WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

United Trade Mark Limited v. Stefan Kuhn

Case No. D2015-0634

1. The Parties

Complainant is United Trade Mark Limited of Floriana, Malta, represented by Piaty Müller-Mezin Schoeller Rechtsanwälte GmbH, Austria.

Respondent is Stefan Kuhn of Oberuzwil, Switzerland.

2. The Domain Name and Registrar

The disputed domain name <lyoness-shop.com> is registered with Corehub S.R.L. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2015. On April 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 5, 2015.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on May 15, 2015. 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 limited liability company under the laws of Malta that runs an online shopping community system. Complainant has provided evidence that it is the owner of various registered trademarks relating to the designation “LYONESS”, including the following:

- Word mark LYONESS, Office for Harmonization in the Internal Market (OHIM), Registration No.: 004380961, Registration Date: June 13, 2006, Status: Active;

- Word mark LYONESS, Madrid International Trademark System, Registration No.: 1028599A, Registration Date: July 24, 2009, Status: Active.

The disputed domain name <lyoness-shop.com> was registered on November 17, 2012; at the time of rendering this decision, it does not redirect to any content on the Internet.

Complainant requests that the disputed domain name be transferred to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends to be an independent, country and sector spanning shopping community system, primarily present on the Internet at “www.lyoness.com” as well as “www.lyoness-store.com”, and connected, among other things, through the unique cashback card.

Complainant suggests that the disputed domain name is identical to Complainant’s LYONESS trademark since (1) it simply copies the trademark without making any changes to the word and (2) it incorporates Complainant’s LYONESS trademark in its entirety, thereby creating a high risk of confusion for the addressed online community.

Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Complainant has not obtained a license prior to registering the disputed domain name and (2) the disputed domain name is currently inactive and therefore not associated with any activities undertaken by Respondent, which evidences that Respondent does not have any real interest in the disputed domain name.

Finally, Complainant asserts that the disputed domain name was registered and is being used in bad faith by Respondent since (1) Respondent has not approached Complainant in order to obtain a license, but instead has signed up to become a member of Complainant’s shopping community, which is evidence that Respondent was fully aware of the LYONESS trademark at the time of registering the disputed domain name and (2) Respondent offered the disputed domain name for sale to Complainant for the price of EUR 15,000.00 “due to research conducted and offers from different Lyoness partners in Switzerland”.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

(i) That the disputed domain name 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.

Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain name <lyoness-shop.com> is at least confusingly similar to the LYONESS trademark in which Complainant has shown to have rights.

The disputed domain name incorporates the LYONESS trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g.PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in numerous UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9) that the addition of a generic or descriptive term or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid the finding of confusing similarity under the first element of the URDP. Accordingly, the mere addition of the generic and descriptive term “shop” is not at all capable to dispel the confusing similarity arising from the incorporation of Complainant’s LYONESS trademark in the disputed domain name.

Therefore, the first element under the Policy set forth by paragraph 4(a)(i) in the case at hand is fulfilled.

B. Rights or Legitimate Interests

The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent makes a legitimate, non-commercial or fair use thereof without intent for commercial gain.

Respondent has not been authorized to use Complainant’s LYONESS trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name.

Moreover, Respondent so far has not made any use of the disputed domain name (either for a bona fide offering of goods or services or for a legitimate, non-commercial or fair use without intent for commercial gain), but on the contrary offered Complainant to purchase the disputed domain name for a sales price of EUR 15,000.-, which Respondent seems to have calculated “due to research conducted and offers from different Lyoness partners in Switzerland”.

For the sake of completeness, it has been held by many UDRP panels that a passive holding of a disputed domain name in itself is not capable of creating any rights of respondent in the disputed domain name (Pepperdine University v. BDC Partners, Inc., WIPO Case No. D2006-1003; Archipelago Holdings LLC, v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales,WIPO Case No. D2001-0729).

Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on April 14, 2015.

Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.

Complainant contends, and Respondent has not challenged this contention, that Respondent has offered Complainant to purchase the disputed domain name for a sales price of EUR 15,000.00- which was fixed by Respondent “due to research conducted and offers from different Lyoness partners in Switzerland”. The Panel, therefore, has no difficulty in finding that Respondent registered the disputed domain name for the purpose of selling it to Complainant (the owner of the LYONESS trademark) for valuable consideration in excess of the documented out of pocket costs directly related to the disputed domain name. Such circumstances serve as evidence of the registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(i) of the Policy.

Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) under 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 <lyoness-shop.com> be transferred to Complainant.

Stephanie G. Hartung
Sole Panelist
Date: May 27, 2015