The Complainant is LPG Systems of France, represented by Me Haas, France.
The Respondent is Evgenii Bobkov of the Russian Federation.
The disputed domain name <lpg-massage.center> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2019. On May 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 13, 2019, 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 May 13, 2019, 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 May 17, 2019.
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 May 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2019.
The Center appointed Mariya Koval as the sole panelist in this matter on July 5, 2019. 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.
The Complainant, being founded in 1986, is a world leader in manufacture of medical and aesthetic massage equipment. The Complainant is also a global leader in cellular stimulation with its technologies for health, beauty and well-being, having presence in more than 110 countries throughout the world within a network of nearly 70 distributors, with an average of 300,000 patients treated with LPG products each day. The Complainant offers its treatment through 75,000 referenced centers around the world, some of which are located in the Russian Federation. Developed for over 30 years of experience, the effectiveness of the Complainant’s non-invasive LPG technologies have been validated by 145 scientific studies, giving LPG a worldwide recognition. LPG technologies apply to medical and aesthetics devices, offered to trained professionals for health and aesthetics purposes.
The Complainant owns numerous registrations for the LPG trademark (the “LPG Trademark”) around the world, including in the Russian Federation:
- International registration No. 636962, registered on June 6, 1995, in respect of goods in classes 3, 10, 16 and services in classes 38, 41 and 42;
- International registration No. 1452014, registered on December 21, 2018, in respect of goods in classes 3, 10, 25, 28 and services in class 44;
- International registration No. 1388863, registered on December 4, 2017, in respect of goods in in class 25.
The Complainant, having a significant online presence, operates 120 domain names throughout the world with incorporation of the LPG Trademark, there are some of them:
- <lpgworldwide.com> registered on September 3, 2001;
- <lpg.health> registered on July 11, 2017;
- <lpgsystems.repair> registered on October 10, 2017;
- <lpgsystems.life> registered on May 4, 2018; and
- <lpgsystems.email> registered on September 14, 2015.
The Disputed Domain Name was registered on May 13, 2018. At the date of this decision, the Disputed Domain Name resolves to an active website where LPG slimming massage services, among others, with use of LPG apparatus, are offered. These services are offered in the Russian Federation.
The Complainant contends that it is the world leader in cellular stimulation with its technologies for health, beauty and well-being, and is the owner of numerous LPG Trademark registrations around the world.
The Complainant asserts that the Disputed Domain Name is confusingly similar to the LPG Trademark in view of it incorporating the LPG Trademark and is placed in leading position, followed by a dash and the generic word “massage”. The Disputed Domain Name intentionally refers to a massage services
using “LPG” branded devices and machines.
The Complainant further alleges that the Respondent is not a licensed distributor of the Complainant. The Complainant’s trademarks are used by the Respondent without any authorization. The Complainant has referenced beauty centers around the world, including the Russian Federation, however it does not reference any beauty center at the address mentioned under “contact” on the website under the Disputed Domain Name. Therefore, the Respondent does not belong to the Complainant’s network.
The Complainant also contends that the Respondent uses the LPG Trademark in order to offer massage services, using “LPG” branded devices, or machines produced by the Complainant’s competitors. It also displays on its website Complainant’s counterfeit massage suits. Accordingly, the Respondent is making a commercial use of the Disputed Domain Name to divert Internet users to a website infringing the Complainant’s intellectual property rights and promoting competing products.
The Complainant further alleges that the beauty center to which the website under the Disputed Domain Name is dedicated is called “Fitness Lite”. It means that this beauty salon is known under this name and that its owner is able to communicate under this name. Such a denomination has nothing to do with the LPG Trademark. The Respondent focuses on the LPG Trademark and products to attract Internet users to offer its paid-for services and to advertise competing products.
The Complainant contends that the Disputed Domain Name was registered and is being used in bad faith in view of the following:
- the fact that the Respondent mentions a “French equipment” and uses numerous times pictures of “LPG” branded devices on the landing page of the website under the Disputed Domain Name is a proof of its full knowledge of the Complainant’s rights when it decided to register the Disputed Domain Name;
- on the website under the Disputed Domain Name devices and machines produced by the Complainant’s competitors are represented, which clearly creating a confusion;
- the Disputed Domain Name resolves to two MX servers, allowing to create and use email addresses ending with “@lpg-massage.center”, the existence of which is an additional evidence of the Respondent’s bad faith;
- the use of pictures showing devices looking like “LPG” branded devices, but on which the LPG logo was either removed or hidden, or even never affixed.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark; 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.
The Panel finds that the Complainant has established its rights in the LPG Trademark due to long use and number of registrations in various jurisdictions.
