WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Xylem IP Management S.A.R.L. v. Evgeniya, IWT
Case No. D2018-2055
1. The Parties
The Complainant is Xylem IP Management S.A.R.L. of Luxembourg, represented by Modiano & Partners, Switzerland.
The Respondent is Evgeniya, IWT of Kiev, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <lowara.info> (the “Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2018. On September 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 11, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 12, 2018 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 September 13, 2018.
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 September 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2018.
The Center appointed Olga Zalomiy as the sole panelist in this matter on October 19, 2018. 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 Complainant owns numerous trademark registrations of the LOWARA trademark, such as an International trademark registration no. 833171, registered on July 12, 2004 and a European Union Trade Mark registration no. 001420736 registered on January 15, 2001. The Complainant uses the LOWARA trademark in connection with pumps, drives and packaged solutions like pressure booster sets and wastewater lifting stations.
The Respondent registered the Domain Name on June 2, 2014. The Domain Name resolves to a website, which appears to sell Lowara pumps in Ukraine, but in fact attempts to sell the Respondent’s competing pumps.
5. Parties’ Contentions
A. Complainant
The Complainant claims that its LOWARA brand is a leader in providing long term economical solutions for pumping and circulating clean or contaminated water. The Complainant contends that the Domain Name is confusingly similar to its LOWARA trademark because it incorporates the LOWARA trademark in its entirety. The Complainant alleges that the generic Top-Level Domain (“gTLD”) “.info” must be disregarded from the confusing similarity analysis as a necessary registration component.
The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name because it did not license or authorize the Respondent to use the Complainant’s trademark. The Complainant contends that the Respondent does not own any LOWARA trademarks. The Complainant claims that the Respondent has not been commonly known under the Domain Name. The Complainant claims that the Respondent is using the Domain Name to direct to an online store that purportedly sells Lowara pumps, but in fact attempts to sell the Respondent’s competing pumps to customers interested in the Complainant’s goods. The Complainant argues that the Respondent creates an impression of its website being related to or authorized by the Complainant by using the Complainant’s LOWARA trademark and logo on the website associated with the Domain Name.
The Complainant contends that the Respondent registered the Domain Name in bad faith. The Complainant claims that it is likely that the Respondent knew about the Complainant and its trademarks at the time of the Domain Name registration because of the following: 1) it is unlikely that the Respondent was not aware of the LOWARA trademark at the time of the Domain Name registration because the word Lowara is not a generic term; 2) the Respondent cannot claim to be using the Domain Name for any legitimate purpose unrelated to the Complainant and/or their products; 3) there is no plausible explanation as to why the Respondent selected the term Lowara as part of the Domain Name other than to trade on the goodwill of the Complainant; 4) the Complainant is a renowned company operating specifically in the field of pumps; 5) the Respondent registered the Domain Name many years after the Complainant began using and advertising the LOWARA trademark; 6) the website corresponding to the Domain Name prominently displays the LOWARA trademark, the LOWARA logo and a lot of other information that is intended to mislead the consumers into believing the Domain Name directs to an official website belonging to and/or authorized by the Complainant.
The Complainant claims that the Respondent is using the Domain Name in bad faith because the Respondent is using the Domain Name to resolve to an online store purportedly offering for sale the Complainant’s pumps when, in fact, it attempts to convince customers interested in the Complainant’s goods to buy less expensive pumps of the Respondent The Complainant claims that the Respondent’s company, IWT, the Complainant’s principal competitor in Ukraine, is using the Domain Name to disrupt its business. Further, the Complainant contends that the Respondent used a privacy shield service to hide its registration information for the purpose of frustrating any legal action taken by trademark owners.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the Domain Name is 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
A complainant challenging the registration and use of a domain name is required to prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. Pursuant to section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.” Because the Complainant submitted evidence of its ownership of the LOWARA trademark registrations, it has satisfied the standing requirement in this case.
The Complainant alleges that the Domain Name is confusingly similar to its trademark. “Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” 1 “The applicable gTLD in a domain name … is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. 2 Because the Domain Name consists of the entirety of the Complainant’s LOWARA trademark and the gTLD “.info”, the Panel finds that the Domain Name is confusingly similar to the Complainant’s LOWARA trademark.
The first element of the UDRP has been satisfied.
