The Complainant is Lloyd Shoes GmbH of Sullingen, Germany, represented by Bird & Bird LLP, Germany.
The Respondent is Ji Shupeng of Henan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2017. On September 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 2017, 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 September 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2017.
The Center appointed Angelica Lodigiani as the sole panelist in this matter on October 18, 2017. 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 longstanding German manufacturer and distributor of shoes. The Complainant is one of the market leaders in the field of production of women’s and men’s high-quality shoes, exporting in more than 60 countries and operating 4,000 points of sale. Every day, the Complainant produces 6,900 pairs of shoes, out of which 1,900 are manufactured in Germany. In 2016, the Complainant generated consolidated revenues of EUR 132 million.
The Complainant’s first trademark dates back to 1905. Since 1927, the Complainant has been exclusively operating under the trademark LLOYD.
The Complainant owns, among others, the following trademarks:
- MARKE LLOYD, German trademark registration No. DE00081842, registered on September 28, 1905, claiming a priority date of May 30, 1905, for footwear in class 25;
- LLOYD (stylized), German trademark registration No. DE39862419, registered on November 26, 1998, claiming a priority date of October 29, 1998, for leather and imitation of leather, clothing, footwearin classes 18 and 25, as well as for other goods in classes 3 and 14;
- LLOYD (design), German trademark registration No. DE302011053823, registered on December 14, 2011, claiming a priority date of September 28, 2011, for clothing, footwear, headgearin class 25, as well as for other goods in classes 3, 12, 14, 18, 28 and 35;
- LLOYD (design), European Union Trade Mark No. 43810, filed on April 1, 1996, and registered on October 2, 1998, for footwear and hosiery in class 25;
- LLOYD (design), International Registration No. 711101, registered on March 4, 1999, designating several countries including China, and covering goods in classes 3, 14, 18 and 25;
The disputed domain name was registered on October 11, 2016.
The disputed domain name led to a website allegedly offering for sale the Complainant’s goods. Since these goods were sold with heavy discounts, the Complainant had reasons to believe that the Respondent did not deliver the purchased items to its customers, or delivered counterfeit goods.
In order to stop this activity, the Complainant sent a cease and desist letter to the Respondent, who failed to reply. The Complainant sent a second letter to the Registrar of the disputed domain name, informing of the situation and asking for the removal of the infringement. The Registrar suspended the disputed domain name, which became inaccessible.
At this point, in order to avoid any risk that the Respondent could in the future reactivate the disputed domain name, the Complainant filed a UDRP Complaint. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are the following.
(i) The disputed domain name is identical or confusingly similar to the Complainant’s trademarks:
The disputed domain name is identical to the Complainant’s company name LLOYD Shoes, and confusingly similar to the Complainant’s trademarks, since it entirely incorporates the trademark LLOYD. The graphic stylization of the Complainant’s trademarks does not change the overall impression of confusing similarity with the disputed domain name. Likewise, the addition of the term “online” has no particular impact, considering its lack of distinctive character.
(ii) The Respondent lacks rights or legitimate interests in the disputed domain name:
The Complainant has not authorized the Respondent to register its trademark as part of the disputed domain name, nor is there any economic connection between the Parties that could grant the Respondent the right to register a domain name incorporating the Complainant’s trademark.
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Until its suspension by the relevant Registrar, the disputed domain name was used to give access to an online shop offering, inter alia, products of the Complainant at significant discounted prices. In view of the reduced price at which the goods were offered for sale, the Complainant believes that it is likely that the Respondent did not deliver any of the purchased goods, or that the delivered goods were counterfeit.
Should the Panel not share the Complainant’s view that the website corresponding to the disputed domain name was offering for sale counterfeit items, the use of the disputed domain name would still be illegitimate. As a matter of fact, the Respondent’s website gave the impression that the Respondent was the Complainant itself, or an authorized reseller of the Complainant, which is not the case. The Respondent’s use of the disputed domain name does not amount to a bona fide use and does not grant to the Respondent any rights or legitimate interests in the disputed domain name.
The Respondent is not commonly known by the disputed domain name. To the best of the Complainant’s knowledge, the Respondent does not own any trademark comprising the sign LLOYD.
