The Complainant is Lamboo Special Sales B.V. of Zoetermeer, Netherlands, represented by V.O. Patents & Trademarks, Netherlands.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyP) of Burlington, Massachusetts, United States of America / Lamboocis, of Riga, Latvia. 2. The Domain Name and Registrar
The disputed domain name (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 November 20, 2017. On November 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 22, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 28, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On November 30, 2017, the Respondent1 sent an email communication to the Center, indicating that it was “ready to close the domain as soon as possible.” The Complainant filed an amended Complaint on December 1, 2018.
The Center verified that the Complaint together with the amended 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 December 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2017. The Respondent sent an email communication to the Center on December 18, 2017, indicating that it was willing to “close, shut down or (if necessary) transfer the disputed domain”. On December 20, 2018, the Complainant requested the suspension of the proceeding for 30 days. The proceeding was suspended on December 26, 2017. On January 15, 2018, the Complainant requested the reinstitution of the proceeding. The Center reinstituted the proceeding on January 16, 2018. The Respondent did not submit a response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on January 23, 2018.
The Center appointed Nick J. Gardner as the sole panelist in this matter on January 31, 2018. 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 relevant facts can be summarized as follows.
The Complainant is incorporated in the Netherlands. It is a manufacturer of mobile medical units – portable structures which contain medical equipment and which can be temporarily installed at a given location for the treatment of patients. The term “Lamboo” is a family name and has no other meaning in any language.
The Complainant owns registered trademarks for LAMBOO – for example, international registration number 1272822, registered on September 28, 2015, in classes 12, 37, 40 and 42. These are referred to as the “LAMBOO trademark” in this decision.
The Disputed Domain Name was registered on October 12, 2016. Although at present the Disputed Domain Name is inactive, in the past the Respondent has used it to link to a website which offered for sale mobile medical units. It contained images of the Complainant’s own products. The identity of the Respondent is discussed further below but in substance the filed evidence establishes that the Respondent is, or is connected with, a party with whom the Complainant entered into a sales agreement. That agreement was terminated. The Panel has not been provided with a copy of the sales agreement but has been provided with a termination notice dated October 5, 2017, which refers to the sales agreement as being dated February 24, 2017. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are straightforward and as follows.
The Disputed Domain Name is similar to the LAMBOO trademark as it simply adds the letters “cis” which are a common abbreviation for the Commonwealth of Independent States, also known as the Russian Federation.
The Respondent has no rights or legitimate interests in the term “lamboo”. The Complainant says that term has no other meaning other than in relation to itself and its products. Some evidence as to negotiations and a sales agreement between the Complainant and the Respondent (or a company controlled by the Respondent) is provided and the Complainant then says these discussions and/or the agreement in question did not give the Respondent any rights or legitimate interests in the LAMBOO trademark.
In consequence the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. The Complainant says the nature of the Respondent’s website is clear evidence of bad faith as it confuses prospective customers into thinking that the website to which it is linked is that of the Complainant or is authorised by the Complainant. B. Respondent
No formal Response has been filed. It appears from the emails described above in the Procedural History that the Respondent does not object to the Disputed Domain Name being transferred to the Complainant. The Panel nevertheless considers it appropriate to determine this proceeding on its merits. 6. Discussion and Findings Preliminary Issues
As a preliminary issue the Panel notes this is a case where one of the Respondents (Domain Admin, Privacy Protect, LLC (PrivacyP)) appears to be a privacy or proxy registration service while the other Respondent (Lamboocis) appears to be the substantive Respondent. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at paragraph 4.4.5, as follows:
“Panel discretion
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case the Panel finds the substantive Respondent to be Lamboocis. Evidence filed by the Complainant shows that it was in detailed discussions with an individual, Nikita Naumov, with a view to establishing a collaboration which the Complainant says was aimed at selling the Complainant’s products in the Russian market. It appears that the individual, in anticipation of this agreement, established without the Complainant’s knowledge a company called Lamboo CIS B.V. and registered the Disputed Domain Name in the name “lamboocis”. The individual, Nikita Naumov, is the author of the emails described in the Procedural History as originating from the Respondent (the Panel notes that the email communications were sent from the email address of the registrant of the Disputed Domain Name). For practical purposes it is convenient to treat the individual and “Lamboocis” as being the Respondent, and references to the Respondent in this decision should be construed accordingly. The evidence establishes a sales agreement was entered into between the Complainant and another company controlled by the Respondent but was then terminated.
The Panel notes that no formal response has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. In any event the Respondent is clearly aware of the Complaint (see the Procedural History above). Accordingly, the Panel considers it is able to proceed to determine this Complaint. Substantive Issues
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in that:
(i) The Disputed Domain Name is identical with 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 Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s LAMBOO trademark. It is established that the addition of a generic or descriptive term (such as here “cis” which is a common abbreviation for the Commonwealth of Independent States) to a 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 confusing similarity.
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar – see, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name 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 provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is 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 Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the LAMBOO trademark. The Complainant has prior rights in the LAMBOO trademark which precede the Respondent’s registration of the Disputed Domain Name. Accordingly, none of the above clearly applies in the present circumstances. Conceivably (i) above might be potentially applicable save that the evidence of the Complainant (which is not disputed) is that the negotiations between the Complainant and the Respondent, and the subsequent sales agreement, did not allow use of the LAMBOO trademark by the Respondent. Moreover, the sales agreement was subsequently terminated and hence it seems to the Panel that the bona fide requirement is not established.
The Panel therefore considers that the Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (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 Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name.
The Panel notes section 2.5.1 of the WIPO Overview 3.0. In addition, the Panel notes that the website at the Disputed Domain Name showed “LAMBOO CIS” along with different sections including one named “our works” with reference to “mobile medical units”, which can cause a further confusion to Internet users. Finally, the Panel also notes that at present the Disputed Domain Name is inactive.
Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name 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 LAMBOO trademark, and the evidence as to the extent of the reputation the Complainant enjoys in the LAMBOO trademark, and the similar nature of the Disputed Domain Name to the LAMBOO trademark, the use of the Disputed Domain Name and the lack of any explanation from the Respondent as to why it registered the Disputed Domain Name lead the Panel to conclude the registration and use was in bad faith.
In this regard the Panel agrees with the Complainant that linking the Disputed Domain Name to a website offering mobile medical units for sale supports a finding of bad faith. It appears to the Panel that the units in question are those manufactured by the Complainant (the images on the website appear to be images of the Complainant’s products). It seems likely to the Panel that the Disputed Domain Name and the website in question were produced by the Respondent in anticipation of its collaboration with the Complainant. However, the relevant agreement (which was in any event terminated) did not (according to the Complainant) allow the Respondent to use the LAMBOO trademark in this way. The Disputed Domain Name is formed by combining of the Complainant’s trademark with a simple geographical designation, and was linked to a website offering for sale mobile medical units (whether those of the Complainant or otherwise). This is in the opinion of the Panel likely to confuse Internet users into thinking the website is that of the Complainant or authorised by it. Neither is the case. The Panel therefore considers that the Complainant has established a prima facie case that the Respondent’s conduct is that specified in paragraph 4(b)(iv) of the Policy: “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”.
The above analysis is based on the allegations in the Complaint, as the Panel has not itself seen the sales agreement in question. However, the Panel notes that the Respondent has not filed a formal Response and hence has not availed itself of the opportunity to present any case of good faith that it might have. The Panel infers that none exists.
As a result the Panel finds that the Disputed Domain Name has been registered and is 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 Name be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: February 14, 2018
1 See discussion below as to the identity of the Respondent
Full & Egal Universal Law Academy