The Complainant is Guitay Louis Paul, Crans Montana, Switzerland, represented by Cabinet Laurent & Charras, France.
The Respondent is Domain Park Limited, hostmaster, hostmaster, Berlin 10117, Germany.
The disputed domain name <lipomasage.com> is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2008. On September 24, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On September 24, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the 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”), 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 September 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 22, 2008.
The Center appointed Luca Barbero as the sole panelist in this matter on November 3, 2008. 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 is the owner of the French trademark registration LIPOMASSAGE n° 06 3 445 310 filed on August 9, 2006 and International trademark LIPOMASSAGE n° 922 602 filed on February 27, 2007 which designates amongst others Germany.
The Respondent registered the Domain Name <lipomasage.com> on September 28 2007.
According to the Complainant, the Complainant's trademark is confusingly similar to the disputed Domain Name as the mere omission of the letter “s” is not “sufficient to distinguish both words”.
The Complainant contends that visually the marks are nearly identical and phonetically and intellectually they are identical as they will be read in the same way.
The Complainant indicates that the Domain Name points to a parking page stating that a registration of a domain name for no reason other than to sell it on or to connect it to a parking page for revenue-per-click income cannot of itself give rise to a legitimate interest in respect of the domain name in issue.
The Complainant underlines that there is no obvious reason why the Respondent might have a legitimate interest in the Domain Name which is a coined word and has no significance whatsoever.
The Complainant emphasizes that the word “lipomasage” does not seem to be linked to the Respondent, its business, nor to the various links and topics featured on the website it resolves to.
With reference to the circumstances evidencing bad faith the Complainant states that the Respondent has engaged in typosquatting. According to the Complainant, the mere fact of registering as a domain name a word which visibly contains a typing mistake is an indication that the Respondent is acting in bad faith, “the mistake being the sole way to overrun the first come, first served rule”.
The Complainant indicates that its trademarks are used by its licensee LPG Systems which promotes the Endermologie® therapeutic protocol integrating the treatments and machines designated under the LIPOMASSAGE trademark, providing the Panel with an excerpt of the licence agreement.
The Complainant informs that the domain name <lipomassage.com>, which gives access to websites in different languages including German on the Lipomassage protocols, was registered on January 8, 2007 by LPG One, Inc, a subsidiary of LPG Systems and is in the course of being transferred to said company.
The Complainant has provided evidence of use of the trademark LIPOMASSAGE in Germany and states that LPG Systems has been selling its machines in Germany through inter alia the website “www.medyjet.de” of LPG Systems's German distributor. The Complainant asserts to be strongly present in Germany through its trademarks, country in which the Respondent declares to be its principal place of business.
The Complainant contends that the Respondent could not ignore the existence of the Complainant's trademark and therefore wilfully registered a confusingly similar domain name, modifying the orthography of the mark by deleting an “s”, “only in order to circumvent the registration rules”.
The Complainant underlines that the promotion of the Lipomassage product first started in March 2007 in France and the French speaking territories of Benelux. The Complainant points out that the Complainant's International Registration LIPOMASSAGE n° 922 602 was published on June 28, 2007 and the domain name registered a month and a half later.
The Complainant alleges that the mere fact that the Registrant resorts to typosquatting is a clear sign of bad faith. The Complainant emphasizes that the Respondent declares a phone number in the United States of America and a principal place of business in Berlin, a fact which does not point towards a “normal” activity. The Complainant also alleges that the domain name is used in bad faith as the domain name points towards a parking page and the Respondent probably receives compensation for the listings and lists on that page.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 15(a) of the Rules: “A panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant has provided evidence of ownership of a number of trademark registrations for LIPOMASSAGE.
The Panel finds that the disputed Domain Name is confusingly similar to the trademarks owned by the Complainant since the Respondent has merely eliminated the letter “s” from the trademark which is certainly not sufficient to exclude confusingly similarity (see i.e. Fry's Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435).
In VRL International Ltd. v. Domaincar, WIPO Case No. D2006-0240, the deletion of letter ‘s' in domain name <superclubbreeze.com> was found not to alter the confusing similarity between the domain name and complainant's marks SUPERCLUBS BREEZES, in Hershey Foods Corporation and Hershey Chocolate & Confectionery Corporation v. DRP Services (Hersheychocolateworld-Com-Dom), WIPO Case No. D2003-0841 where the deletion of the letter ‘s' in domain name <hersheychocolateworld.com> confusingly similar to complainant's <hersheyschocolateworld.com> domain name and trademark HERSHEY'S and in Pop Smear, Inc. v. Craig Singer, NAF Case No. FA0006000094945 (deletion of single letter “s” from complainant's registered mark 1800POSTCARDS.COM creates a confusingly similar domain name).
In comparing the Complainant's marks to the Domain Name with reference to <lipomasage.com> it should also be taken into account the well established principle that the suffixes, including the generic top level domains, may be excluded from consideration as being merely a functional component of the Domain Name. See i.a. Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 “the specific top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 “the accused Domain Name <chevychasebank.org> is legally identical to Complainant's trade name CHEVY CHASE BANK”).
In view of the above, the Panel finds that the Complainant has proven that the disputed Domain Name is confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name. The Respondent may establish a right or legitimate interest in the disputed Domain Name by demonstrating in accordance with paragraph 4I of the Policy any of, but not limited to, the following:
(a) that it has made 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 prior to the dispute; or
(b) that it is commonly known by the Domain Name, even if it has not acquired any trademark rights; or
(iv) Ithat it intends to make a legitimate, non-commercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the Domain Name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, it is sufficient that the Complainant shows prima facie case in order to shift the burden of proof to the Respondent. If a respondent fails to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4I of the Policy or on any other basis, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection c/o Domain Admin, NAF Case No. 852581).
