The Complainant is Lemonads SA, Switzerland, represented by Valérie Perrichon - Avocats, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Maksim Sinitsin, United Kingdom, represented by himself or his legal department.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2021. On December 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 27, 2021, 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 December 28, 2021, 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 January 3, 2022.
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 January 4, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2022. On January 20, 2022, the Respondent sent an email requesting an additional four (4) calendar days in which to respond to the Complaint. In accordance with paragraph 5 (b) of the Rules, the Center granted the extension. The new due date for filing a response was January 28, 2022. The Response was filed with the Center on January 28, 2022.
The Center appointed Warwick A. Rothnie, Johan Sjöbeck, and Olga Zalomiy as panelists in this matter on March 9, 2022. The Panel finds that it was properly constituted. Each member of 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.
Supplemental Filings were received from both Parties; from the Complainant on February 2 and 10, 2022, and from the Respondent on February 8, 2022 and February 10, 2022.
The Center acknowledged receipt of the Supplemental Filings from the Parties, informing them that paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of Supplemental Filings (including further statements or documents) received from either Party. Accordingly, the Panel when duly appointed will be informed of the Center’s receipt of the Supplemental Filings. It will be in the sole discretion of the Panel to determine whether to consider and/or admit the Supplemental Filings in rendering its decision, and whether to order further procedural steps, if any.
By Administrative Panel Order made on March 23, 2022, the date for submission of the Panel’s decision was extended to March 30, 2022.
4. Factual BackgroundBoth the Complainant and the Respondent provide CPA (cost per acquisition) services. Broadly speaking, these are services to assist advertisers and webmasters in audience monetization and affiliate marketing.
In about April / May 2019, the Respondent began offering his CPA services from a website to which the domain name
In September 2019, the Respondent entered into an Agency Contract with Samant LLC. (The record does not disclose the ownership of Samant LLC. It was represented by a Mr. Oleg Yasinev and had an address in the Russian Federation). The Agency Contract appointed Samant LLC to undertake trademark searches and apply to register LIMONAD as a trademark in Spain in International Class 35 and, upon its registration, license the use of the trademark to the Respondent.2 According to the Response, this was because the Respondent had by this time formed a desire to expand into more markets.
On October 17, 2019, Samant LLC made the trademark application in Spain. This application proceeded to registration on April 7, 2020, Registration No. 4039290. The trademark is the figurative mark:
Meanwhile, in September or October 2019, the Complainant became the holder of the domain name
On November 27, 2019, the Complainant changed its name from Flex Multimedia Global SA to Lemonads SA.
On December 3, 2019, the Complainant applied for the trademark LEMONADS in Switzerland, Registered Trademark No. 745317, registered on April 6, 2020.
On April 6, 2020, the Complainant registered the LEMONADS trademark as an International Registration, No. 1539536, for a range of goods and services in International Classes 9, 35, 38, and 42. The International Registration designated the European Union and the United States of America. These designations ultimately matured into registered trademarks in those jurisdictions:
(a) European Union Trademark No. 1539536 which was entered on the Register on March 23, 2022 with effect from April 6, 2020 having been received by European Union Intellectual Property Office on July 9, 2020; and
(b) United States Registered Trademark No. 6,436,349, which was entered on the principal Register on August 3, 2021.
On April 7, 2020, as already noted, Samant LLC’s application to register LIMONAD in Spain was successful and entered on the Register, No. M4039290.
In May 2020, Samant LLC granted the Respondent a licence (in Spanish) to use the Spanish registered trademark, LIMONAD. The Respondent continued using it only in Russian and so far as the record in this case goes it was directed to the Russian and CIS markets.
For a number of years prior to April 2021, the disputed domain name resolved to a website apparently operated by a Brazilian web-development and online advertising company. This website was in Portuguese.
