WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lomar Shipping Limited, Lomar Corporation Limited v. Lomarsh Lomar, Lomar Ship

Case No. D2020-0150

1. The Parties

The Complainant is Lomar Shipping Limited, Lomar Corporation Limited, United Kingdom, represented by Wiggin LLP, United Kingdom.

The Respondent is Lomarsh Lomar, Lomar Ship, Australia.

2. The Domain Name and Registrar

The disputed domain name <lomarshippingltd.com> is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2020. On January 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2020, 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, and informing that the language of the registration agreement for the disputed domain name is Russian. The Center sent the language of the proceedings documents to the Parties on January 24, 2020, and inviting them to take action in this respect. On February 12, 2020, the Complainant maintained its request the language of the proceeding to be English. The Respondent did not submit any comments on this issue.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2020.

The Center appointed Assen Alexiev as the sole panelist in this matter on March 16, 2020. 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 Complainants are members of the Lomar Group, which is a ship owner and operator and provides global shipping related services with a fleet of over 80 ships. The Complainant Lomar Corporation Limited, based in Bermuda, owns the fleet of the Lomar Group and is its parent company. The Complainant Lomar Shipping Limited was incorporated in England and Wales in 1976, and provides technical and commercial maritime services, including arranging the charter of vessels for customers in the United Kingdom (funless otherwise indicated, separately and collectively called “Complainants”).

The Complainants submit that they have unregistered trademark rights in the sign “LOMAR” (the “LOMAR trademark”) for shipping related services.

The official website of the Complainants is located at the domain name <lomarshipping.com>, registered on May 9, 1997.

The disputed domain name was registered on March 9, 2017. It resolves to a website which describes freight forwarding, logistics and shipping services of a company under the name “Lomar Shipping Limited”, apparently established in 1982 and operating in the United Kingdom. The website does not contain any statement about the existence or lack of existence of relationship between this company and the Complainants.

5. Parties’ Contentions

A. Complainant

The Complainants submit that the Complainant Lomar Shipping Limited has traded under the names “Lomar Shipping Limited” and “Lomar” for more than 40 years, and its annual turnover for 2017 was in excess of GBP 7 million. This continuous use for such a long period has generated a trading goodwill in the United Kingdom in the LOMAR trademark, so the Complainant Lomar Shipping Limited has unregistered trademark rights in it for shipping related services. The Complainants note that since Lomar Corporation Limited is the parent company of Lomar Shipping Limited, it is the ultimate beneficiary of such rights.

According to the Complainants, the disputed domain name is confusingly similar to the unregistered trademark LOMAR in which the Complainants have rights, because the disputed domain name incorporates the trademark in its entirety, and the addition of the generic word “shipping” does not preclude a finding of confusing similarity. They also point out that the disputed domain name reproduces the full corporate name of the Complainant Lomar Shipping Limited (albeitn using the common abbreviation “ltd” for “limited”).

The Complainants submit that the Respondent has no rights or legitimate interests in respect of the disputed domain name, as the Complainants have no relationship with the Respondent and the disputed domain name was registered without their consent, and the Respondent has no trademark rights in the signs “Lomar” and “Lomar Shipping”. They note that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, because it is using it to impersonate the Complainants through the content of the website at the disputed domain name, and through the sending of phishing emails from email addresses associated with the disputed domain name. The Complainants further point out that the Respondent has falsified the Whols details for the disputed domain name through the provision of a non-existent address and name, as the only registered company in Australia whose name includes “Lomar” is a company affiliated to the Complainants.

The Complainants contend that the Respondent has registered and is using the disputed domain name in bad faith in an attempt to attract Internet users for commercial gain by creating a likelihood of confusion with the LOMAR trademark, which is an arbitrary and highly distinctive word with no meaning in the English language and in the shipping industry. According to the Complainants, the incorporation by the Respondent of the word “Lomar” in the disputed domain name which also includes the word “shipping”, in the absence of knowledge of the Complainants and their business conducted under and by reference to the LOMAR trademark is improbable. Rather, the Respondent registered the disputed domain name intentionally to impersonate the Complainants for fraudulent purposes, as the disputed domain name directs to a website which is a copy of a third-party website, to which the Respondent has only changed all references to “Lomar Shipping”, while keeping the design of the website and leaving unchanged the “Our Team” page including the name of the Chairman of the company and his telephone number and email address. According to the Complainants, the Respondent uses the disputed domain name for the purposes of sending fraudulent email, purportedly sent on the Complainants’ behalf. Such fraudulent emails use the LOMAR trademark, the Complainant’s Lomar Shipping Limited company name and office address, refer to the Complainants’ Chief Operating Officer, and request the recipient’s contact details and the payment for services purportedly provided by the Complainants to a bank account that is unconnected to the Complainants.

