WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LPG Systems v. Hoomaan Sheikholeslami, EDEN Advertising Group
Case No. DCO2011-0055
1. The Parties
The Complainant is LPG Systems of Valence, France, represented by Cabinet Laurent & Charras, France.
The Respondent is Hoomaan Sheikholeslami, EDEN Advertising Group of Staines, United Kingdom of Great Britain and Northern Ireland with corresponding address in Tehran, Iran.
2. The Domain Name and Registrar
The disputed domain name <lpgsystems.co> is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) against Protected Domain Services on October 17, 2011. On October 17, 2011, the Center transmitted by email to Name.com LLC (the “Registrar”) a request for registrar verification in connection with the disputed domain name. On October 18, 2011, 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. Also, on October 18, 2011, the named respondent, Protected Domain Name Services (“PDS”) submitted to the Center an Informative Filing advising that it is a commercial privacy service and does not own or control the disputed domain name. PDS also revealed the identity of the actual registrant, namely, Hoomaan Sheikholeslami, EDEN Advertising Group. The Center sent an email communication to the Complainant on October 20, 2011 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 amendment to the Complaint on October 20, 2011. Also, in response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed the second amendment to the Complaint on October 31, 2011.
The Center verified that the Complaint together with the amendments 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2011. The Response was filed with the Center on November 23, 2011.
The Center appointed Lana I Habash as the sole panelist in this matter on November 30, 2011. 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.
Upon initial review of the Case File, on December 8, 2011, the Panel issued a Procedural Order inviting the Respondent to provide any supporting evidence to substantiate the assertions made in its Response that it has purchased the disputed domain name on behalf of a client. In response to the Procedural Order, on December 16, 2011, the Respondent submitted documents to the Center in Farsi, and therefore on December 19, 2011, the Panel issued the second Procedural Order requesting the Respondent to provide English translations of the provided documents, considering that English is the language of the proceedings. The Complainant later objected to the submission in Farsi in a communication sent to the Center on December 23, 2011.
On December 21, 2011, the Respondent submitted English translations of the documents provided in response to the Procedural Orders, and on December 28, 2011, the Complainant submitted comments on the documents submitted by the Respondent.
In light of the Informative Filing by PDS, the Panel will address this Complaint in relation to the Respondent only.
4. Factual Background
The Complainant, LPG Systems, is a French manufacturer of massage and beautifying apparatuses operating through effective non-invasive, non-aggressive and natural techniques. For twenty years, the Complainant has been designing and manufacturing professional patented technologies for medical treatment and beauty care and slimming; the Complainant enjoys worldwide reputation and market recognition in this field.
The Complainant has trademark rights in the word mark LPG SYSTEMS and holds a number of international and national registrations, the oldest of which dates back to 1986. The Complainant also owns the domain name <lpgsystems.com>.
The Respondent is a well known advertising company with more than 10 years of experience, with the primary business of advertising and designing websites. The Respondent’s portfolio contains more than 100 websites for local and international customers as indicated on their website “www.eden.bz”.
According to the public WhoIs database, the disputed domain name <lpgsystems.co> was registered in January 2005 and resolves to a website that appears to be of a Persian company concerned with car mechanics.
5. Parties’ Contentions
The Complainant contends the following:
The disputed domain name <lpgsystems.co> is identical to the Complainant’s trademark LPG SYSTEMS;
The disputed domain name is also identical to the Complainant’s domain name <lpgsystems.com>, which resolves to the Complainant’s official website; the country code Top Level Domain (“ccTLD”) “.co” is not distinctive and can be easily mistyped when attempting to type “.com”, and as such is a favorite to cybersquatters and typosquatters, who hope to benefit from this inherent characteristic of the “.co ccTLD;
The Respondent has no rights or legitimate interests in the disputed domain name as the Respondent has no registered trademarks or trade names corresponding to the disputed domain name and is not commonly known by a name corresponding to the disputed domain name;
The Complainant has never given any license or an authorization of any sort to the Respondent to use its trademarks;
It is unlikely that the Respondent was not aware of the Complainant’s legal rights in the trademark LPG SYSTEMS;
The Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, particularly since the website is inactive. Moreover, the Complainant contends that there can be no plausible legitimate use of the disputed domain name by the Respondent given the fame of the Complainant’s brand LPG Systems;
The Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant, as evidenced in the email communications between the Complainant and the Respondent indicating that the Respondent is willing to sell the disputed domain name to the highest bidder;
When the Complainant informed the Respondent that it refuses to buy the disputed domain name on such terms and at a price of EUR 95,000, and indicated that it would pursue a UDRP administrative procedure to get the disputed domain name, the Respondent updated the status of the disputed domain name so that the registrant became anonymous, which is usually a sign of bad faith;
The fact that the Respondent has about 137 – 165 other domain names registered in its name or with the email address “[…]@eden.bz” as a contact for the WhoIs record indicates that the Respondent engages in cybersquatting;
After the Complainant indicated its intentions to pursue the UDRP administrative procedure, the Respondent registered other domain names that fully incorporate the Complainant’s trademark LPG SYSTEMS, with the Registrar, Name.com LLC: <lpgsystems.org>, <lpgsystems.mobi> and <lpgsystems.name>.
