WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LELOi AB v. Ren Iacazzi, JeuxIBI SA
Case No. D2015-0966
1. The Parties
The Complainant is LELOi AB of Stockholm, Sweden, represented by von lode advokat ab, Sweden.
The Respondent is Ren Iacazzi, JeuxIBI SA of Geneva, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <lelostore.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 8, 2015. On June 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 15, 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 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 7, 2015.
The Center appointed Luca Barbero as the sole panelist in this matter on July 9, 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 is a Swedish company which manufactures and sells intimate lifestyle products under the trademark LELO since 2003.
The Complainant is the owner of the Community Trade Mark No. 012798567 for LELO, filed on April 16, 2014 and registered on September 10, 2014, in classes 3, 9 and 10. The Complainant is also the owner of the Swedish trademark No. 2005/09564 for LELO, filed on December 18, 2005, in classes 3, 4 and 10, and currently expired.
The Complainant operates the website "www.lelo.com". The corresponding domain name <lelo.com> was registered on March 20, 2002.
The disputed domain name <lelostore.com> was registered on January 20, 2012.
At the time of the drafting of the decision, the disputed domain name does not resolve to an active website. However, according to the screenshots submitted by the Complainant, the disputed domain name previously resolved to a website promoting the sale of purported LELO products.
5. Parties' Contentions
The Complainant contends that the disputed domain name is confusingly similar to the trademark LELO as it comprises the trademark in its entirety with the addition of the term "store".
The Complainant asserts that the Respondent is offering the Complainant's goods under the trademark LELO without consent of the Complainant and without being an agent or legitimate reseller.
The Complainant also submits that users may be confused regarding the origin of the goods and believe that there is a legitimate connection between the Respondent and the Complainant.
The Complainant points out that the Respondent registered the disputed domain name in bad faith being aware of the Complainant's trademark, as the Complainant has been actively selling goods under the trademark LELO for several years before the registration of the disputed domain name.
The Complainant further states that the Respondent is also using the disputed domain name in bad faith since it has been selling the Complainant's LELO products without being an authorized reseller.
The Complainant informs the Panel that it tried to contact the Respondent on January 23, 2014, but received no answer.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
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, these 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 disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of a valid Community Trade Mark registration, filed on April 16, 2014, for the word mark LELO.
As indicated in paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), the location of the trademark, its date of registration and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.
The threshold test for confusing similarity under paragraph 4(a)(i) of the Policy involves a comparison between the trademark and the disputed domain name to determine the likelihood of confusion by Internet users. The trademark at issue generally needs to be recognizable as such within the domain name, and the addition of common, dictionary, descriptive or negative terms are typically not regarded as sufficient to prevent threshold confusion by Internet users. See paragraph 1.2 of the WIPO Overview 2.0.
In the case at hand, the Panel notes that the trademark LELO is entirely comprised in the disputed domain name, with the addition of the term "store", which is insufficient to exclude the likelihood of confusion between the disputed domain name and the Complainant's trademark.
See, among the numerous UDRP decisions finding that the addition of generic or descriptive terms to a trademark is not a distinguishing feature, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 ("diet" added to the ZONE mark); Fry's Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 ("electronic" added to the FRY mark); Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 ("chase", "girlsof", "jobsat", "sams", "application", "blackfriday", "blitz", "books", "career(s)", "check", "flw", "foundation", "games", "mart", "photostudio", "pictures", "portrait", "portraitstudio(s)", "registry", "retaillink" and "wire" added to the WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 ("chart", "miusic", "earena", "sweep", "nfl" and "coliseum" added to the PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 ("net" and "training" added to the ISO mark); Banca Intesa S.p.A v. Roshan Wickramaratna, WIPO Case No. D2006-0215 ("online" added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565 (addition of the term "software" to the trademark AUCHAN).
The Panel furthermore finds that the inclusion of the term "store" is particularly apt to mislead Internet users into believing that the website published at the disputed domain name is operated by, or with the authorization of, the Complainant.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is established in paragraph 4(a) of the Policy that the Complainant has the burden of proof. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with previous UDRP decisions, it is well-established that it is sufficient that the Complainant make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701).
In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent, by not submitting a Response, has failed to prove any of the circumstances that could demonstrate, pursuant to paragraph 4(c) of the Policy, rights or legitimate interests in the disputed domain name.
According to the documents and statements submitted by the Complainant, there is no relation 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 trademark or to register the disputed domain name.
In addition, there is also no indication before the Panel that the Respondent might be commonly known by the disputed domain name.
The screenshots submitted by the Complainant show that the disputed domain name was redirected in the past to a website promoting the sale of purported LELO products. Based on a review of said documents, which have not been challenged by the Respondent, the Panel finds that the Respondent's use of the disputed domain name was apt to induce users to believe that the website was operated by, or affiliated with, the Complainant.
In view of the above, the Panel finds that the disputed domain name has not been used in connection with a bona fide offering of goods or services, or with a legitimate, noncommercial or fair use.
The Panel therefore finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In light of the prior registration and use of the Complainant's trademark LELO in connection with the intimate lifestyle products manufactured and sold by the Complainant since 2003 and available for sale also on the Complainant's website "www.lelo.com", and considering that the Respondent has used the disputed domain name to promote the sale of purported LELO products, the Panel finds that the Respondent was unquestionably aware of the Complainant's trademark at the time of the registration of the disputed domain name, with which it is confusingly similar.
As to the use of the disputed domain name, the Panel notes that, in light of the contents of the Respondent's website as highlighted by the screenshots on records, and of the absence of a clear disclaimer informing users as to the absence of affiliation of the website with the Complainant, Internet users could have been easily misled about the source or affiliation of the website and of the products promoted therein.
Therefore, the Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of its website and of the products on said website.
At the time of the drafting of this decision, the disputed domain name is not pointed to an active website.
However, in view of the circumstances of the case and as mentioned in prior UDRP decisions, the Panel notes that passive holding of a domain name does not prevent the finding of bad faith use. See, amongst others, the leading case Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003 and a number of following cases.
Therefore, the Panel finds that the disputed domain name was registered and is being 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 <lelostore.com> be transferred to the Complainant.
Date: July 23, 2015