B. Respondent

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

6. Discussion and Findings

6.1. Procedural issues

A. Consolidation of the Complainants

The Complaint in this proceeding has been filed by two Complainants. They point out that they belong to the same corporate group where the Complainant Lomar Shipping Limited has unregistered trademark rights in the LOMAR trademark for shipping related services, while the Complainant Lomar Corporation Limited is the parent company of Lomar Shipping Limited and as such is the ultimate beneficiary of such rights. The Respondent has not made any comments on the issue of consolidation.

As summarized in section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether the complainants have a specific common grievance against the respondent or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and whether it would be equitable and procedurally efficient to permit the consolidation. Prior UDRP panels have held that a “specific common grievance” is shown where the complainants have a common legal interest in the trademark rights on which the complaint is based or have been the target of common conduct by the respondent which has clearly affected their individual legal interests in a similar fashion.

The Panel is satisfied that a consolidation of the two Complainants in a single proceeding against the Respondent in respect of the disputed domain name is justified and would be appropriate in the circumstances, discussed in section 6.2.A below, the evidence that the two Complainants have submitted satisfies the Panel that each of them may be considered as having rights in an unregistered trademark for the purposes of the Policy, and the conduct they allege that the Respondent has engaged into may affect, if present, each of them in a similar fashion. Neither of the Parties has made the Panel aware of any reason why a consolidation of the proceeding would not be equitable or procedurally efficient.

In view of the above, the Panel decides to allow the consolidation of the two Complainants in a single proceeding against the Respondent in respect of the disputed domain name.

B. Language of the proceeding

According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Complainants request the language of the proceeding to be English. They submit that they are based in the United Kingdom and are not familiar with the Russian language, and point out that the Respondent has provided contact details which indicate that it is located in Australia, where English is an official language, while the website at the disputed domain name is also in English, which allegedly demonstrates that the Respondent can speak English.

The Center has sent all its messages to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has not responded and has thus not objected to the Complainant’s request that the proceedings be held in English. The Panel also notes that the Center has notified the Respondent that it would accept a Response in either English or Russian.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding would be fair to all Parties and would not be prejudicial to the right of any of the Parties to present its case on this proceeding. Therefore, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Substantive issues

Pursuant to the Policy, paragraph 4(a), the Complainants must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”

The Respondent has however not submitted a Response and has thus not disputed the Complainants’ statements and evidence in this proceeding.

A. Identical or Confusingly Similar

The first issue that needs to be addressed here is whether the Complainants have standing to file the Complaint, i.e., whether they have rights in a trademark for the purposes of the Policy.

As summarized in section 1.3 of the WIPO Overview 3.0, to establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as the duration and nature of use of the mark, the amount of sales under the mark, the nature and extent of advertising using the mark, the degree of actual public recognition, and consumer surveys. The fact that secondary meaning may only exist in a particular geographical area or market niche does not preclude the complainant from establishing trademark rights and as a result, standing under the UDRP. The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.

The Complainants submit that the Complainant Lomar Shipping Limited has unregistered trademark rights in the LOMAR trademark in the United Kingdom. In support of this contention, the Complainants have filed copies of the annual financial statements of Lomar Shipping Limited for the 2014-2018 years, printouts from the Companies House of the United Kingdom, from the official website of the company available at “www.lomarshipping.com”, and copies of online news articles discussing the activities of the company.

The Respondent has not disputed this evidence, according to which the Complainant Lomar Shipping Limited was established in 1976 under this name, had substantial turnover in the years 2014-2018, and is using the domain name <lomarshipping.com> registered in 1997. This evidence shows that for a long period of time before the date of registration of the disputed domain name the Complainant Lomar Shipping Limited has used in its business the brand LOMAR as a trademark and as part of its corporate name and official website.

As discussed below, the disputed domain name is confusingly similar to the LOMAR trademark and reproduces the corporate name of the Complainant Lomar Shipping Limited. The Complainants point out that the Respondent has used the disputed domain name for a website that describes shipping-related services by a company based in the United Kingdom under the name Lomar Shipping Limited, which coincides with the name of the Complainant which is indeed based in the United Kingdom. The Complainants also point out that the Respondent has used the disputed domain name for the carrying out of phishing attacks through email accounts that use the disputed domain name, thus impersonating the Complainant. These allegations of the Complainants have not been disputed by the Respondent, and they show that the Respondent is targeting the Complainants’ LOMAR trademark, which supports the Complainants’ assertion that the LOMAR trademark has achieved significance as a source identifier for their services under it.

