WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LYTESS v. Private Whois / Contact Privacy Inc. Customer 0132775310
Case No. D2013-1316
1. The Parties
The Complainant is LYTESS of Fondettes, France, represented by INSCRIPTA, France.
The Respondent is Private Whois of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland; Contact Privacy Inc. Customer 0132775310 of Toronto, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <lytessshop.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2013. On July 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 July 23, 2013 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 July 23, 2013.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2013.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 21, 2013. 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 is the owner of the registered trademark in France, LYTESS-SHOP, No. 093668941 for cosmetics in International class 3, clothing and what it calls cosmetextiles in International class 25 and for selling and promotional services in relation to such products in International class 35. This trademark was filed on August 4, 2009 and registered on March 12, 2010.
It is also the owner of registered trademarks in a number of jurisdictions around the world including the European Community, France and Canada for LYTESS in respect of goods in International classes 3 and 25. These trademarks were registered at varying times between 2003 and 2012. In most, the registrations were granted well before 2010.
The Complainant offers for sale and sells its Lytess brand garments (at least) from websites including one at “www.lytess-shop.com”. This website is mostly in the French language, but invites customers from many listed countries identified by the countries’ national flags. In addition, it offers (in at least both French and English) to sell the Complainant’s products to potential customers from countries not identified by the listed flags in response to emailed requests.
The disputed domain name was registered on June 4, 2010.
It resolves to a website which consists of a number of “Related Searches”. The first two links link through to sites headed “Lytess” and “Lytess Shapewear”. Some of the links from these pages may be to the Complainant’s products, but most link through to other brands’ products. For example, under Lytess Shapewear from a link on the “Lytess” page, appear click through advertisements for shapewear products from Nancy Ganz, Jeanswest, Spanx and Jockey. Apart from the links on the landing page for “Lytess” and “Lytess Shapewear” (which, in turn, have links in the manner described), most of the other links on the landing page appear to be links through to products wholly unassociated with the Complainant.
5. Discussion and Findings
The Center was unable to transmit written notice of the Complaint to the Respondent by fax as no carrier was detected. The Registrar has confirmed, however, that the fax number is the number recorded in the Respondent’s WhoIs record. Written notice of the Complaint was delivered to the address in Toronto showing in the public WhoIs database. The courier delivery to the address in the Cayman Islands provided by the Registrar, however, was not able to be delivered. The Center was also able to email the notification of the Complaint successfully to two of the three email addresses available. The email to […]@icscaymanis.com, one of the addresses provided by the Registrar in response to Registrar verification, was unsuccessful.
In these circumstances, the Panel finds that the Complaint has been properly served on the Respondent. The registrant of a domain name has an obligation to maintain correct and up to date contact details in the WhoIs record. The Respondent cannot avoid responsibility for its actions by failing to comply with that obligation. Further, the Respondent has chosen a “Private Whois” privacy protection address for its public facing WhoIs record. Notification of the Complaint has been successfully served on two of the three email addresses on record. It is for the Respondent, having chosen that service, to make sure that appropriate arrangements are in place for notice of documents to be passed on to it.
The Registrar has also confirmed that the language of the registration agreement is English. English is also the official language of Grand Cayman Islands and one of the two official languages of Canada. The website to which the disputed domain name resolves, whether from France (where the Complainant is located) or Australia (where the Panel is located) appears in English. In these circumstances, the Panel finds that English is the language of the proceeding.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of registered trademarks for both LYTESS and LYTESS-SHOP referred to in section 4 above.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking that comparison, in the present circumstances it is permissible to disregard the “.com” component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 and Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252.
The omission of the hyphen from the Complainant’s registered trademark in the disputed domain name is a trivial and largely insignificant difference in terms of a visual comparison. It may also seem a natural abbreviation or contraction to Internet users as domain names and URLs often omit punctuation marks.
The addition of the generic and descriptive term “shop” to the Complainant’s registered trademarks for LYTESS does not distinguish the disputed domain name from those trademarks. It is an entirely apt and natural extension to be added to the Complainant’s registered trademark which suggests the shop which offers for sale “Lytess” products.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The use of the privacy shield in this case has made it impossible to identify the Respondent with any certainty. The Complainant relies on early decisions which have held that the use of a privacy service with a “parking page” for pay-per-click advertisements that click through to brands competing with the Complainant’s products as a positive indicator that the Respondent has no rights or legitimate interests in the disputed domain name.
It may be inferred from the bringing of the Complaint and the nature of the Respondent’s website, particularly when contrasted with the Complainant’s website, that the Complainant has not authorized the Respondent to use the Complainant’s trademarks. In addition, the way the Respondent is using the disputed domain name, as a parking page for pay-per-click advertising links to the Complainant’s competitors, does not qualify as a bona fide offering of goods or services. It is also not noncommercial use of the disputed domain name. Further, so far as the Panel can ascertain, Lytess appears to be an invented or coined word. It does not appear to be a natural nor apt description of the goods in question. That appears to be the role of words like cosmetotextile and shapewear.
As already noted, the Complainant is not in a position to establish the identity of the Respondent with any certainty. That is knowledge effectively available only to the Respondent. The Respondent has not sought to provide that information or any other justification. Given the invented or coined nature of the Complainant’s trademarks, it would seem most unlikely that the Respondent could claim derivation of the disputed domain name from the Respondent’s own name.
Accordingly, the Panel finds that the Complainant has established the Respondent does not have rights or a legitimate interest in the disputed domain name under the Policy.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and is being used in bad faith by the Respondent.
It is well established that the use of another’s trademark to attract traffic to links to products competing with that trademark owner’s products is use in bad faith. As the disputed domain name was registered well after the Complainant commenced selling its products and had registered its trademarks and, further, as the trademark appears to be an invented or coined term which functions only as an identifier of the Complainant as the trade source of the products, it may fairly be inferred that the Respondent also registered the disputed domain name with a view to putting it to the use to which it has been put. That is, in bad faith.
Accordingly, the Panel finds that the Complainant has established the disputed domain name has been registered and used in bad faith.
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, <lytessshop.com>, be transferred to the Complainant.
Warwick A. Rothnie
Date: September 3, 2013