The Complainant is Lumenpulse Lighting Inc. of Montreal, Canada, represented by Burns & Levinson LLP, United States of America (“United States”).
The Respondents are Abhay, Lumenpulse Technologies of Mumbai, India and Vinay Vasant Marathe, Maharashtra I. Directory of Thane, India. 2. The Domain Names and Registrars
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR and the disputed domain name is registered with Trunkoz Technologies Pvt Ltd. d/b/a OwnR (the “Registrars”). These domain names are referred to together in this decision as the “Disputed Domain Names”. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2016. On July 25, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On July 26, 2016, the Registrars transmitted by email to the Center their verification responses 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 August 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2016.
The Center appointed Nick J. Gardner as the sole panelist in this matter on September 2, 2016. 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 is a Canadian company established in 2006. It is a manufacturer and supplier of lighting products. Its 2015 worldwide revenues were in excess of 100 million Canadian dollars. It sells its products internationally including in India. It markets its products under the tradename LUMENPULSE and has done so since 2006. LUMENPULSE is a registered trademark in many jurisdictions, for example United States registration 4,071,210 registered on December 13, 2011 in class 11.
The Disputed Domain Names were both registered on January 25, 2016. The Disputed Domain Names are linked, via redirection, to a website at “” which offers for sale products which compete with those of the Complainant.
The Complainant filed an action in passing off in India in August 2015 against Lumenpulse Lighting Technologies Represented by Abhay Shah. This action was based on allegations as to a pattern of unauthorized use of the LUMENPULSE Marks, including bad faith use and registration of a confusingly similar domain name by the Defendant to pass off its website and services as authorized, associated and/or endorsed by the Complainant (the “Indian Lawsuit”). On October 19, 2015, after a preliminary hearing, the High Court of Judicature of India issued a preliminary injunction enjoining the Defendant and others “from using or enabling others to use the said trademark LUMENPULSE or any other trademark deceptively similar thereto” during pendency of the case (the “Indian Order”).
The word “lumenpulse” is a coined word. It combines two words lumen and pulse which each have meanings of relevance to lighting, but which in combination are meaningless save in relation to the Complainant and its products. 5. Parties’ Contentions A. Complainant
The Complainant’s case can be summarized as follows.
a) The Disputed Domain Names are each confusingly similar to the LUMENPULSE trademark as (i) they incorporate in their entirety the Complainant’s well-known and distinctive LUMENPULSE trademark or a misspelling thereof, and (ii) the combination thereof with the generic term led (an abbreviation for light emitting diode which commonly refers to a type of lighting) is insufficient to distinguish the Disputed Domain Names from the Complainant’s trademark.
b) The Respondents do not have any rights or legitimate interests in the Disputed Domain Names.
c) The Respondents use the Disputed Domain Names in bad faith as the website to which the Disputed Domain Names resolve, make use of the Complainant’s trademark to sell products which compete with those of the Complainant. This website misleadingly suggests the products concerned are those of the Complainant. The Complainant also relies on the Indian Lawsuit and the Indian Order as showing bad faith on the part of the Respondent.
d) The Disputed Domain Names are operated by a common underlying registrant as evidenced by the WhoIs registry print-offs dated April 19, 2016 showing common ownership by Mr. Abhay Shah, the common email address between the Registrants and further supported by the fact that both of the Disputed Domain Names redirect to the same website. B. Respondent
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings Procedural Matters
No Response
The Panel notes that no communication has been received from the Respondents. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrars then the Panel again adopts the approach set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Over view 2.0”) namely, “once the WIPO Center has notified the Complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondents’ failure to file any Response. While the Respondents’ failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondents’ default (see e.g. Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909). Identity of the Respondents
The Respondents to the Complaint are Abhay, Lumenpulse Technologies who is identified as the registrant in respect of the disputed domain name and Vinay Vasant Marathe, Maharashtra I. Directory who is identified as the registrant in respect of the disputed domain name . Both respondents share the same email address although they have different postal addresses. The Panel does not follow the Complainant’s arguments that the relevant WhoIs searches show a common ownership of each of the Disputed Domain Names by Abhay Shah but accepts the Complainant’s argument that the common email address and the fact that each of the Disputed Domain Names are linked via redirection to the same website indicates that the Respondents are either the same entity or are under common control. In practical terms it is not necessary for the Panel to identify further the actual owner or distinguish between them and this decision simply refers to the “Respondents”. Substantive Matters
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements in respect of each of the Disputed Domain Names:
i. the domain names are identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondents have no rights or legitimate interests in the domain names;
iii. the domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of numerous trademarks for the term LUMENPULSE.
The Panel holds that each of the Disputed Domain Names is confusingly similar to the LUMENPULSE trademark. The Disputed Domain Names, as registered by the Respondents, incorporate the LUMENPULSE trademark or a misspelling thereof. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694).
It is also established that the addition of a generic term (such as here the term “led” which simply suggest a type of lighting) to the disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
The .generic Top-Level Domain (“gTLD”) “.com” is generally disregarded when considering confusing similarity between the Disputed Domain Names and the Complainant’s trademark – see for example Herbalife International, Inc. v H,WIPO Case No. D2002-0234.
Accordingly the Panel finds that each of the Disputed Domain Names is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain names:
i. before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services; or
ii. you (as an individual, business or other organisation) have been commonly known by the domain names, 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 names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondents’ to register or use the Disputed Domain Names or to use the LUMENPULSE trademark. The Complainant has prior rights in the LUMENPULSE trademark which precede the Respondents’ registration of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondents have no rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondents to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see for example Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondents have failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Names. Accordingly the Panel finds that the Respondents have no rights or legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the LUMENPULSE trademark, and the evidence as to the extent of the reputation the Complainant enjoys in the LUMENPULSE trademark, and the confusingly similar nature of the Disputed Domain Names to the LUMENPULSE trademark, and the lack of any explanation from the Respondents as to why they registered the Disputed Domain Names leads the Panel to conclude the registration and use was in bad faith. The Respondents are seeking through their website to sell products which compete with those of the Complainant and the Panel has no doubt the Respondents were by use of the Disputed Domain Names seeking to attract customers who were looking for the Complainant or its products and in doing so were suggesting that they either were the Complainant or were authorized by the Complainant. As such their behavior clearly amounts to that specified in paragraph 4(b)(iv) of the Policy as being evidence of registration and use in bad faith, namely “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 light of this finding it is not necessary for the Panel to consider the relevance, if any, of the Indian Lawsuit or the Indian Order.
Accordingly the Panel finds that the Disputed Domain Names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 Names and be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: September 16, 2016
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