The Complainant is LG Electronics Do Brasil Ltda., Brazil, represented by Dannemann Siemsen, Brazil.
The Respondent is Altair Alves Ferreira Ferreira, Brazil. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2020. On March 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2020, 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 March 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2020. The Respondent sent two emails to the Center on March 23, 2020. The Center notified the Parties that it will proceed to Panel Appointment on April 6, 2020. The Center appointed Rodrigo Azevedo as the sole panelist in this matter on April 9, 2020. 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 the Brazilian subsidiary of LG Corporation, the famous the Republic of Korea conglomerate in the electronics segment. The Complainant has rights in numerous LG trademark registrations in Brazil, including the registration No. 818502967 for LG Logo, filed on May 31, 1995, and registered on November 5, 2002; the registration No. 901060615 for LG, LG Logo, filed on July 21, 2008, and registered on July 31, 2012; and the registration No. 910449333 for LG, filed on December 22, 2015 and registered on January 23, 2018. The Respondent registered the disputed domain name According to the Complaint, the disputed domain name was inactive. The Panel accessed the disputed domain name on April 20, 2020, at which time it did not resolve to any active website. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions: - The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The trademark LG and its respective logo are duly registered at the Brazilian Patent and Trademark Office (“BPTO”) in the name of the Complainant’s the Republic of Korea main shareholder since 1995, while the disputed domain name was registered by the Respondent only on January 24, 2018. The domain name - The Respondent has no rights or legitimate interests in respect of the disputed domain name. The only entity which has legitimate rights over trademark LG in the electronics field is the Complainant. The Respondent, on his turn, is not known as “lg”, nor has he been authorized to register trademark LG as a domain name. Moreover, the Respondent does not own any trademark registration or application for “lg” at the BPTO. Furthermore, the Respondent has never used or demonstrated any intention of using the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods and services. - The disputed domain name was registered and is being used in bad faith. The Complainant and its trademark LG are well known in the electronics field, in Brazil and abroad. Moreover, the term “eletro” refers to “electronics”, which is the field of commerce of the Complainant, being thus clear that an eventual website to be launched by the Respondent will be related to electronic products. The Respondent registered the disputed domain name including the trademark LG as its distinctive parcel in order to create an undue association with the Complainant. Both the Respondent and the Complainant are located in Brazil. The Respondent was well aware of the Complainant’s trademark and registered the disputed domain name with intention to profit from it. The registration of a well-known mark is considered as a strong indication of bad faith. The Respondent intentionally attempted to attract, for commercial gain, Internet users to his website at the disputed domain name, creating thus a likelihood of confusion with the Complainant and its famous trademark LG. B. Respondent The Respondent sent an informal response to the Center indicating that he was a Brazilian, and he registered the disputed domain name through the Wix.com platform, with no intention of offending someone else’s property. He argues that he was not informed of the Complainant’s rights by the platform. He took down the website at the disputed domain name in December 2019. Finally, he refers that if he had been previously contacted by the Complainant, he would have complied with the request. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements: (i) the disputed 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 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 has no doubt that “lg” is a term directly connected with the Complainant. Annex 6 to the Complaint shows trademark registrations for LG related trademarks in Brazil since 2002, obtained by the Complainant’s parent company in the Republic of Korea. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.4, “A trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint.” The disputed domain name differs from the Complainant’s trademark LG by the mere addition of the suffix “eletro”, as well as of the generic Top-Level Domain (“gTLD”) “.com”. It is already well established that the addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark. Also, previous UDRP decisions have repeatedly found that the addition of descriptive terms to a trademark in a domain name does not avoid a finding of confusing similarity (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; etc.). In the present case, the Complainant’s brand is used in connection with electronicproducts, the addition of the word “eletro” is a common abbreviation for the correspondent word in Portuguese (“eletrônicos”). The Panel finds that the addition of the word “eletro” does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name: (i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use 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; 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 at issue. Based on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or authorized the use of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. Actually, the informal response submitted by the Respondent has not indicated any reason to justify why he has chosen the specific term “lgeletro” to compose the disputed domain name. The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or (ii) the respondent registered the 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted 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 its website or location or of a product or service on its website or location. When the disputed domain name was registered by the Respondent (in January 2018), the trademark LG was already well known and directly connected to the Complainant’s electronic products worldwide. Besides the gTLD “.com”, the disputed domain name differs from the Complainant’s mark by the mere addition of the suffix “eletro”, a common abbreviation for “electronics” in Portuguese. Therefore, the Panel concludes that it would not be feasible to consider that the Respondent, at the time of the registration of the disputed domain name, could not have been aware of the Complainant’s trademark, and that the adoption of word “lgeletro” could be a mere coincidence. The informal response submitted by the Respondent does not explain why he has chosen a famous trademark together with a descriptive term to compose the disputed domain name. According to section 3.1.4 of the WIPO Overview 3.0, “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” Regarding the use of the disputed domain name, UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3. In the present case, the Panel notes: a) the Complainant’s LG mark is distinctive and well known; b) the Respondent has not provided any evidence of actual or contemplated good-faith use of the disputed domain name; and c) there does not appear to be plausible of any good faith use to which the disputed domain name may be put, the Panel therefore finds that the disputed domain name has been used in bad faith. In addition, the Respondent recognizes that he has spontaneously taken down the website at the disputed domain name, and does not refuse the request for transfer of the disputed domain name made by the Complainant. Accordingly, the Panel concludes that the Complainant has also satisfied the third element 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 Rodrigo Azevedo
Sole Panelist
Date: April 24. 2020
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