The Respondent is not making a noncommercial and fair use of the disputed domain name. On the contrary, the Respondent used the disputed domain name in such a way as to give the false impression that he had some kind of business connection with the Complainant.
(iii) The registration and use of the disputed domain name in bad faith:
The disputed domain name was registered in bad faith because the Respondent was well aware of the Complainant’s trademark at the time of the registration of the disputed domain name . The Complainant’s trademarks enjoy reputation in the shoe industry and were registered several decades before the registration of the disputed domain name. Such knowledge of the Complainant’s trademarks at the time of the registration of the disputed domain name suggests bad faith.
The Respondent has been using the disputed domain name in bad faith. The Respondent’s main reason to use the Complainant’s trademark in the disputed domain name is that of attracting potential customers to its website for commercial gain.
Furthermore, previous UDRP decisions have found the Respondent to have registered and used domain names corresponding to third parties’ trademarks in bad faith (see Odlo International Ltd. v. Ji Shupeng,WIPO Case No. D2017-0272). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar with the Complainant’s LLOYD trademarks, as noted in section 4 of this decision.
The disputed domain name fully includes the Complainant’s trademark, followed by the words “shoes”, which describes the Complainant’s activity, and “online”, which is a reference to the Internet. The addition of such terms does not avoid a finding of confusing similarity with the Complainant’s trademark, which is clearly recognizable in the disputed domain name.
Hence, the Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a) of the Policy as to the first element of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) before any notice of the dispute to the Respondent, the Respondent has used or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the instant case, the Complainant has clarified that the disputed domain name redirected to the Respondent’s website, offering alleged Complainant’s goods at heavily discounted prices. The Complainant asserts that it never authorized the Respondent to register the disputed domain name, and that it does not have any business relationship with the Respondent. The website content was removed only following a letter that the Complainant sent to the Registrar pointing out the unauthorized activity.
On the evidence produced by the Complainant, it appears more likely than not that the Respondent was using the disputed domain name either to offer for sale counterfeit goods or to offer, fraudulently, nonexistent goods. Such use cannot constitute use of the disputed domain name in the offering of bona fide goods or services.
Accordingly, the Panel finds that the Complainant has established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name , under paragraph 4(a) of the Policy as to the second element of the Policy. The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
In order to meet the bad faith requirement under paragraph 4(a)(iii) of the Policy, the Complainant must demonstrate that the disputed domain name has both been registered, and is being used, in bad faith.
As far as registration in bad faith is concerned, it is clear from the facts exposed in the Complaint, that the Respondent was well aware of the Complainant’s name and trademark at the time it registered the disputed domain name . The Respondent’s domain name includes the term “shoes”, which corresponds to the Complainant’s core business. The disputed domain name was used as an online shop where what were alleged to be the Complainant’s goods were offered at heavily discounted prices.
It is therefore clear that the Respondent was well aware of the Complainant’s trademark and business at the time it registered the disputed domain name. The Panel concludes that the Respondent registered the disputed domain name in bad faith.
As far as use in bad faith is concerned, the Panel notes that before the filing of the Complaint, the Respondent used the disputed domain name to attract Internet users to its own website for commercial purpose.
The goods available on the Respondent’s website purported to be offered for sale at heavily discounted prices which, according to the Complainant, is not a credible indication that the goods were genuine goods and/or that the goods were actually for sale.
The Complainant suggests that the site may be being used to extract personal information from Internet users, a process known as “phishing”, or by delivering counterfeit goods. In both cases, the Respondent was using the disputed domain name for an illegitimate purpose. Whether or not that is the case, it appears clear on the evidence provided by the Complainant that the disputed domain name is being used for commercial gain to attract Internet users to the Respondent’s website by creating confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of that website, or of a product on that website. The Respondent has had an opportunity to rebut the Complainant’s allegations but has failed to do so.
Moreover, the Complainant has pointed out that the Respondent has been already found to have registered and used as domain names third parties’ trademarks in bad faith.
For all these reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith and the requirement of paragraph 4(a)(iii) of the Policy has 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.
Angelica Lodigiani
Sole Panelist
Date: October 31, 2017
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