B. Rights or Legitimate Interests
To satisfy the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent.3
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on the evidence, shall demonstrate a respondent’s rights or legitimate interests to a domain name for purposes of paragraph 4(a)(iii):
(i) before any notice of the dispute, the respondent’s use of, or demonstrable 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; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
First, the Complainant alleges that the Respondent did not use of the Domain Name in connection with a bona fide offering of goods or services. The Complainant contends that it did not authorize the Respondent to use the Complainant’s LOWARA trademark in any manner. Without a license or permission from the Complainant, the Respondent is an unauthorized user of the mark, which is using the Domain Name in connection with a website selling purported LOWARA pumps.
Generally, unauthorized resellers might have legitimate interests in a domain name containing complainant’s trademark if their activities comply with the following cumulative requirements (the “Oki Data Test”):
“(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.” 4
Although the evidence on file shows that the website connected to the Domain Name was used for purported sales of LOWARA pumps, the website owners attempted to persuade customers looking for the Complainant’s LOWARA goods to buy less expensive products manufactured by the Respondent. The Respondent website’s design creates a misleading impression of an affiliation between the Complainant and the Respondent by displaying the Complainant’s logo including the words: “Lowara, a xylem brand” and a page which provides information about the Complainant. The website contains no disclosure of the Respondent’s relationship with the Complainant. Because the Respondent’s use of the Domain Name did not comply with the requirements of the Oki Data Test, its use of the Domain Name did not create rights or legitimate interests in the Domain Name.
Second, the Complainant claims that the Respondent is not commonly known by the Domain Name. The evidence of file shows that neither the Respondent’s name, “Evgeniya”, nor the name of her organization, “IWT”, resembles the Domain Name.
Third, the Complainant contends that the Respondent’s actions do not comply with fair use requirement of the paragraph 4(c) of the UDRP. A “respondent’s use of a domain name will not be considered ‘fair’, if it falsely suggests affiliation with the trademark owner”.5 “UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation.”6 Because the Domain Name is identical to the Complainant’s LOWARA trademark, it creates an impression of affiliation with the Complainant. Furthermore, the Respondent’s use of the Domain Name in connection with the website that displays the Complainant’s logo and offers for sale the Complainant’s goods is unfair.
The Panel, therefore, finds that the Complainant has made out a prima facie case in respect to the Respondent’s lack of rights or legitimate interests in the Domain Name. Once a complainant has made out the prima facie case, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name.7 Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.8 Because the Respondent failed to rebut the Complainant’s prima facie case, the Complainant has satisfied the second element of the UDRP.
C. Registered and Used in Bad Faith
To establish the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith. The Complainant contends that that the Respondent registered the Domain Name in bad faith because it knew of the Complainant’s trademark at the time of the Domain Name registration. Evidence submitted by the Complainant shows that the Respondent registered the Domain Name many years after the Complainant registered the LOWARA trademark. The Respondent used the Domain Name to direct to a website, designed to look like a website endorsed by or affiliated with the Complainant because the website displayed the Complainant’s “Lowara, a xylem brand” logo and a page with information about the Complainant and its goods. Based on the uncontroverted evidence, the Panel concludes that the Respondent registered the Domain Name in bad faith to trade on the goodwill of the Complainant’s trademark.
The Complainant alleges that the Respondent is using the Domain Name in bad faith. To prove a respondent’s bad faith use of a domain name, a complainant must establish one of the several non-exclusive scenarios set forth in the UDRP paragraph 4(b). One of such scenarios is a respondent’s intentional use of the domain name to attract, for commercial gain, Internet users to its website “by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location”9 . The evidence on file shows that the Respondent used the Domain Name to direct to a website, designed to look like a website endorsed by or affiliated with the Complainant. Although the “www.lowara.info” website purportedly offered for sale in Ukraine the Complainant’s LOWARA pumps, it was used to attempt to sell less expensive pumps manufactured by the Respondent to customers interested in the Complainant’s products.
Evidence on file also shows that the Respondent provided false contact information for registration of the Domain Name, which is another indication of bad faith.10
Therefore, the Panel finds that the Domain Name was registered and is being used in bad faith. The third element of the UDRP has been satisfied.
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 Domain Name <lowara.info> be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: October 30, 2018
1 Section 1.7, WIPO Overview 3.0.
2 Section 1.11.1, WIPO Overview 3.0.
3 Section 2.1, WIPO Overview 3.0.
4 Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903
5 See section 2.5.1., WIPO Overview 3.0.
6 Id.
7 Section 2.1, WIPO Overview 3.0.
8 Id.
9 Paragraph 4(b)(iv), UDRP.