WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LPG Systems v. Domain Admin, Whois Privacy Corp.

Case No. D2016-0565

1. The Parties

The Complainant is LPG Systems of Valence, France, represented by Marie Emmanuelle Haas, France.

The Respondent is Domain Admin, Whois Privacy Corp of Nassau, New Providence, Bahamas.

2. The Domain Names and Registrar

The disputed domain names <lpg.care>, <lpg.cool> and <lpg.discount> are registered with TLD Registrar Solutions Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2016. On March 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 23, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 30, 2016.

The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 22, 2016.

The Center appointed Ladislav Jakl as the sole panelist in this matter on May 4, 2016. 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 core business of the Complainant is the conception and manufacturing of medical and aesthetic massage equipment. The Complainant has three subsidiaries located in Belgium, Italy and the United Kingdom of Great Britain and Northern Ireland (Annex 1 to the Complaint).

The Complainant is the holder of many LPG trademarks, among others International word and device trademark LPG SYSTEMS, No. 553184, registered on April 5, 1990 in classes 10 and 28 and International word and device trademark LPG, No. 636962, registered on June 6, 1995 in classes 3, 10, 16, 38, 41, 42, notably protected in Russian Federation (Annex 8 to the Complaint). Moreover the Complainant is a holder of numerous domain names comprising with “lpgsystems” such as <lpgsystems.com> or

<lpgsystems.fr>, used to promote its activity (Annex 9 to the Complaint).

The disputed domain names <lpg.care>, <lpg.cool> and <lpg.discount> were registered on September 25, 2015 (Annex 6 to the Complaint). The three disputed domain names resolve to the same website offering LPG equipment for sale: at “www.lpgstyle.ru”.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain names <lpg.care>, <lpg.cool> and <lpg.discount> are identical or highly similar to Complainant’s trademark rights. The Complainant contends that the dominant part of the disputed domain names comprises the term “lpg” and the respective generic Top-Level Domain (“gTLD”) extensions “care”, “cool” and “discount” and that none of these extensions have distinctive character. The Complainant concludes that disputed domain names are confusingly similar to the Complainant’s trademarks.

Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names as the Complainant has not granted the Respondent any authorization to use and register disputed domain names composed with its trademarks. The Respondent is not a licensed distributor of the Complainant. The Respondent does not use the disputed domain names in connection with a bona fide offering of goods and services. Moreover the Complainant contends that the Respondent has not been commonly known by the disputed domain names and that the Respondent is using the disputed domain names for commercial gain, misleadingly diverting customers and tarnishing the Complainant’s trademarks, excluding any legitimate noncommercial or fair use of the disputed domain names. The unauthorized and commercial use of the disputed domain names damages the Complainant’s reputation which has no control on the quality of the products and services offered by the Respondent an in such a way it tarnishes the Complainant´s trademarks.

As to the question whether the disputed domain names were registered and are being used in bad faith, the Complainant contends that the Respondent has registered the disputed domain names by doing so with full knowledge of the Complainant’s rights in the LPG trademarks. The Respondent chose to register the disputed domain names by using a privacy service, not to disclose its identity and that it is a consensus view among the UDRP panelists, that using such privacy services is a factor indicating bad faith (CEAT Limited, CEAT Mahal v. Vertical Axis Inc. / Whois Privacy Services Pty Ltd, WIPO Case No. D2011-1981).

Furthermore, the Complainant contends that the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of the Complainant in the Russian Federation. The Respondent is not an authorized distributor of the Complainant. By using the disputed domain names, the Respondent has intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks as to source, sponsorship, affiliation or endorsement of the website and products or services offered on the website. Moreover, the Respondent is using the disputed domain names in bad faith through a bait advertising practice (Annex 11 to the Complaint). The Complainant concludes that the criteria of the Policy paragraph 4(b)(iv) are met and the Respondent has registered and used the disputed domain names in bad faith in violation of the Policy paragraph 4(a)(iii).

In accordance with paragraph 4(i) of the Policy, for the reasons described above, the Complainant requests the administrative Panel order the disputed domain names <lpg.care>, <lpg.cool> and <lpg.discount> be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

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 names are 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 names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.