The Respondent contends that:
“LPG systems” does not exclusively refer to the Complainant or its systems; if typed into any search engine the results that come out include various companies and concepts with the exact same name, such as “Liquefied Petroleum Gas”, “LPG Gas”, “Literary Press Group”, and others including the Complainant’s website;
According to the United States Patent & Trademark Office, many trademarks are registered as LPG and two as LPG SYSTEMS, and the word “Systems” cannot be granted on exclusive basis to any one entity;
“LPG Systems” is not a unique name and conveys gas related products rather than wellness and that hundreds of thousands of identical domain names with different extensions are registered but refer to completely different companies in totally different industries;
There are several domain names registered under “.co”, which correspond to multi-billion dollar companies, and that such “.co” domain names are put up for sale, in line with the notion of creating many domain name registrations and extensions, providing fair access to resources and avoiding monopolization of the Internet;
The Respondent purchased the disputed domain name for one of their potential customers in the petroleum industry, a reseller of LPG systems, and is not related to wellness equipment;
The Respondent did not contact the Complainant to offer the disputed domain name for sale, it was the Complainant that contacted the Respondent, where the Respondent advised the Complainant that it is in the process of preparing a website for its customer, who is a reseller of LPG systems (which corresponds, according to the Respondent, to “Liquefied Petroleum Gas”) in Iran;
Currently, the disputed domain name resolves to a website that serves as an informal blog about liquefied petroleum gas until a more comprehensive website has been completed;
The disputed domain name was not registered in bad faith; there is no conflict with the Complainant’s website or industry, nor does the Respondent intend to disrupt the image of the Complainant in its own industry.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name <lpgsystems.co> transferred to it, the Complainant must prove the following under the Policy, paragraph 4(a)(i-iii):
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated its rights to the trademark LPG SYSTEMS. The Panel is also satisfied that the Complainant is well known in the industry.
It is well established that Top Level Domains sudh as the “.co” ccTLD may be disregarded when assessing the first criterion of the Policy. The Panel therefore finds that the disputed domain name is identical to the Complainant’s trademark LPG SYSTEMS.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark 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 complainant’s marks.
In a UDRP proceeding, once the complainant makes a prima facie case that the respondent has no rights or legitimate interests, the burden shifts to the respondent to show one of the three circumstances under paragraph 4(c) of the UDRP, or any other basis for rights or legitimate interests. In this proceeding, the Respondent made assertions in its Response that it has registered the disputed domain name on behalf of one of its customers involved in the liquefied petroleum industry as a reseller of LPG systems in Iran. Furthermore, the Respondent argues that the term “LPG Systems” does not exclusively correspond to the Complainant and the Complainant’s products and that a search will yield a number of results including an explanation that “LPG Systems” corresponds to “Liquefied Petroleum Gas Systems”, which is the industry in which its client is involved.
The consensus view among UDRP panels has been that the mere registration of a domain name that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name, and that the tests remains that whether the domain name would need to be genuinely and legitimately used.
To help establish whether the Respondent does in fact have legitimate interests in the disputed domain name as asserted in the Response, the Panel issued Procedural Orders inviting the Respondent to submit any kind of substantiating evidence, showing that it has in fact registered the disputed domain name to the benefit of a client, who is a reseller of LPG systems in Iran. In response to the Procedural Orders, the Respondent submitted what appears to be a redacted contract signed between the Respondent and its client, where the identity of the client was blinded, presumably for confidentiality purposes. The Panel also cannot establish the date on the redacted contract.
The documents provided by the Respondent fail to clarify the identity of the actual owner of the disputed domain and to establish that the disputed domain name is and/or will be used in connection with bona fide offering of goods or services. The Respondent has not submitted any other evidence in this regard. The Panel therefore finds that the Respondent failed to rebut the Complainant’s prima facie case and that the second element of the Policy is established.
C. Registered and Used in Bad Faith
For the purposes 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 a domain name in bad faith:
“(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 web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
While the Panel acknowledges that the term “LPG Systems” may well be used in connection with concepts and products other than the Complainant’s, the facts at hand and the timeline of the events as outlined by the Complainant, together with the failure of the Respondent to establish rights or legitimate interests in the disputed domain name, prompt the Panel to look beyond the assertions of the Respondent that the disputed domain name has not been registered in bad faith.
Prior to any communication between the Complainant and the Respondent, the disputed domain name was passively held by the Respondent. In the communications between the Complainant and the Respondent, the Respondent invited the Complainant to bid for the disputed domain name and stated that the disputed domain name would be sold to the highest bidder, where the starting price was EUR 95,000. The Respondent however, explained in its communication that the disputed domain name was initially registered for a gas company, and is now up for sale. While passive holding in itself is not an indication of bad faith registration, when combined with an offer to sell for valuable consideration in excess of out-of-pocket costs directly related to the domain name, panels have found that passive holding can be in bad faith. With respect to the Respondent’s assertion that the disputed domain name has been initially registered for a gas company and is now put up for sale, in principle, the Panel would have acknowledged the right of a person or entity in selling a domain name in which it has rights or legitimate interests for a price that is acceptable to them, even if such price is overly high. However, in this case and as discussed under “Rights or Legitimate Interests”, the Respondent has failed to establish any rights or legitimate interests in the disputed domain name and as such, this statement does not support the Respondent’s argument that it has not registered the disputed domain name in bad faith.
Moreover, the fact that the Respondent modified the details of the registrant and altered the content of the web page to which the disputed domain name resolves, adds to the conviction of the Panel that the Respondent has not been acting in good faith, particularly with the purchase of additional domain names that fully incorporate the Complainant’s trademark.
Therefore, and on the balance of probabilities, the Panel finds that the disputed domain name has been 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 disputed domain name <lpgsystems.co> be transferred to the Complainant.
Lana I Habash
Dated: January 5, 2012