The Complainant is Lavorwash S.p.A., Italy, represented by Luppi Crugnola & Partners S.r.l., Italy.
The Respondent is John Chamley, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2019. On July 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2019, 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 July 22, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 23, 2019.
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 July 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2019.
The Center appointed William R. Towns as the sole panelist in this matter on September 3, 2019. 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, founded in Italy in 1975, is a manufacturer of hi-tech cleaning systems including pressure washers, vacuum cleaners, and cleaning systems in general. The Complainant is the owner of the LAVOR, LAVOR WASH, and LAVOR PRO marks (collectively “the LAVOR Marks”), registered by the Complainant in multiple jurisdictions, including Italy, Brazil, and the European Union. The Complainant’s LAVOR WASH mark was registered in Italy (i.e., International Reg. No. 705128, registered on September 9, 1998) and also in Brazil in 1998, and in the European Union in 1999; the LAVOR mark was registered in Italy, Brazil and in the European Union in 2001, 2005, and 2002, respectively; and the LAVOR PRO mark was registered in Brazil and in the European Union in 2006 and 2007, respectively.
The Respondent registered the disputed domain name on March 10, 2000. The Respondent formerly was a Director of Procter and Molloy LTD (formerly Chamjet LTD, which was a reseller of the Complainant’s products). Archived screen shots submitted by the Complainant reflect the Respondent’s use of the disputed domain between 2009 and 2015 with the Chamjet LTD website, on which the Respondent offered for sale the Complainant’s cleaning products as well as competing products of brands such as KARCHER, ALTO, WAP, and KEW.
The Complainant submits that to the best of its knowledge the disputed domain name has not been used since October 2015. The Complainant relates that it attempted on several occasions to contact the Respondent without success, and also attempted without success to acquire the disputed domain name through a domain broker. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is identical to the Complainant’s LAVOR mark and confusingly similar to the Complainant’s LAVOR WASH and LAVOR PRO marks. The Complainant observes that LAVOR is the distinctive element of the Complainant’s LAVOR WASH and LAVOR PRO marks, with the terms “wash” and “pro” being descriptive.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent has no trademark rights in the “Lavor” name. The Complainant submits that “Lavor” is not the name of the Respondent or of any other legal entity with which the Respondent is lawfully associated. The Complainant contends there is no evidence of the Respondent’s use or intent to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant further observes that the Respondent is not making a legitimate noncommercial or other fair use of the disputed domain name.
The Complainant has submitted four archived screenshots of the Respondent’s website with dates between October 11, 2009 and October 16, 2015. According to the Complainant, the Respondent is presently a Director of Procter and Molloy LTD (formerly Chamjet LTD), which was previously a reseller of the Complainant’s products. Based on archived screenshots, the Complainant maintains that the Respondent redirected the disputed domain name to his Chamjet website, on which the Respondent advertised and sold products of direct competitors of the Complainant.
The Complainant contends that the Respondent registered and has used the disputed domain name in bad faith. According to the Complainant, the Respondent as a former reseller of the Complainant’s products was well aware of the Complainant’s rights in the LAVOR Marks. The Complainant submits that no conceivable good faith use of the disputed domain name can be made by the Respondent given that the disputed domain name is identical to the Complainant’s LAVOR mark. The Complainant further asserts that the Respondent registered and has maintained the disputed domain name to prevent the Complainant from reflecting its mark in a corresponding domain name, which the Complainant maintains is the Respondent’s intent in failing to respond to the Complainant’s efforts to acquire the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term ““cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks”. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the UDRP panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the Complainant’s LAVOR mark and confusingly similar to the Complainant’s LAVOR WASH and LAVOR PRO marks. In considering this issue, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
In this case, each of the Complainant’s LAVOR Marks are recognizable in the disputed domain name.2 In addition to the LAVOR mark, which is identical to the disputed domain name, LAVOR also is the dominant element of the Complainant’s LAVOR WASH and LAVOR PRO marks, and as such recognizable in the disputed domain name. Generic Top-Level Domains (“gTLDs”) generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.3
While the Policy makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed. Accordingly, the fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the paragraph 4(a)(i) of the Policy.4
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s LAVOR Marks. Regardless, the Respondent registered the disputed domain name, which is confusingly similar to the Complainant’s LAVOR WASH and LAVOR PRO marks and identical to the Complainant’s LAVOR mark. The Respondent has used the disputed domain name to direct Internet users to the Respondent’s website, where the Respondent has offered products and services that compete with those of the Complainant.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
“(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if he 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.”