On April 21, 2021, however, the Respondent became the registrant of the disputed domain name. For a short period of only a few months at most, the disputed domain name resolved to a website promoting the Respondent’s CPA services in Russian in the same way as the website to which the domain name
On July 23, 2021, the Respondent and Samant LLC entered into another Agency Contract, this time authorizing Samant LLC to apply to register the trademark LEMONAD in Spain and then license it to the Respondent. Following this, on August 25, 2021, Samant LLC applied to register Spanish Trademark Application No. M4135768:
Trademark No. M4135768 has been published but is still pending examination and has not been registered.
At some point after May 2021 (the record does not disclose precisely when), the Respondent’s website at
According to the Response, the domain name
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Supplemental FilingsApart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.
Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a Response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent’s position on a particular point was clear.
In the present case, the Complainant’s first supplemental filing largely sought to address matters arising from the Response which at least arguably could not reasonably have been anticipated – being essentially the Respondent’s explanation of how the Respondent came to adopt and use the disputed domain name. It is not immediately clear to the Panel that the subsequent supplemental filings add materially to the record. The Panel considers, however, it is appropriate to include all four supplemental filings in the record to ensure equality of treatment of the parties and that all relevant available information is available.
B. Identical or Confusingly SimilarThe first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for LEMONADS referred to in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the “.com” gTLD, the disputed domain name consists of the Complainant’s registered trademark with the “s” omitted; arguably presenting as the singular rather than a plural. Such a substitution or deletion has long been recognised as “typosquatting” and the disputed domain name readily qualifies as confusingly similar for the purposes of the Policy. See e.g., WIPO Overview 3.0, section 1.9.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
C. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] 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] (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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
The disputed domain name is not derived from the Respondent’s name.
It is clear on the record in this proceeding, however, that the Respondent had adopted “limonad” and was using the domain name
The Complainant does not object to the Respondent’s adoption and use of “limonad” or the domain name
It is also clear on the record in this proceeding that the Complainant adopted and was using its LEMONADS trademark by at least October 2019, well before the Respondent adopted “lemonad” or LEMON AD as the Respondent’s trademark.
Both the word “limonad” and the word “lemonad” are a transliteration of the Russian word “лимонад”, which means “lemonade” in Russian. The root of the word “лимонад” is indeed “лимон”. The fact that “lemonade” and “lemon” are ordinary dictionary words does not confer rights or legitimate in this context as neither can be considered descriptive of CPA services. See e.g., WIPO Overview 3.0, section 2.10.
The Respondent says he decided he wished to expand the existing “limonad” business from the Russian and CIS markets into new markets. According to the Respondent, this strategy was formed in 2019 and led to the trademark application to register the LIMONAD trademark in Spain.
Given the many different languages in use in other countries, however, the Respondent says he settled on using English as an international language on the Internet. Further, the Respondent says he was concerned that English speakers would be confused by the apparent misspelling of “lemon” as “limon” in the existing trademark and domain name. The Respondent says that this concern arose after tests in English speaking foreign markets revealed advertisers and webmasters reacted badly to the “limon” spelling. Accordingly, he wished to switch from “limonad” to “lemonad”. These decisions subsequently led to his acquisition of the disputed domain name in April 2021.
Through the second Agency Contract, the Respondent also authorised his agent Samant LLC to apply for the Spanish trademark LEMONAD. Samant LLC subsequently applied to register the trademark in the format indicated above. That format of the trademark is very similar to the format previously used by the prior Brazilian holder of the disputed domain name, albeit with a different colour scheme. The Respondent has not disclosed when he settled on that form of the trademark or his reasons for its adoption.
The issue in this proceeding is not whether the Complainant’s LEMONADS trademark is confusingly similar to the Respondent’s LIMONAD trademark or domain name
The Respondent’s adoption of LEMONAD / LEMON AD for his CPA services businesses involved both a change of name and a change of market. The previous Brazilian holder of the disputed domain name was using LEMONAD / LEMON AD in connection with a CPA services business. The Respondent does not claim to be the successor in title to that business, only to the registration of the disputed domain name. In any event, the Respondent’s use of LEMONAD / LEMON AD for his business also involves a change in the target market. As already mentioned, the Brazilian company was using the disputed domain name in connection with a Portuguese language website directed to the Brazilian market. The Respondent’s plans involve a change to the English language and an international market starting with, according to the Respondent’s reasons for arranging for the trademark applications to be made there, in Spain.
