WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LPG Systems v. Aleksei Kistenev

Case No. D2015-0955

1. The Parties

The Complainant is LPG Systems of Valence, France, represented by Marie Emmanuelle Haas, France.

The Respondent is Aleksei Kistenev of Moscow, Russian Federation, represented by Open Law, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <lpgstyle.com> (the “Domain Name”) is registered with Regtime Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2015. On June 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 5, 2015, 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 stating that Russian is the language of the Registration Agreement for the Domain Name. Further to the Center’s language of proceedings communication, the Complainant requested English to be the language of proceedings on June 12, 2015.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 18, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2015. The Response was filed with the Center on July 7, 2015.

The Center appointed Olga Zalomiy as the sole panelist in this matter on July 16, 2015. 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, LPG Systems, is a French manufacturer of massage and beautifying apparatuses operating through effective non-invasive, non-aggressive and natural techniques.

The Complainant is the owner of a stylized word trademark LPG, namely International Trademark No. 636962, registered on June 6, 1995, in international classes 3, 10, 16, 38, 41 and 42, and designated for a variety of countries, including the Russian Federation. The Complainant is also the owner of International Trademark No. 553184, LPG SYSTEMS (word), registered April 5, 1990, in international cases 10 and 28. Besides the LPG and LPG SYSTEMS trademarks, the Complainant maintains a variety of other trademark registrations.

The Respondent registered the Domain Name on June 6, 2011. The website associated with the Domain Name offers used LPG equipment for sale. Previously, the website also offered for sale Sensol products.

5. Parties’ Contentions

A. Complainant

1. The Complainant claims that the Domain Name is identical or confusingly similar to the LPG and LPG SYSTEMS trademarks which the Complainant owns, because the Domain Name incorporates the trademarks in their entirety. The Complainant claims that the LPG SYSTEMS trademark is used as a “favicon” (a Favorites Icon, i.e., a small graphic that precedes the website’s URL in the web browser) at the Respondent’s website to which the Domain Name resolves. The Complainant asserts that the Domain Name comprises the trademark LPG, a coined term comprising its founder’s initials (Louis Paul Guitay), and the generic word “style”, which is visually and intellectually similar to the word “systems” in the Complainant’s LPG SYSTEMS mark. The Complainant argues that adding the generic word “style” to the Complainant’s LPG mark in the Domain Name does not dispel confusing similarity between the Domain Name and the LPG mark.

2. The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name because the Complainant has not granted the Respondent any authorization to use and register a domain name comprising the Complainant’s trademarks. The Complainant argues the Respondent did not use the Domain Name in connection with bona fide offering of goods and services because neither “LPGSTYLE” nor “LPG STYLE” is used on the website linked to the Domain Name. Instead, the LPG and LPG SYSTEMS trademarks are extensively used on the “www.lpgstyle.com” website. The Complainant asserts that the Respondent is using the Domain Name to divert Internet users to a website infringing on the Complainant’s copyrights and trademarks, and to promote goods of the Complainant’s competitors.

The Complainant claims the Respondent has not been commonly known by the Domain Name because the Respondent’s name is Alexey Kistenev and, according to the Complainant’s private investigation, the name of the company behind the “www.lpgstyle.com” website is Unitex.

The Complainant further claims that its LPG SYSTEMS, LPG, CELLU M6, LIPO M6, LIFT M6, COSMECANIQUE, ENDERMOLOGIE, KEYMODULE and CELLU M6 INTEGRAL trademarks have been used on the Respondent’s “www.lpgstyle.com” website along with the trademarks SENSOL and SENSKIN, which belong to the Complainant’s competitors, and thus creates an unwanted association between the Complainant and its competitors.

The Complainant asserts that the Respondent used the Complainant’s copyrighted materials without authorization. The Complainant claims the Respondent is using the Domain Name for commercial gain, misleadingly diverting customers and tarnishing the Complainant’s trademarks, thereby excluding any commercial or fair use of the Domain Name.