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.
Having regard to all of the relevant circumstances in this case, the Panel considers that the Respondent, as a reseller of cleaning systems, including apparently those of the Complainant, would have been aware of the Complainant’s rights in the LAVOR WASH mark as well as the Complainant’s rights or nascent rights in the Complainant’s LAVOR and LAVOR PRO marks when registering the disputed domain name. See WIPO Overview 3.0, section 3.8.2, and cases cited therein. To the extent that the Respondent has operated as a reseller or distributor of the Complainant’s products and services, the Panel initially considers whether the Respondent (using an identical domain name to the Complainant’s mark in particular) could assert to be making a nominative or fair use of the disputed domain name. UDRP panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark in connection with sales of or repairs to the complainant’s goods or services may in appropriate circumstances assert a legitimate interest in the domain name based on a bona fide offering of such goods or services. See WIPO Overview 3.0, section 2.8.1, and cases cited therein.
The most often cited UDRP decision evaluating domain names of resellers and distributors is Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (hereinafter “Oki Data”). In Oki Data,the respondent was a reseller of the complainant’s OKIDATA-branded products, and registered the domain name . The panel in Oki Data concluded that the use of a manufacturer’s trademark as a domain name by a reseller could be deemed a “bona fide offering of goods or services” within the meaning of the Policy only if the following conditions are satisfied: (1) the respondent must actually be offering the goods or services at issue; (2) the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods); (3) the site itself must accurately disclose the respondent’s relationship with the trademark owner; and (4) the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
The record in the instant case does not reflect the Respondent’s observance of the Oki Data criteria. There is no indication that the Respondent’s relationship with the Complainant was disclosed by the Respondent on the website to which the disputed domain name resolved. The Respondent has not used the site to offer only the Complainant’s trademarked products and services. See BlackRock Institutional Trust Company, N.A. v. Investors FastTrack,WIPO Case No. D2010-1038 (respondent’s use of a domain name incorporating the complainant’s mark to attract Internet visitors to site also providing information about competing products has “bait and switch” feel to it); See also National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524.
Fundamentally, a respondent’s use of a domain would not be considered “fair” if it falsely suggests affiliation with the trademark owner. UDRP panels generally have found that domain names (entirely) appropriating a complainant’s trademark carry a high risk of implied affiliation. See WIPO Overview 3.0, sections 2.5 and 2.5.1. The use of a domain name cannot be “fair” if it suggests a non-existent affiliation with the trademark owner; nor can a use be “fair” if it is pretextual. See Eli Lilly and Company and Novartis Tiergesundheit AG v. Manny Ghumman / Mr. NYOB / Jesse Padilla,WIPO Case No. D2016-1698. See also Project Management Institute v. CMN.com,WIPO Case No. D2013-2035 (“[It] is critical to […] a claim of nominative fair use,that the [r]espondent take steps to avoid using of the [c]omplainant’s mark in a manner likely to cause consumer confusion as to source, sponsorship, affiliation or endorsement”).
The disputed domain name chosen by the Respondent in this case conveys a strong suggestion of affiliation with the trademark owner which has not been satisfactorily disclaimed. The Panel concludes that the Respondent has neither used nor demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy. Nor has the Respondent made a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s LAVOR Marks, and has not been commonly known by the disputed domain name within the contemplation of paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the respondent registered the disputed 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.”
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As noted earlier, the Respondent in all likelihood was aware of the Complainant’s rights in the LAVOR Marks when registering the disputed domain name. It is a reasonable inference that the Respondent registered the disputed domain names based on the attractiveness of the Complainant’s LAVOR Marks to drive traffic to the Respondent’s website. In the attendant circumstances of this case, the Panel considers it more likely than not that the Respondent has intentionally attempted for commercial gain to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or products and services offered thereon.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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.
William R. Towns
Sole Panelist
Date: September 16, 2019
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 .
2 See WIPO Overview 3.0, section 1.8 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
3 See WIPO Overview 3.0 , section 1.11.2 and cases cited therein.
4 See WIPO Overview 3.0, section 1.1.3 and cases cited therein. The Panel notes that the Complainant’s LAVOR and LAVOR PRO marks appear to have been registered subsequent to the Respondent’s registration of the disputed domain name. However, the Complainant’s LAVOR WASH mark already had been registered in multiple jurisdictions prior to the Respondent’s registration of the disputed domain name. And as the Panel has noted, LAVOR is the dominant element of Complainant’s LAVOR WASH and LAVOR PRO marks.
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