The Disputed Domain Name reproduces the Complainant’s LPG Trademark in its entirety with addition of the hyphen, common word “massage” and the generic Top-Level-Domain (“gTLD”) suffix “.center”. In accordance with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Therefore, the addition of the word “massage” does not avoid a finding of confusing similarity.
The use of a hyphen in the Disputed Domain Name is irrelevant for a finding of confusing similarity. Also, the gTLDs are typically not taken into account for the purposes of determining whether a mark and a domain name are identical or confusing similar under the Policy.
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
The Complainant claims that the Respondent lacks rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. The Complainant has exclusive rights in the LPG Trademark and has not authorized the Respondent to register and to use the Disputed Domain Name in any manner. The Respondent is not connected to or related to the Complainant, he is not licensed or authorized to use the LPG Trademark.
Previous UDRP panels have consistently held that it is sufficient for a complainant to make out a prima facie case that the respondent does not hold rights or legitimate interests in the domain name, see e.g., Certamen Miss España, S.L. v. P1ESOFT.COM, WIPO Case No. D2006-0679. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
The Disputed Domain Name was registered on May 13, 2018, and resolves to a website in the Russian language offering LPG slimming massage services with use of different devices and massage suits either with use of the LPG Trademark or without it. At the same time, the massage suit presented on the website is more than likely not original. The Respondent’s website does not disclose any relationship with the Complainant and has a link to a fitness club “Fitness Lite” in Saint Petersburg (the Russian Federation) to the website “www.lady-fitness.club”, and is connected to an Instagram account “www.instagram.com/spb_tonus/” via the website “www.lady-fitness.club”. This evidences that the Respondent intended to attract and divert Internet users to his website under the Disputed Domain Name for commercial gain. Such commercial use of the Disputed Domain Name by the Respondent cannot be considered as bona fide offering goods and services.
According to the WIPO Overview 3.0, section 2.8.1, UDRP panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
As is seen from the circumstances of this case it is obvious that the website under the Disputed Domain Name was designed to create an impression of official or related Complainant’s website, without being the same. Thus the Respondent does not match the conditions of the Oki Data test.
According to the WIPO Overview 3.0, section 2.5.1, even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. Therefore, the addition of the term “massage” to the Complainant’s LPG Trademark in the Disputed Domain Name, as well as multiple use of the LPG Trademark on the Respondent’s website, evidence that the Respondent was well aware of the LPG Trademark and the massage apparatus under it at the time of registration of the Disputed Domain Name and has registered it for the sole purpose of creating an impression that the Disputed Domain Name is indeed connected with the Complainant’s Trademark.
The Panel finds there is no evidence that the Respondent, being a natural person, is commonly known by the Disputed Domain Name.
The Respondent did not file a response to the Complaint and did not participate in this proceeding, accordingly, the Respondent has failed to present any evidence to support any rights or legitimate interests in the Disputed Domain Name.
In view of the above, the Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Respondent has not negated this prima facie case.
Therefore, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that the Respondent registered the Disputed Domain Name in 2018, which is more than 25 years after the Complainant obtained its first LPG Trademark registration. At the same time, the Complainant has made long and extensive use of its LPG trademark, having 75,000 referenced centers around the world. The Panel also notes that the Complainant has registered more than 100 domain names incorporating its LPG Trademark.
According to the WIPO Overview 3.0, section 3.1.4, UDRP panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.
The Panel considers it is clear that the Respondent registered the Disputed Domain Name for the only purpose of operating a website to offer services with use of the Complainant’s branded apparatus and competing apparatus, and to create strong impression that he is related to the Complainant. Evidently, the addition of such common term like “massage” to the Complainant’s LPG Trademark not only cannot give the distinctive character to the Disputed Domain Name, but even strengthens the confusing similarity with the Complainant’s Trademark in view of the most of the Complainant’s products under the LPG Trademark are just designed for massage services. Addition of common term “massage” to the Disputed Domain Name may only make it clear that the Disputed Domain Name is indeed connected with the LPG Trademark and/or with the Complainant.
Accordingly, the Panel concludes that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and its LPG Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Panel also considers it is obvious that the Respondent has registered the Disputed Domain Name with full knowledge of the Complainant’s rights in the LPG Trademark. This is evident from the fact that the Respondent created a misleading website under the Disputed Domain Name which contains the LPG Trademark and images of LPG apparatus. Previous UDRP panels 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 (see, e.g., Volkswagen Aktiengesellschaft v. LaPorte Holdings, WIPO Case No. D2005-0780).
Therefore, the Panel comes to the conclusion that the Respondent has registered and has been using the Disputed Domain Name primarily to take advantages of the Complainant’s goodwill and reputation and to disrupt the Complainant’s business.
In view of the above, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith and the third element of the Policy has therefore been established.
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 <lpg-massage.center> be transferred to the Complainant.
Mariya Koval
Sole Panelist
Date: July 19, 2019
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