3. The Complainant claims that the Domain Name was registered and is being used in bad faith. The Complainant asserts that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating likelihood of confusion with the Complainant’s mark on the source, sponsorship, affiliation or endorsement based on the following facts. The Complainant asserts that the Respondent registered the Domain Name with the full knowledge of the Complainant’s rights in the LPG SYSTEMS and LPG trademarks. The Complainant argues that by registering the Domain Name, which includes the Complainant’s trademark, the Respondent attempted to disrupt the Complainant’s business in the Russian Federation conducted though the Complainant’s authorized distributor LLC GK SportMedImport. The Complainant claims that the website associated with the Domain Name is the same as several other websites allegedly belonging to the Respondent. The Complainant also asserts that the website associated with the Domain Name sells and promotes products of the Complainant’s competitors. The Complainant alleges that using the LPG and other trademarks of the Complainant, the Complainant’s copyrighted images, and the sale of Sensol and Senskin products which belong to Complainant’s competitors, adds to the likelihood of confusion.

B. Respondent

1. The Respondent agrees the Domain Name is similar to the Complainant’s LPG mark. The Respondent, however, argues that the LPG mark is not a distinctive mark in the Russian Federation, and that the inclusion of the LPG trademark in the Domain Name does not indicate or imply that the website associated with the Domain Name is owned or controlled by the Complainant. The Respondent further argues that the website associated with the Domain Name contains a footer which states that all equipment sold through the website is used, indicating that the Respondent is a reseller of the goods. The Respondent asserts that the word “style”, which is a distinctive part of the Domain Name, is a generic word distinguishing the Domain Name from the Complainant’s official website in the Russian Federation. The Respondent claims that the direct meaning of the word “style” is “the way something is done” indicating that the activity of the Respondent is distinct from that of the Complainant. The Respondent denies that the Complainant’s claim that the word “style” in the Domain Name is confusingly similar to the Complainant’s design trademark LPG SYSTEMS and asserts that the Complainant has no word mark. Finally, the Respondent contends that, like many other trademarks in the Russian Federation, the LPG mark has lost its distinctiveness and has become the term that names certain equipment and massage apparatuses.

2. The Respondent claims that it has legitimate interests regarding the Domain Name because, prior to commencement of the dispute, the Respondent used the Domain Name to sell used LPG equipment. The Respondent points out that it is involved in a fully legal activity – reselling used LPG equipment. The Respondent argues the footer of the website associated with the Domain Name clearly indicates its relationship with the Complainant as a reseller of the LPG equipment by stating “Only ORIGINAL, only France, non-analogous and non-China” [sic] and that “[a]ll equipment is used”. According to the Respondent, the Facebook page “lpgstyle.com” that contains the header “Used LPG equipment” supports this contention.

The Respondent asserts that it is using the website associated with the Domain Name to sell only LPG Systems used equipment. The Respondent alleges that the website associated with the Domain Name accurately discloses the Respondent’s relationship to the trademark owner as one of a reseller of used LPG equipment by placing the footer “Only ORIGINAL, only France, non-analogous and not China” [sic] on each page of the website. The Respondent further asserts the “www.lpgstyle.com” website contains no statement that the Respondent is an official distributor of the Complainant.

Finally, the Respondent claims that it has never tried to corner the market in domain names for the Complainant. The Respondent admits that it is the owner of only two domain names containing the element “lpg”: <lpgstyle.com> and <lpgstyle.ru>.

3. The Respondent alleges that he is not a competitor of the Complainant, nor that the Domain Name was registered to disrupt the Complainant’s business, nor for the purposes or reselling it to the Complainant, nor to prevent the Complainant from reflecting its mark in a corresponding domain name. The Respondent further claims that the Domain Name was not registered to attract for commercial gain, Internet users to the Respondent’s website, by creating likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent argues that it uses the website associated with the Domain Name to sell only trademarked LPG products. The Respondent also claims that the owners of the SENSOL and SENSKIN marks are not competitors of the Complainant.

