The Complainant is Lema S.p.A., Italy, represented by Bugnion S.p.A., Italy.
The Respondent is R.C.J. Oosterling, EdizioneMedia, Netherlands. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2020. On September 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 30, 2020, 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 September 30, 2020, 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 September 30, 2020. The Center received two email communications from the Respondent on September 30, 2020, to which the Complainant responded to on the same day. 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 October 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2020. The Center received various email communications from the Respondent on September 30, 2020, October 2, 12, and 22, 2020. The Complainant responded to the Respondent on October 22, 2020. On the same day, the Center informed the Parties that it would proceed with the panel appointment process, pursuant to paragraph 6 of the Rules. The Center appointed Kaya Köklü as the sole panelist in this matter on October 27, 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 an Italian company founded in the 1930’s. It is internationally active in the field of furniture and operates more than 40 flagship stores worldwide (Annex 1 to the Complaint). The Complainant owns various word and figurative LEMA trademark registrations since the early 1970’s. According to the Complaint, the Complainant is, inter alia, the registered owner of the Italian Trademark Registration No. 257970 (registered on March 16, 1972), covering trademark protection, inter alia, for furniture as protected in class 20 as well as related products in classes 22 and 24 (Annex 2 to the Complaint). Since more than 20 years, the Complainant also owns and operates its official website, which incorporates the LEMA trademark, at The Respondent appears to be an individual from the Netherlands. The disputed domain name was registered on November 16, 2016. The screenshots, as provided by the Complainant (Annex 7 to the Complaint), show that the disputed domain name resolves to a website in the English language, which is used for offering various furniture products under the trademark LEMA. Additionally, the LEMA word and figurative trademark as well as official product images of the Complainant are prominently used without any visible disclaimer describing the (lack of) relationship between the Parties. 5. Parties’ Contentions A. Complainant The Complainant is of the opinion that the disputed domain name is identical to its LEMA trademark. Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is particularly argued that the disputed domain name falsely suggests that there is some official or authorized link between the Complainant and the Respondent. Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant argues that the Respondent must have been well aware of the Complainant’s LEMA trademark when registering the disputed domain name, particularly as the Respondent prominently uses the Complainant’s word and figurative LEMA trademarks on the website linked to the disputed domain name and its official product images without authorization and any disclosure of the lack of relationship between the Complainant and the Respondent. B. Respondent Except the informal and brief email communication sent to the Center on September 30, 2020, October 2, 12, and 22, 2020, indicating that the Respondent is willing to cooperate with the Complainant if “this is not a scam”, the Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark 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. Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228. However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views stated therein. A. Identical or Confusingly Similar According to the Panel, the disputed domain name is identical to the Complainant’s LEMA trademark as it incorporates the Complainant’s trademark in its entirety without any additions or amendments. In the Panel’s view, the general Top-Level Domain (“gTLD”) “.shop” may, as a general principle, be disregarded when assessing identity or confusing similarity between a domain name and a trademark. In view of the finding above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name. While the burden of proof on this element remains with the Complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c). In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s LEMA trademark within the disputed domain name. There is also no indication in the current record that the Respondent is commonly known by the disputed domain name. In the absence of a response to the Complainant’s contentions, the Respondent has also failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name. In this regard, the Panel is particularly convinced that the Respondent cannot claim to have a legitimate interest in the disputed domain name in light of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”), and thus is not entitled to use the disputed domain name accordingly. The criteria as set forth in Oki Data are not fulfilled in the present case. The Panel particularly notes that the website which is linked to the disputed domain name does not accurately and prominently disclose the relationship, or rather the lack thereof, between the Respondent and the Complainant, thus creating the false impression that the Respondent might be an official and authorized reseller/distributor for the Complainant’s products. In the Panel’s view, this takes the Respondent out of the Oki Data safe harbour for purposes of the second element. In addition, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0. As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith In the Panel’s view, the Respondent has registered and is using the disputed domain name in bad faith. The Panel is convinced that the Respondent had the Complainant’s LEMA trademark in mind when registering the disputed domain name. At the date of registration of the disputed domain name, the Complainant’s LEMA trademark was already registered and in use for several decades. The assessment of bad faith registration is further supported by the fact that the disputed domain name is identical to the non-dictionary trademark of the Complainant. It rather appears that the Respondent has registered the disputed domain name solely for the purpose of creating an association with the Complainant and its furniture products. After having reviewed the Complainant’s screenshots of the website linked to the disputed domain name (Annex 7 to the Complaint), the Panel is convinced that the Respondent has intentionally registered the disputed domain name in order to generate traffic to its own website. The Panel particularly notes that the Respondent has not published any visible disclaimer on the website linked to the disputed domain name to explain that there is no existing relationship between the Respondent and the Complainant. Additionally, the unauthorized use of official product images of the Complainant, and the prominent use of the Complainant’s LEMA trademark on the website linked to the disputed domain name is, in view of the Panel, further evidence that the Respondent intentionally tries to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s LEMA trademark as to the source, sponsorship, affiliation, or endorsement of its website. By doing so, the Panel believes that the Respondent is trying to misrepresent itself as the trademark owner or at least as an authorized dealer, which is not the case either way. The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, 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 Kaya Köklü
Sole Panelist
Date: November 4, 2020
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