteria established by the case of Oki Data Americas, Inc. v. ASD, Inc, supra (“the Oki Data criteria”), while acknowledging that it had focused on authorized sales or service agents rather than unauthorized repair services per se. The predominant view among UDRP panelists, as also expressed in Aktiebolaget Electrolux v. Pablo Rodriguez Guirao, supra, is that the Oki Data criteria are capable of applying regardless of whether or not a respondent is an authorized distributor and there seems to the Panel to be no reason to make any distinction in analogous circumstances between providers of authorized or unauthorized repair services.
The Panel therefore considers that the Oki Data criteriamay usefully be examined in the present case. The assessment under these criteria considers whether (a) the respondent is actually offering the goods or services at issue; (b) the respondent is using the site to sell only the trademarked goods, because it might otherwise be using the trademark to bait Internet users and then switch them to other goods; (c) the site is accurately disclosing the registrant’s relationship with the trademark owner; and (d) the respondent is trying to corner the market in all domain names thus depriving the trademark owner of reflecting its own mark in a domain name.
It is on such an assessment that the Panel must part company with the panel in Aktiebolaget Electrolux v. Pablo Rodriguez Guirao, supra, as the facts of each case are significantly different. In particular, the complainant in Aktiebolaget Electrolux made no allegation that the respondent was using the domain name concerned to support or sell third party products in the same field as the complainant. In the present case while the Respondent does appear to be offering repair services, thus fulfilling the first criterion, the Complainant provides evidence that the Respondent’s website is also promoting third party goods. The Respondent’s web pages headed “Keymodule Repair”, which invite the visitor to make contact for more information, appear to relate to products which are not produced by the Complainant.
Of more concern is the issue raised by the Complainant that one item on the Respondent’s website may be a counterfeit device. This contention is supported by detailed evidence of an investigation which was produced with the Complaint. Such evidence and serious allegations call for an explanation from the Respondent which is not forthcoming in the present case. The Panel is in no doubt that a party believing that it had rights and legitimate interests on the basis of its operation of a repair service would have sought urgently to address this particular aspect of the Complainant’s case above all else. In the Panel’s view, the absence of such explanation, or indeed any response on this point whatsoever, raises the reasonable inference that the Complainant’s suspicions may well be justified.
The remaining Oki Data criterion that is of relevance is the question of whether the Respondent has accurately disclosed its relationship, or lack thereof, with the Complainant. The Panel notes that while there is a disclaimer on the site, this does not appear on the home page and is displayed in small type along with other terms on the payment page. Indeed, the text could best be described as “buried” in a set of general terms and conditions, such that only the most generous of observers would consider this as sufficient disclosure.
On the basis of the above analysis, the disputed domain name does not fall within the Oki Data criteria and the Respondent cannot therefore claim use in connection with a bona fide offering of goods and services. In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
In the present case, there is no doubt in the Panel’s mind that the Respondent registered the disputed domain name with the Complainant’s rights in mind and with intent to target these. The record shows that the Respondent has used the disputed domain name to offer products competitive with those of the Complainant and its use of the Complainant’s mark in these circumstances is in the opinion of the Panel likely to lead to confusion on the part of Internet users seeking the Complainant’s products and services. It is thus a factor indicating registration and use in bad faith. The Panel is not able to reach a concluded view as to whether the item on the Respondent’s website is indeed a counterfeit version of one of the Complainant’s products. That said, the Panel finds the Respondent’s silence regarding the Complainant’s serious allegation to be a further factor pointing in the direction of registration and use in bad faith.
With regard to the Respondent’s submissions in its informal response, the Panel notes that the content of the website associated with the disputed domain name is dedicated to the field in which the Complainant operates and in which the Complainant’s marks are well-known. As with the domain name involved in the case of LPG Systems v. Marie Lauret,WIPO Case No. D2013-0333, the disputed domain name in the present case could not on any view have been registered by chance. Placed in this context, the Respondent’s approach in its submissions of seeking to undermine the nature of the Complainant’s trademarks, including making the argument that the term “LPG” commonly refers to liquid petroleum gas, are in the Panel’s view merely an attempt at obfuscation and do not advance any case which demonstrates good faith registration or use.
In all of these circumstances the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith and thus that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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.
Andrew D. S. Lothian
Sole Panelist
Date: February 13, 2014
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