6. Discussion and Findings

6.1. Language of the proceeding.

Paragraph 11(a) of the Rules provides that:

“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.”

Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding would have been Russian. The Complainant requested that the language of the proceeding be English because translating it into Russian would require the Complainant to incur considerable expenses, and because the Domain Name was in English.

It is established practice to make a decision regarding the language of the proceeding to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. See, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593.

In the present case, the Respondent did not object to the Complainant’s request for English to be the language of the proceeding and submitted his response in English. The Panel finds that the Respondent is proficient in English and that the Respondent implicitly consented to English being the language of the proceeding. The Complainant, however, is not proficient in Russian. It will have to incur considerable expense if it is forced to translate the Complaint into Russian. The Panel, therefore, determines it will be fair to both parties to conduct the proceeding in English.

6.2. General discussion

In this UDRP proceeding, the Complainant must prove, by a preponderance of the evidence¹ each of the following UDRP elements² :

(i) the Domain Name registered by the Respondent 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

The Complainant and the Respondent both agree the Domain Name is similar to the LPG trademark owned by the Complainant. The Parties, however, are in dispute about the significance of the word “style” in the Domain Name. The Complainant claims that adding the generic word “style” to the Complainant’s mark LPG in the Domain Name does not dissipate similarity between the Domain Name and the LPG mark. The Respondent has a different view. The Respondent argues that the LPG mark has lost its distinctiveness in the Russian Federation and the word “style” is a distinctive part of the Domain Name. Both parties are also in disagreement about comparison of the word “style” in the Domain Name and the word “systems” in the Complainant’s mark LPG SYSTEMS.

First, it is well established among UDRP panelists that “[t]he test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion.”³ Therefore, the test of confusing similarity under the UDRP is confined to a comparison of the Domain Name and the trademark alone, excluding any favicons.

Applying the test for confusing similarity to the Complainant’s LPG trademark, the Panel finds the Domain Name to be confusingly similar to the Complainant’s trademark LPG. The Panel finds that it suffices here to compare the Complainant’s word mark LPG and the Domain Name. The LPG trademark is recognizable in the Domain Name and adding the dictionary word “style” does not dispel the confusion. Prior UDRP panels have consistently held that a domain name is generally identical or confusingly similar to a trademark for purposes of the UDRP when the domain name includes the trademark and a dictionary word. See Arnoldo Mondadori Editore S.P.A. v. Grazia Style, WIPO Case No. D2012-0593 (The panel found that in the domain name comprising the GRAZIA trademark and the suffix “style”, the suffix “style” did not operate to distinguish the domain name from the GRAZIA trademark in any significant way).

Finally, the Panel rejects the Respondent’s allegation that the LPG mark has lost its distinctiveness in the Russian Federation. First, a UDRP proceeding is not intended as a forum for the determination of whether a trademark has lost distinctiveness in any jurisdiction. There is no opportunity for a complainant to respond to such an allegation. Second, the Complainant has proved it is the registered owner of the mark LPG in various countries, including the Russian Federation. Such registration is the evidence of the Complainant’s exclusive rights in the Russian Federation and other jurisdictions where the LPG mark is registered, and that the mark is distinctive. As the Respondent submitted no evidence that the LPG trademark registration was cancelled in the Russian Federation for loss of distinctiveness, the Panel cannot find that the LPG mark is not distinctive of the goods for which the Complainant has registered it.

The Panel therefore holds that the Complainant fulfills the first condition of paragraph 4(a) of the UDRP.

B. Rights or Legitimate Interests

To satisfy the second UDRP element, the Complainant may make out a prima facie⁴ showing that the Respondent has no rights or legitimate interests in the Domain Name.⁵

The Complainant and the Respondent both agree the Complainant did not grant the Respondent any authorization to use or to register the Domain Name which included the Complainant’s LPG trademark.