In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4I of the Policy, any rights or legitimate interests in the disputed Domain Name.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's trademarks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the Domain Name has made preparations to use the Domain Name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, non-commercial or fair use of the Domain Name.
The Panel notes that the Domain Name was, at the time of the filing of the Complaint, and still is pointing to a sponsored pay per click website aimed only at directing visitors to third party commercial websites.
The Panel finds that under the circumstances the use of the disputed Domain Name merely to direct visitors to various third party commercial websites does not constitute a legitimate, on-commercial use of the Domain Name under the Policy. See Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044.
See, e.g., Bayerische Motoren Werke AG v. (This Domain For Sale) Jonathan Investments, Inc., WIPO Case No. D2002-0787, where the panel found that the respondent's use of the disputed domain name to resolve to a directory of commercial websites was not a bona fide offering of goods and services because “(a) the disputed Domain Name is fairly unique and specific to the Complainant; (b) there is no apparent connection between the disputed Domain Name and the Respondent's website directory; and (c) there is no other apparent legitimate justification for the Respondent's registration and use of the disputed Domain Name for its website”. Similarly, in Bilfinger Berger AG v. eService Finance Dept., WIPO Case No. D2003-0827, the panel stated that “although services are offered in the form of a directory, the services do not correspond to a bona fide offering by Respondent. The Domain Name <bilfinger.com> is only used as a link to a generic directory there is no indication that the links contained on the website are related to the Respondent or to the BILFINGER name”.
Along the same lines is the decision in Fifth Third Bancorp v. Whois ID Theft Protection, WIPO Case No. D2006-1209, where the panel found that there is a strong prima facie case that the respondent has no right or legitimate interests in the use of the disputed domain name since “in this case the Complainant has strong and longstanding goodwill in its marks, the similarity of the disputed Domain Name and the marks is considerable, and the Domain Name is being used to provide competing services in the same market sector as that in which the Complainant operates by exploiting the potential confusion created by the similarity of the marks”.
Thus, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(iv) circumstances indicating that the holder has registered or has 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 the holder's documented out-of-pocket costs directly related to the Domain Name; or
(iv) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iv) the holder has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's 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 the holder's website or location or of a product or service on the holder's website or location.
As to bad faith at the time of the registration, the Complainant has provided evidence of use of the trademark LIPOMASSAGE by its licensee in Germany where the Respondent is located. In light of such extensive use, the Panel finds that the Respondent was well aware of the Complainant's trademark.
The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainant's trademark at the time of the registration of the disputed Domain Name is to be considered an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
As found in Wal-Mart Stores, Inc. v. Hostmaster Hostmaster, Domain Park Limited, WIPO Case No. D2008-1158 involving the same Respondent, the Panel finds that typosquatting constitutes an additional evidence of bad faith (Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286; National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011; Bell Gardens Bicycle Club dba The Bicycle Casino (“TBC”) v. Craig Miller, WIPO Case No. D2006-0536 (stating that “in the present case, in the absence of any Response, the Panel is satisfied that the Respondent has engaged in flagrant typosquatting which is exactly the sort of abusive conduct to which the Policy is directed”).
This conclusion was also reached in Allied Building Products Corp v. Alliedbuildingproducts.com c/o Whois Identity Shield, WIPO Case No. D2006-0833 (“it is therefore a reasonable inference from this that the Respondent knew of the Complainant's business and wanted to exploit the name to divert Internet traffic from it, probably to benefit from pay-by-click arrangements with alternative suppliers”).
The Panel finds that Internet users, in light of the contents of the web page linked to the Domain Name may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent's website. Moreover, in all likelihood, the Respondent profits by earning pay per click revenues (see i.a Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; Fry's Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435; Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286).
The Panel therefore finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted (and probably succeeded) to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's services.
As stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146 “The Panel notes that there has been no Response filed in these circumstances, and it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present Domain Name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the Domain Name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
The Panel finds the Respondent has clearly engaged in a pattern of registering other domain names incorporating registered trademarks that have been subject of many proceedings under the Policy as evidenced in Hawaii Superferry, Inc. v. Domain Park Limited WIPO Case No. D2008-1301; Wal-Mart Stores, Inc. v. Hostmaster Hostmaster, Domain Park Limited, WIPO Case No. D2008-1158; Myxer Inc. v. Domain Park Limited, WIPO Case No. D2008-0973; University of Pittsburgh Medical Center, Inc. v. Domain Park Limited, hostmaster, WIPO Case No. D2008-0966; Deutsche Telekom AG v. Domain Park Limited, WIPO Case No. D2008-0624; L'oreal v. Domain Park Limited, WIPO Case No. D2008-0072; Victor Equipment Company v. Domain Park Limited, WIPO Case No. D2008-0049; Sanofi-aventis, Aventis Inc. v. Hostmaster, Domain Park Limited, WIPO Case No. D2007-1641; Asurion Corporation v. Domain Park Limited, WIPO Case No. D2007-1633; Florida Department of Management Services v. Domain Park Limited, WIPO Case No. D2007-1587; F. Hoffmann-La Roche AG v. Hostmaster, Domain Park Limited, WIPO Case No. D2007-1096; Shaw Industries Group, Inc., Columbia Insurance Company v. Domain Park Limited, WIPO Case No. D2007-1363; NAF NAF v. Hostmaster Hostmaster, WIPO Case No. D2007-1175; Société Air France v. Domain Park Limited, WIPO Case No. D2007-0818; Six Continents Hotels, Inc. v. Domain Park Limited, WIPO Case No. D2007-0313.
In view of the above, the Panel finds that the Domain Name was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lipomasage.com> be transferred to the Complainant.
Dated: November 17, 2008