A. Identical or Confusingly Similar

The Complainant is the holder of many LPG trademarks and numerous domain names composed with “lpgsystems” such as <lpgsystems .com> or <lpgsystems .fr>. Noting that the relied upon trademark include design elements, the Panel nonetheless finds that the texual component “lpg”, which is dominant, shall be used for comparison for purposes of the Policy (paragraph 1.11, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”)). The Panel finds the disputed domain names <lpg.care>, <lpg.cool> and <lpg.discount> are identical or highly similar to Complainant’s trademarks. The dominant part of the disputed domain names comprises the term “lpg” and the respective extensions “care”, “cool” and “discount”. None of these gTLD extensions have distinctive character. The addition of these generic terms is not sufficient to escape the finding that the disputed domain names are identical to Complainant’s trademark and do not change the overall impression of the designation as being connected to a trademark of the Complainant. It does not avoid the likelihood of confusion between the disputed domain names and the Complainant, its trademarks and its domain names associated. Such a combination of the Complainant’s trademark and generic terms does not avoid the confusing similarity (Repsol YPF S.A. v. Talk2middle ToP Domain Reg, WIPO Case No. D2008-0556; Hoffmann-La Roche Inc. v. Onlinetamiflu.com, WIPO Case No. D2007-1806).

For all the above cited reasons, the Panel concludes that disputed domain names are identical and confusingly similar to the Complainant’s trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain names. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular without limitation shall demonstrate Respondent’s rights or legitimate interests in the disputed domain names:

(i) before the Respondent obtained the notice of the dispute, it had used, or had made demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as individual, business, or other organization) has been commonly known by the domain names, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent was making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel accepts the arguments of the Complainant that the Respondent cannot establish rights or legitimate interests in the disputed domain names under paragraph 4(c) of the Policy. The Respondent is not related in any way with the Complainant and is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the LPG mark in connection with a website or for any other purpose (Swarovski (Marriott International, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610). The Respondent does not use the disputed domain names in connection with a bona fide offering of goods and services. Moreover the Respondent has not been commonly known by the disputed domain names and, as further explained below, the Respondent is using the disputed domain names for commercial gain, misleadingly diverting customers and tarnishing the Complainant’s trademarks, excluding any legitimate noncommercial or fair use of the disputed domain names. The unauthorized and commercial use of the disputed domain names damages the Complainant’s reputation which has no control on the quality of the products and services offered by the Respondent an in such a way it tarnishes the Complainant’s trademarks. A mere registration of a domain name does not give the owner a right or a legitimate interest in the domain name itself (Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666; St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia, WIPO Case No. D2010-0490). Moreover the Respondent is using the Complainant’s trademarks in order to divert Internet users from the Complainant’s website by capitalizing on the public recognition of the LPG trademarks (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).

For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain names were registered and are being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):

(ii) the Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.

The disputed domain names <lpg.care>, <lpg.cool> and <lpg.discount> were registered on September 25, 2015 (Annex 6 to the Complaint), while the Complainant’s trademarks LPG were registered much earlier. For example International word and device trademark LPG SYSTEMS, No. 553184, was registered on April 5, 1990 and International word and device trademark LPG, No. 636962, was registered on June 6, 1995 (Annex 8 to the Complaint). There is no doubt that the Respondent has registered the disputed domain names with full knowledge of the Complainant’s rights in the LPG trademarks. Previous UDRP decisions have found bad faith in a case the disputed domain name was registered where the respondent knew or should have known of the registration and use of the trademark prior to registering the disputed domain name (Philip Morris USA Inc. v. Jose Vicente Gomar Llacer and Gandiyork SL, WIPO Case No. D2014-2264; Philip Morris USA Inc.v.ADN HOSTING, WIPO Case No. D2007-1609). The Respondent chose to register the disputed domain names by using a privacy service, not to disclose its identity. It is a consensus view among the UDRP panelists that using such privacy services is a factor indicating bad faith (CEAT Limited, CEAT Mahal v. Vertical Axis Inc. / Whois Privacy Services Pty Ltd, WIPO Case No. D2011-1981).

Furthermore, the Panel finds the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of the Complainant in the Russian Federation. The Respondent is not an authorized distributor of the Complainant. The Respondent furthermore failed to disclose its lack of relationship with the Complainant, with disclaimer or other text on the website. By using the disputed domain names, the Respondent has intentionally attempt to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s trademarks as to source, sponsorship, affiliation or endorsement of the website and products or services offered on the website. The Respondent’s use in the present circumstances of the disputed domain names to divert Internet users from the Complainant’s official website demonstrates bad faith use under the Policy (Popular Enters, LLC v. Am. Consumers First et al., WIPO Case No. D2003-0742). Moreover, the Respondent is using the disputed domain names in bad faith through a bait advertising practice (Annex 11 to the Complaint).

For the above cited reasons the Panel finds that the disputed domain names were registered and are being used in bad faith. Considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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 names <lpg.care>, <lpg.cool> and <lpg.discount> be transferred to the Complainant.

Ladislav Jakl
Sole Panelist
Date: May 18, 2016