The core of the dispute between the parties, in relation to this element of paragraph 4(a) of the UDRP, is whether the use amounts to a bona fide offering of goods under paragraph 4(c)(i) of the UDRP. The Respondent’s claim that the use was bona fide is based on the following contentions: the goods advertised on the website are genuine goods, the website is used to sell only used LPG goods, the Respondent has a right to resell goods without permission of the trademark owner, and the relationship between the Respondent and the Complainant is accurately disclosed on the website. The Complainant’s claim rests on a stated lack of the Respondent’s conceivable rights or legitimate interests in the absence of an authorization from the Complainant to register a domain name comprised of the Complainant’s mark, and that the Respondent’s use of the Complainant’s trademarks to advertise and sell products of its competitors under the SENSOL and SENSKIN marks allegedly damages the Complainant’s reputation.

It is a consensus view among the UDRP panelists that “a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark.”⁶ Therefore, the question before the Panel is whether the Respondent has made a bona fide offering of LPG goods that would create a legitimate interest in the Domain Name.

The parties do not dispute that the Respondent used the website associated with the Domain Name to sell LPG equipment. The parties disagree on whether the Respondent used the website to sell only LPG equipment. The Respondent contends it currently sells only used trademarked LPG equipment. The Complainant claims the Respondent uses the website associated with the Domain Name to sell both used LPG equipment and products of the Complainant’s competitors under the SENSOL and SENSKIN marks. The Complainant alleges that the website is composed of three parts: the central part, which content varies depending on page selection, and two columns to the left and to the right of the central part, which create a frame to the central part. The Complainant asserts that the right column displays both the LPG trademark and the SENSOL and SENSKIN trademarks.

To support its contention, the Complainant submitted printouts of the Respondent’s website made on May 12, 2015, featuring a SENSKIN trademark in the right column of the website’s frame and the SENSOL trademark in the right and left columns of the website’s frame. The Respondent submitted screenshots of several pages of the “www.lpgstyle.com” website showing that neither SENSKIN, nor SENSOL trademarks are featured on the website. To determine how the website was used in the past, the Panel visited the “www.lpgstyle.com” website and consulted the Internet Archive (“www.archive.org”). It is an established practice, that “[a] panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision,”⁷ The research revealed that although the “www.lpgstyle.com” website offers neither Sensol or Senskin products for sale, it offered Sensol products for sale in the past. The Panel, therefore, finds that the Respondent used the “www.lpgstyle.com” website to sell both used LPG equipment and Sensol products.

The Panel is satisfied that the presentation of the Respondent’s website is likely to mislead Internet users into believing the site is operated or endorsed by or affiliated with the Complainant. The Complainant alleges, and the Respondent does not dispute, that the “www.lpgstyle.com” website uses both the Complainant’s trademarks and copyrighted images. Such use of the Complainant’s trademarks and copyrighted images, with no statement on the true ownership of the website or any clear disclaimer of association with the Complainant, creates a strong impression that the site is an official site of the Complainant. The statements “Only ORIGINAL, only France, non-analogous and not China” [sic] and that “[a]ll equipment is used” that are displayed in the website’s footer do not amount to an accurate and prominent disclosure of the Respondent’s relationship with the Complainant. See, DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160 (that case involved a domain name of an unauthorized Mercedes dealer who used a website associated with the domain name as a discussion forum for the exchange of information between owners, admirers and mechanics of the complainant’s vehicles. The website contained a clear disclaimer that accurately disclosed the relationship between the parties by stating that the website was displaying trademarks that belonged to the complainant and that the respondent was not affiliated with the complainant).

The Panel finds that the Respondent did not make a bona fide offering of LPG goods because it used the website associated with the Domain Name to sell LPG equipment, and goods of a third party, and that the website contained no accurate disclaimer of a relationship between the Parties.

