Complainant is Lamudi Global S.à.r.l. of Senningerberg, Luxembourg, represented by Rösler, Rasch van der Heide & Partner Patent und Rechtsanwälte Partnerschaftsgesellschaft mbB, Germany.
Respondent is dotPH PrivateRegistration / Future Now Ventures of the Philippines. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with DotPH (the "Registry"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 18, 2017. On February 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 21, 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 Complainant on February 27, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on March 3, 2017.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .PH Uniform Domain Name Dispute Resolution Policy ("phDRP" or the "Policy"), the Rules for .PH Uniform Dispute Resolution Implementation Rules (the "Rules"), and the WIPO Supplemental Rules (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 15, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2017. The Center received an email communication from Respondent on March 10, 2017. The Center has not received a Response from Respondent.
The Center appointed Richard W. Page as the sole panelist in this matter on April 19, 2017. 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
Complainant is a company that provides, among others, advertising and marketing services and is the owner of the International trademark registration LAMUDI (the "LAMUDI Mark") registered on February 28, 2014 by priority of the German trademark DE 30-2013-006-232.9, LAMUDI, of September 6, 2013. The trademark designates also the Philippines. The trademark office of the Philippines sent a statement of grand protection to WIPO on September 28, 2014.
The Disputed Domain Name was registered by Respondent on May 13, 2014. 5. Parties' Contentions A. Complainant
Complainant contends that the Disputed Domain Name is confusingly similar to the LAMUDI Mark because it contains the entirety of the LAMUDI Mark.
Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name. "Lamudi" is a clear and plain fantasy term which was solely created, developed and commercially used by Complainant. Only Complainant and not Respondent is known by the name "lamudi". Complainant further alleges that Respondent has made no good faith use of the name "lamudi" and is not engaged in any activity in relation to the Disputed Domain Name.
Complainant argues that the Disputed Domain Name was not in use and was registered about three months after filing of Complainant's International registration trademark and the launching of its global business. Complainant further argues that this is an obvious indication that Respondent is domain grabbing. There are no indications of any legitimate interest for which the Disputed Domain Name was registered. Therefore, the registration of the Disputed Domain Name is in bad faith. B. Respondent
The Center received an email communication from Respondent on March 10, 2017, which did not contain any contentions relevant to this proceeding. It read, in its entirety, "What are you referring to?" 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a 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."
Respondent is not obliged to participate in a domain name dispute proceeding, but if it fails to do so, asserted facts that are not unreasonable may be taken as true and Respondent would be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441.1
Even though Respondent has failed to file a Response or to contest Complainant's assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
(ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
(iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant is the owner of the International trademark registration LAMUDI registered on February 28, 2014 by priority of the German trademark DE 30-2013-006-232.9, LAMUDI, of September 6, 2013. The trademark designates also the Philippines. The trademark office of the Philippines sent a statement of grand protection to WIPO on September 28, 2014.
Prior UDRP panels have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
Respondent has not contested Complainant's contentions. Therefore, the Panel finds that Complainant has enforceable rights in the LAMUDI Mark for purposes of this proceeding.
Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the LAMUDI Mark pursuant to paragraph 4(a)(i) of the Policy, because the Disputed Domain Name contains the entirety of the LAMUDI Mark.
The Panel notes that the entirety of the LAMUDI Mark is in the Disputed Domain Name. As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety typically is sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark. SeeRapidShare AG and Christian Schmid v. majeed randi,WIPO Case No. D2010-1089.
The addition of ".ph" is generally disregarded as the country code top level domain ("ccTLD") for the Philippines. Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the LAMUDI Mark, pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(ii) of the Policy requires Complainant to prove that Respondent has no rights or legitimate interests in the Disputed Domain Name. Paragraph 2.1 of the WIPO Overview 2.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers.
Complainant has alleged that Respondent has no rights or legitimate interests in the Disputed Domain Name. "Lamudi" is a clear and plain fantasy term which was solely created, developed and commercially used by Complainant. Only Complainant and not Respondent is known by the name "lamudi". Complainant further alleges that Respondent has made no good faith use of the name "lamudi" and is not engaged in any activity in relation to the Disputed Domain Name.
The Panel finds that the allegations of Complainant constitute a prima facie showing and that the burden shifts to Respondent to rebut. Respondent has not contested Complainant's contentions.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:
(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the LAMUDI Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the LAMUDI Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with Complainant's LAMUDI Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service.
The Panel finds that, because of the lack of any use by Respondent, none of the criteria in paragraph 4(b) of the Policy applies.
However, the four criteria set forth in paragraph 4(b) of the Policy are nonexclusive. See Telstra Corporation Limited v. Nuclear Marshmellows,WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.
One such factor is that Respondent has made no use of the Disputed Domain Name. Complainant alleges that Respondent has not developed any active website or made any other use of the Disputed Domain Name. See Telstra Corporation v. Nuclear Marshmallows, supra. ("Telstra").
In Telstra it was established that registration together with "inaction" or "passive use" can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent UDRP panels. Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren,WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang,WIPO Case No. D2000-0055; Compaq Computer Corporation v. Boris Beric,WIPO Case No. D2000-0042; Sanrio Company Ltd. and Sanrio, Inc. v. Neric Lau,WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eR,WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc.,WIPO Case No. D2000-0090; Strålfors AB v. P D S AB,WIPO Case No. D2000-0112; InfoS, Inc. v. Tenenbaum Ofer,WIPO Case No. D2000-0075.
Respondent has not contested any of the contentions of Complainant. Given that the Disputed Domain Name is identical to Complainant's mark, the Panel cannot contemplate any use that may be not in bad faith under the circumstances.
The Panel finds that Respondent has registered and used the Disputed Domain Name in bad faith, pursuant to paragraph 4(a)(iii) of the Policy. 7. Decision
For all 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 Complainant.
Richard W. Page
Sole Panelist
Date: May 1, 2017
1 In light of the substantive and procedural similarities between the phDRP and the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel cites authorities decided under the UDRP (and relating to the UDRP) where appropriate.
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