It is well established under the Policy that the use of a domain name confusingly similar to a complainant’s trademark to provide goods or services which compete with the complainant’s goods or services does not qualify as a good faith offering of goods or service for the purposes of paragraph 4(c) unless the use is either with the trademark owner’s consent or there is some independent right or legitimate interest.
A pending trademark application does not confer rights or a legitimate interest for this purpose especially where, as here, the pending trademark application appears to be in direct conflict with the Complainant’s registered trademark.
The Respondent also contends his business operates only in markets that the Complainant does not operate in, nominating countries such as Algeria, Ваnglаdеsh, Egypt, India, Iraq, Iran, Indonesia, Kenya, Colombia, Laos, Моrоссо, Муаnmаr, Malaysia, Mexico, Nigeria, Pakistan, Реru, Singapore, Tunisia, the Philippines, Chile, Sri Lanka, Ecuador, and South Africa as the countries in which his business has made special offers. Of these, it appears that only Pakistan is in common with countries the Respondent contends the Complainant’s operates in.
First, the Respondent has not provided any objective evidence that his business is limited only to those countries. It does not appear to be borne out be an examination of the website to which the disputed domain name resolves. It is also inconsistent with the Respondent’s explanation why the trademark applications were made in Spain.
Secondly, it is not at all apparent what is the basis for the Respondent’s claim that the Complainant operates only in the United States, Frапсе, Denmark, United Kingdom, Pakistan, Canada, Portugal, Singapore, Estonia, Republic of Коrеa, Afghanistan, Japan, Israel, Czech Republic, and Hong Kong, China.
Moreover, the Respondent incorrectly contends that the Complainant’s trademark rights are limited to Switzerland only.
In these circumstances, the Panel finds that the Complainant has a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
D. Registered and Used in Bad FaithUnder the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,
WIPO Case No. D2010-0470.
Paragraph 4(b) of the Policy identifies four examples of situations where registration and use in bad faith may be found:
“(i) circumstances indicating that [the Respondent has] registered or [the Respondent has] 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) [the Respondent has] 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 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.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Complainant relies on the Respondent’s shift from his LIMONAD trademark and the domain name
As discussed in section 5C above, the Respondent contends he adopted the disputed domain name to transition from a Russian language based business and market to a more international, English language business without any intention to trade on the Complainant’s trademark or reputation.
The Panel accepts that the Respondent’s explanation for the choice to use LEMONAD is not inherently implausible. That is not necessarily sufficient, however, to refute the allegation of registration and use in bad faith.
The Respondent expressly denies that he registered the disputed domain name for any of the purposes identified in paragraph 4(b) of the Policy.
The Respondent does not expressly deny knowledge or awareness of the Complainant and its trademark before acquiring the disputed domain name and making the transition to the LEMON AD (or LEMONAD) business.
It might be thought unlikely that the Respondent was not aware of the Complainant’s trademark given the rather specialised nature of their common field of activity, the recognition apparently accorded the Complainant’s business by the Blue Book and the Financial Times / Statista and the researches and testing the Respondent engaged in before adopting the LEMONAD (or LEMON AD) trademarks.
Moreover, the Respondent also does not disclose whether he or his agent, Samant LLC, undertook any trademark searches around the time of acquiring the disputed domain name or deciding to transition from LIMONAD to LEMONAD.
Lack of knowledge (if there was indeed such lack) and a failure to undertake such searches may nonetheless lead to a finding of registration in bad faith under the Policy where the conduct results in an abusive registration. In Case C-17/06 Céline Sàrl v Céline SA [2007] ECR I-7041 Advocate General Sharpston considered the concept of honest practice in industrial and commercial matters in the context of the own name defence under the First Council Directive 89/104/EEC of December 21, 1988 to approximate the laws of the Member States relating to trade marks:
“54. A person cannot normally be said to be acting in accordance with honest commercial practice if he adopts a name to be used in trade for purposes of distinguishing goods or services which he knows to be identical or similar to those covered by [an] identical or similar existing trade mark.