The Panel also notes that the Complainant submitted printouts of several websites it claims to be affiliated or owned by the company Unitech, which it says “is behind” the website associated with the Domain Name and other websites. As the Complainant did not add Unitech as a party to this dispute, nor did it add the other domain names to the Complaint, the Panel will not consider the Complainant’s contentions regarding Unitech or any domain names that were not included in the Complaint.

The Panel finds that as the Complainant proved the Respondent has no rights or legitimate interests in the Domain Name, the Complainant fulfilled the second element of paragraph 4(a) of the UDRP.

C. Registered and Used in Bad Faith

To satisfy the third UDRP element, the Complainant must prove the Domain Name was registered and is being used in bad faith.

Paragraph 4(b)(iv) of the UDRP seems closely on point. That subparagraph would establish bad faith registration and use where a respondent has used a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark on the source, sponsorship, affiliation, or endorsement of the website or of a product or service available at the website.

It is undisputed that the Domain Name was registered by the Respondent knowing the Complainant and its LPG and other marks. While the Panel accepts that the Respondent is currently using the Domain Name to offer for sale only the Complainant’s branded products, its previous history shows that the Respondent used the Domain Name to sell both the Complainant’s equipment and products of a third party. What is important is that it is likely that the Respondent registered the Domain Name to knowingly profit from initial interest confusion, i.e., the scenario where Internet users encountering the Domain Name through a search engine would reach the website believing that the site is operated either by the Complainant or by a licensee or authorized distributor, and then encounter commercial content of the Respondent.

Use of the confusingly similar Domain Name to the Complainant’s LPG trademark, which directs to a website using various trademarks and images of the Complainant, may make Internet users believe that they reached a website of a party authorized by or affiliated with the Complainant, and then to be exposed to the commercial content of the Respondent. The Panel finds it unlikely that the statements “Only ORIGINAL, only France, non-analogous and not China” [sic] and that “all equipment is used” would convey a clear message that the Respondent is not affiliated with the Complainant. This is especially true because instead of prominently displaying conspicuous information that the all of the equipment is used, the Respondent places the statement “все оборудование б/y” in the bottom of each page. The “б/y” symbol in Russian stands for “бывший в употреблении” or “[something] has been used.” It is so easy to miss information that the equipment is used because it is reduced to two tiny letters displayed in the bottom of each page, let alone conclude that the Complainant is not affiliated with the Respondent.

Finally, contrary to the Respondent’s assertion that his “www.lpgstyle.com” website offers for sale only used LPG equipment, the Respondent also appears to offer new LPG equipment for sale. The following statement is displayed at the top of the page offering LPG Cellu M6 Integral equipment for sale: “Новые аппараты LPG – последняя, радикально обновленная версия аппаратов серии Cellu M6”, which translated from Russian means “New LPG apparatus – the latest radically updated version of apparatuses of Cellu MG series,” ⁸ The Panel therefore concludes that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his site by creating a likelihood of confusion with the LPG mark on the source, sponsorship, affiliation or endorsement of his site or the products or services advertised on his site, within the meaning of paragraph 4(b)(iv) of the UDRP.

Therefore, the Panel finds that the Complainant has established the third element of paragraph 4(a) of the UDRP.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the UDRP and 15 of the Rules, the Panel orders that the Domain Name <lpgstyle.com> be transferred to the Complainant.

Olga Zalomiy
Sole Panelist
Date: July 29, 2015

¹ Paragraph 4.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

² Paragraph 4(a) of the UDRP.

³ Paragraph 1.2 of WIPO Overview 2.0.

⁴ See, paragraph 2.1 of the WIPO Overview 2.0.

⁵ Paragraph 4(a)(ii) of the UDRP.

⁶ Paragraph 2.3 of the WIPO Overview 2.0.

⁷ Paragraph 4.5 of the WIPO Overview 2.0.

⁸ http://lpgstyle.com/cellu_m6_integral/