The Complainant is Lumenpulse Lighting Inc. of Montreal, Quebec, Canada, represented by Burns & Levinson LLP, United States of America (“United States”).
The Respondent is Dipak Iswalkar of Mumbai, Maharashtra, India. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Trunkoz Technologies Pvt Ltd. d/b/a OwnR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2015. On November 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 19, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2015.
The Center appointed Lynda M. Braun as the sole panelist in this matter on December 15, 2015. 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.
The Panel has determined that the language of the proceeding is English. Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement […].”
The Complainant commenced a lawsuit in India in August 2015 which included passing off claims involving bad faith use of the Disputed Domain Name. 4. Factual Background
The Complainant is a well-known, publicly-traded company incorporated under the laws of Canada that manufactures, designs, develops, and sells high performance, specification-grade LED lighting solutions. The Complainant has been in business continuously for nine years, offering a wide variety of sustainable interior and exterior luminaires that are relied upon by designers to solve all types of lighting challenges, from small office interiors to large stadiums and resorts. The Complainant’s lighting solutions have been installed in over 5,000 projects globally. The Complainant has sold its products and services bearing the LUMENPULSE Mark throughout the United States and worldwide, including in India.
The Complainant owns trademark registrations for LUMENPULSE (the “LUMENPULSE Mark”) in thirty four jurisdictions, including Canada, Australia, Hong Kong, China, the European Union (covering twenty eight countries), the United States, and Singapore, with the earliest dating back to July 23, 2011.
The Complainant registered the domain name in 2006 and has used it continuously since that time to promote its goods and services through its official website at “www.”.
The Disputed Domain Name was created on July 23, 2013. The Disputed Domain Name resolves to a website in which products and services bearing the LUMENPULSE Mark are offered for sale.
After becoming aware of the Disputed Domain Name, counsel for the Complainant contacted the Respondent on several occasions to request that the Respondent cease its use of the LUMENPULSE Mark and transfer the Disputed Domain Name to the Complainant. The Complainant has not received a response from the Respondent and the Respondent continues to use the Disputed Domain Name. 5. Parties’ Contentions A. Complainant
The following are the Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the Complainant’s trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to it, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(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 was registered and is being used in bad faith. A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the LUMENPULSE Mark based on longstanding use as well as its trademark registrations for the LUMENPULSE Mark in many countries worldwide. The Disputed Domain Name consists of the LUMENPULSE Mark in its entirety along with the descriptive term “lighting”, followed by the generic Top-Level Domain (“gTLD”) “.com”.
It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive or generic word. Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795. The addition of the descriptive word “lighting” does nothing to distinguish the Disputed Domain Name from the Complainant’s LUMENPULSE Mark. See, e.g., Eveready Battery Company, Inc. v, Ho Nim,WIPO Case No. D2010-1799 (the addition of a descriptive word such as “lighting” to a well-known trademark such as ENERGIZER does not prevent a finding of confusing similarity).
Finally, the addition of a gTLD such as “.com” in a domain name may be technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a domain name is confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its LUMENPULSE Mark. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Nor does the Complainant have any business relationship with the Respondent.
Finally, the Disputed Domain Name resolves to a website that offers goods and services in direct competition with the Complainant’s goods and services and attracts customers on the basis of confusion between the Respondent and the Complainant. Under these circumstances, the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods and services. See FIL Limited v. , Domain Discreet Privacy Service/Igor Ivanov,WIPO Case No. D2014-0131.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, the registration of a domain name that is confusingly similar to a registered trademark by an entity that has no relationship to that mark may be sufficient evidence of bad faith registration and use. See AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin,WIPO Case No. D2002-0440. In addition, the incorporation of a well-known trademark into a domain name by a registrant with no plausible explanation for the usage is an indication of bad faith. See Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273.
Second, the Panel finds that the Respondent registered and used the Disputed Domain Name in bad faith by attempting to disrupt the Complainant’s business and to divert Internet users who are searching for the Complainant’s products to the Respondent’s website. The Respondent was attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s LUMENPULSE Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use has been done for the specific purpose of trading on the name and reputation of the Complainant and its LUMENPULSE Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy.”).
Third, bad faith may be found where the Respondent knew or should have known of the registration and use of the LUMENPULSE Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale,WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name after the Complainant obtained its numerous trademark registrations for the LUMENPULSE Mark in many countries worldwide. The use by the Respondent of the Disputed Domain Name that resolves to a website that is confusingly similar to the Complainant’s official website makes it disingenuous for the Respondent to claim that he was unaware of the Complainant’s trademark rights. See Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights in the complainant’s trademark).
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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.
Lynda M. Braun
Sole Panelist
Date: December 20, 2015
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