55. Nor indeed will mere ignorance of the existence of the trade mark be sufficient to bring the adoption and use of the name within the fold of honest practice. Honest practice in the choice of a name to be used in trade must imply reasonable diligence in ascertaining that the name chosen does not conflict with, inter alia, an existing trade mark, and thus in verifying the existence of any such mark. And a search in national and Community trade mark registers is not normally particularly difficult or burdensome.
56. However, if reasonable diligence has been exercised, and no such mark has been found, then it does not seem possible to assert that the person adopting the name has in that regard acted contrary to honest practices in industrial or commercial matters. In those circumstances, it is of course only exceptionally that there will in fact be a trade mark similar or identical to the name, whose proprietor would wish to prevent use of the name. But if that were to be the case, it seems to me that the trade mark proprietor’s right would be limited by Article 6(1) of the Directive, since the limitation is conditional only on the honesty of the user’s conduct.
57. On the other hand, if a similar or identical trade mark were found, the extent to which the trade mark proprietor could prohibit use of the name would depend on the user’s conduct thereafter. Honest practice would presumably imply at least contacting the trade mark proprietor and seeking his reaction. If he objected to use of the name on reasonable grounds (and any of the circumstances falling within Article 5 would seem, by definition, capable of providing reasonable grounds for objection), then subsequent use of the name objected to would not be in conformity with honest commercial practice.”
While the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks has been superseded by a number of other trade mark Directives and Regulation, the Panel finds relevant the considerations around the concept of honest practice in industrial and commercial matters in the Opinion of the Advocate General Sharpston delivered on January 18, 2007.
Similarly, panels have found registration and use in bad faith under the Policy where the respondent “knew or should have known of” the complainant’s rights. See e.g., WIPO Overview 3.0 section 3.2.2. In addition, panels have found registration and use in bad faith where the respondent has wilfully refrained from undertaking appropriate searches. See e.g, WIPO Overview 3.0 section 3.2.3.
In the present case, the CPA Services field appears to be specialised. Further, it seems likely that simple Internet searches would have disclosed the Complainant’s use of the LEMONADS trademark by the time the Respondent came to adopt the LEMONAD trademark in 2021. Further still, the nature of the Respondent’s business necessarily involves familiarity with the workings of the Internet. Moreover, the Respondent was able to identify the availability of the disputed domain name. Yet further still, the Respondent was well aware of the operation of the trademark registration system and had specifically instructed Samant LLC to undertake trademark searches before applying to register the LIMONAD figurative trademark in Spain.
While the Respondent does contend he adopted the disputed domain name without any intention to trade on the Complainant’s trademark, he knew or at the very least should have been aware of the Complainant’s registered trademark. As the Complainant and the Respondent appear to be offering essentially identical services, the Panel considers that, at the very least, the Respondent should have been aware of the high potential for confusion with the Complainant’s trademark through use of the disputed domain name in respect of CPA services.
In these circumstances, the Panel finds that the Complainant has established the Respondent registered and is using the disputed domain name in bad faith within the meaning of the Policy.
Accordingly, the Complainant has established all three requirements under the Policy.
6. DecisionFor 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,
Warwick A. Rothnie
Presiding Panelist
Johan Sjöbeck
Panelist
Olga Zalomiy
Panelist
Date: March 30, 2022
1 The Respondent says he obtained the disputed domain name on May 7, 2019. However, the Wayback Machine appears to have a capture for his site on April 4, 2019.
2 The version of the Agency Contract included in Respondent’s Annex 1 does not include the requirement to search trademark availability. The versions included in Respondent’s Annex 10 and 11 (described as Appendix No. 1 and Appendix No. 2, respectively) specify it as the required legal act #1.
3 It is not possible to be more precise than this. While the Complainant represented that the domain name