WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Laverana GmbH & Co. KG v. Li Wei

Case No. D2013-0245

1. The Parties

The Complainant is Laverana GmbH & Co. KG of Wennigsen, Germany, represented by rwzh Rechtsanwälte Partnerschaft, Germany.

The Respondent is Li Wei of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <laverachina.com> is registered with Domain.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2013. On February 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 5, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details for the disputed domain name.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 1, 2013.

The Center appointed Debrett G. Lyons as the sole panelist in this matter on March 12, 2013. 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 facts relevant to the findings and decision in this case are that:

1. the Complainant sells cosmetics by reference to the registered trade mark, LAVERA;

2. the trade mark is, inter alia, the subject of German Federal Trade Mark Registration No. 1087216 for the word mark, “Lavera”, registered in the name of the Complainant, registered in 1986;

3. the disputed domain name was registered on May 23, 2012;

4. the disputed domain name resolves to a website which uses the trade mark;

5. there has been no commercial or other relationship between the parties; and the Complainant has not authorized the Respondent to use the trade mark or to register any domain name incorporating the trade mark; and

6. the Respondent has not replied to a letter of demand from the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant asserts trade mark rights in LAVERA and alleges that the disputed domain name is identical and confusingly similar to the trade mark.

The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a reply. According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The disputed domain name is identical or confusingly similar to a trade mark 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.

Having considered the Complaint and the available evidence, the Panel finds the following:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy¹. The Complainant provides evidence of registration of the trade mark and so the Panel is satisfied that the Complainant has trade mark rights in LAVERA².

The remaining question is whether the disputed domain name is confusingly similar to the Complainant’s trade mark (since it is clearly not identical to the trade mark as submitted in one place in the Complaint). For the purposes of testing confusing similarity, the generic top-level domain “.com” can be ignored.³ The disputed domain name takes the whole of the trade mark and merely combines it with the country name, “China”, an addition of no distinctive value and which, in the opinion of the Panel, is only likely to serve to increase the likelihood of confusion between the terms.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests⁴.

Notwithstanding the lack of a Response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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 or service mark at issue.”

The publicly available WhoIs database identifies the registrant as “Li Wei”, which does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has trade mark rights in the disputed domain name, registered or not.

The Complainant submits that the disputed domain name resolves to a website where cosmetic goods are offered for sale by reference to its trade mark. The Complainant implies that the goods offered there are counterfeit copies of its goods.

The evidence of those claims is less than compelling. It takes the form of exhibit 11 to the Complaint, being a screenshot of what appears to be a Chinese shopping portal, branded “ECshop”. It appears to the Panel that the screenshot has been taken of the webpage after it had been subjected to an effort to translate it into English. The result is unsatisfactory and shows references to the element “Laver” (not “Lavera”), the date 1987 and the name, “Thomas Haase”.

The Panel notes that the Complainant provides evidence that Thomas Haase was the founder of its business. More helpfully, the Center made its own screenshot of the resolving page at the disputed domain name on the date the Complaint was Notified. It shows the same name and the trade mark in full. The remainder of the text is in Chinese but plainly shows that the website is a shopping portal of some kind, possibly for European goods as might be suggested by the name, “ECshop”, which appears in English.

It is not entirely clear to the Panel whether the “ECshop” webpage is the page to which the disputed domain name refers or is a webpage to which Internet users are redirected when they enter the disputed domain name (the Panel notes in this respect through its own enquiries the highly developed shopping mall at “www.ecshop.com” which in a great many respect looks to be one and the same as the resolving webpage).

This information casts some doubt on the Complainant’s inference that the goods offered for sale by reference to the trade mark are not genuine goods put on the market by the Complainant, but it leaves untouched the primary question of whether or not there has been use of the disputed domain name in connection with a bona fide offering of goods.

Whether through redirection or not, had the disputed domain name resolved to a website offering only the Complainant’s goods bearing the trade mark, then there would have been a more open question about legitimacy for the purposes of this aspect of the Policy, but on the available evidence Panel takes the view that it is more likely than not that the resolving website offers for sale goods other than the Complainant’s goods and very possibly goods which are competitive with the Complainant’s goods. Countless decisions applying this aspect of the Policy have held that such use does not constitute use of the domain name in connection with a bona fide offering of goods and this Panel makes that same finding in this case.

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not rebutted such prima facie case.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:

“i. circumstances indicating that you have registered or you have 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. you have 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 you have engaged in a pattern of such conduct; or

iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv. by using the domain name, you have 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.”

The Complainant alleges that the use of the disputed domain name is caught by all of paragraphs 4(b)(ii), (iii) and (iv). The Panel need only decide that the Respondent’s conduct falls squarely under paragraph 4(b)(iv) of the Policy. The Panel has already found the disputed domain name to be confusingly similar to the Complainant’s trade mark. The Panel finds that the likelihood of confusion as to the source is therefore highly likely. Paragraph 4(b)(iv) also requires an intention for commercial gain on the part of the Respondent. The resolving website at the disputed domain name exists for the purpose of commercial gain. In terms of paragraph 4(b)(iv), the Panel finds that the Respondent intentionally used the disputed domain name to attract Internet users to either its website or another on-line location by creating a likelihood of confusion with the Complainant’s trade mark for the purpose of commercial gain.

The Panel finds that the Respondent registered and used the disputed domain name in bad faith and, accordingly, the Complainant has satisfied the third and final limb 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, <laverachina.com> be transferred to the Complainant.

Debrett G. Lyons
Sole Panelist
Date: March 18, 2013

¹ See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).

² The registrations are for the form of the mark, “Lavera”, with only initial capitalisation, but that fact makes no difference to the analysis in this case. Panel also notes that not all of the exhibited registrations stand in the name of the Complainant but is satisfied that is the case with its “home” German registration and a number of others.

³ See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. 153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).

⁴ See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828; AOL LLC v. Jordan Gerberg, NAF Claim No. 780200.