In view of all the above, the Panel is prepared to accept on the balance that as a result of the duration and nature of use of the LOMAR trademark, it has achieved a level of significance as a source identifier that is sufficient for a finding that the Complainant Lomar Shipping Limited has unregistered trademark rights in the LOMAR trademark for purposes of the relevant test under the Policy, and as a result has standing to file the Complaint. As to the Complainant Lomar Corporation Limited, the fact that it is the parent company of Lomar Shipping Limited is sufficient to satisfy the Panel that it also has standing to file/join the Complaint in this proceeding. See section 1.4.1 of the WIPO Overview 3.0.

Therefore, the Panel will proceed with the analysis of whether the disputed domain name is identical or confusingly similar to the LOMAR trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD of the disputed domain name.

As discussed in sections 1.7 and 1.8 of the WIPO Overview 3.0, the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between the textual components of the complainant’s trademark and the disputed domain name to assess whether the trademark is recognizable within the disputed domain name. Where the relevant trademark is recognizable within the disputed domain name, the addition of other descriptive terms would not prevent a finding of confusing similarity under the first element.

The disputed domain name incorporates the LOMAR trademark in its entirety in combination with two non-distinctive elements – the dictionary word “shipping” and the sequence “ltd”, which is commonly used in company names as an abbreviation for the dictionary word “limited”. These differences between the disputed domain name and the LOMAR trademark are not significant, and the latter remains easily recognizable in the disputed domain name. In addition, the whole sequence “lomarshippingltd” in the disputed domain name coincides nearly identically with the company name of the Complainant Lomar Shipping Limited.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the LOMAR trademark in which the Complainants have rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.

The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name, stating that they have no relationship with the Respondent and the disputed domain name was registered without their consent, and the Respondent has no trademark rights in the signs “Lomar” and “Lomar Shipping”. They note that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but is using it to impersonate the Complainants through the content of the website at the disputed domain name and through the sending of phishing emails from email addresses associated with the disputed domain name. The Complainants further point out that the Respondent has falsified the Whols details for the disputed domain name and that there is no registered company in Australia whose name includes “Lomar” other than a company that is affiliated to them. Thus, the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not disputed the above statements of the Complainants; it has not alleged that it has rights or legitimate interests in the disputed domain name and has not submitted any evidence for such rights or legitimate interests. In particular, the Respondent has not submitted any evidence that its actual name and address specified for the purposes of the registration of the disputed domain name are real or that it exists and carries out business in the United Kingdom under the name “Lomar Shipping Limited” as indicated on the website at the disputed domain name.

The disputed domain name incorporates the LOMAR trademark in combination with the word “shipping” and the abbreviation “ltd”. This makes it confusingly similar to the LOMAR trademark and to the corporate name of the Complainant Lomar Shipping Limited. The confusion is only increased by the content of the website at the disputed domain name (not to mention the fraudulent emails), which offers shipping related services allegedly provided in the United Kingdom by a company whose name coincides with the name of the same Complainant. As submitted by the Complainants, this website is an almost identical copy of the website of a third party, in which only the name of the company is changed to “Lomar Shipping Limited”. The evidence in the case also shows that the contact details provided by the Respondent for the registration of the disputed domain name are non-existent. The Complainants have provided a copy of an email message sent to a third party, which message requests the recipient to make a payment, and indicates as its sender a person whose name coincides with the name of the Chief Operating Officer of the Complainant Lomar Shipping Limited together with different contact details including an email address that uses the disputed domain name.

In view of the above, and in the absence of any denial by the Respondent or evidence to the contrary, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the Complainants operating under the LOMAR trademark, has registered and used the disputed domain name to impersonate the Complainants for commercial gain by misleading third parties to make payments in the wrong belief that they are making them to the Complainants. In the Panel’s view, such conduct does not give rise to rights or legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(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 website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

As discussed above, the Respondent has registered the disputed domain name, which is confusingly similar to the LOMAR trademark and to the corporate name of the one of the Complainants. The Respondent does not deny that the disputed domain name resolves to a website that offers shipping related services allegedly provided in the United Kingdom by a company whose name coincides with the name of the same Complainant, and the contact details provided by the Respondent for the registration of the disputed domain name are non-existent. The Respondent has also not denied that it has sent email messages to third parties with requests for payment, which messages indicate as their sender a person whose name coincides with the name of the Chief Operating Officer of the Complainant Lomar Shipping Limited.

Taking the above into account, and in the absence of any evidence to the contrary, the Panel is satisfied that it is more likely than not that the Respondent was aware of the Complainants’ LOMAR trademark and of its goodwill when it registered the disputed domain name, and that the Respondent has registered and used the disputed domain name targeting the same trademark in an attempt to impersonate the Complainants for commercial gain by misleading third parties to make payments in the wrong belief that such payments are directed to the Complainants or by misleading them that they are dealing with the Complainants.

Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.

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 <lomarshippingltd.com> be transferred to the Complainants.

Assen Alexiev
Sole Panelist
Date: March 29, 2020