WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fatboy the Original B.V. and Marijn Aart Willem Oomen v. Domain Admin, Whois Privacy Corp.
Case No. D2016-1259
1. The Parties
The Complainants are Fatboy the Original B.V. of 's-Hertogenbosch, the Netherlands and Marijn Aart Willem Oomen of Ophemert, the Netherlands, represented by Visser Schaap & Kreijger, the Netherlands (together "the Complainants").
The Respondent is Domain Admin, Whois Privacy Corp of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <lamzac-hangout.com> is registered with Internet Domain Service BS Corp (the "Registrar"). It was registered on March 23, 2016.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 22, 2016. On June 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 2016, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 18, 2016.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on July 21, 2016. 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
In 2015, the second Complainant created the LAMZAC Hangout, a lounger that can be filled by scooping air. The first Complainant has the exclusive right to distribute the LAMZAC Hangout, and is the owner of Community Design registration no. 002621904-001 for the LAMZAC Hangout. This was registered on January 28, 2015. The LAMZAC Hangout is exclusively available via the Internet from the website available at <fatboy.com>.
The first Complainant owns Benelux trademark registration no. 982679 for LAMZAC in classes 8, 18 and 20. It was filed on September 24, 2015. The first Complainant also owns a Community Trademark application no. 015434301 for LAMZAC in classes 8, 20, 22 and 24, filed on May 13, 2016. The second Complainant owns European Union trademark registration no. 1280719 for LAMZAC in classes 8, 18 and 20, registered on September 29, 2015. The Complainants' registrations for LAMZAC cover inflated pillows and air mattresses.
The disputed domain name was registered on March 23, 2016 and resolves to a website apparently hosting links to Amazon listings for possibly fake versions of the Complainants' product.
5. Parties' Contentions
The Complainants contend that the disputed domain name is identical or confusingly similar to the LAMZAC trademarks owned by the Complainants. The Complainants also contend that the disputed domain name is being used for similar goods as the Complainants' trademarks are registered for, namely inflatable pillows and air mattresses.
The Complainants further contend that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainants refer to the popularity of the LAMZAC Hangout product and the fact that they have had to deal with "dozens of copycats" and "every day […] have to send several cease and desist letters to stop infringing actions by third parties." The Complainants also refer to proceedings which they have brought in the District Court of The Hague to stop the marketing and sale of an illegal copy of the LAMZAC Hangout product. Although the Complainants do not explicitly say so, the relevance of this appears to be that the Respondent is also an infringer of the Complainants' rights and therefore can have no rights or legitimate interests in the disputed domain name. The Complainants contend that the Respondent uses the disputed domain name to "inform the public about a new inflatable air lounger: the LAMZAC Hangout, which – according to the respondent – is available via several websites. On the website, the respondent provides a link to e-bay where dozens of infringing air loungers are offered and sold. These infringers, again, use original marketing materials of the LAMZAC Hangout."1
As to use in bad faith, the Complainants contend that as the disputed domain name contains the "very strong" trademark LAMZAC which is "not in any way descriptive of the goods it is being used for", this is a clear sign of bad faith. The Complainants contend that the disputed domain name was clearly registered for the purpose of disrupting the Complainants' business, as use of the Complainants' trademark in the disputed domain name will generate traffic for the infringing products and sales via Ebay. The Complainants contend that the Respondent has intentionally attempted to attract Internet users to his/her website and to the Ebay page, through use of the Complainants' trademark. The Complainants contend that this is use in bad faith.
The Complainants request that the disputed domain name be transferred to the first Complainant.
The Respondent did not reply to the Complainants' contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainants must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(I) That the disputed domain name is identical or confusingly similar to a trademark in which the Complainants have rights; and
(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 Panel accepts that the Complainants have rights in the mark LAMZAC by reason of their trademark registrations.
The Panel finds that the disputed domain name is confusingly similar to the Complainants' trademarks because LAMZAC is entirely subsumed within the disputed domain name. The additional word "hangout" is insufficient to prevent a finding of confusing similarity, given that the Complainants' product is called the "LAMZAC Hangout".
The Panel therefore finds that paragraph 4(a)(i) is satisfied in favour of the Complainants.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(I) That before notice of the dispute, the respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to a disputed domain name in connection with a bona fide offering of goods or services; or
(II) That the respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or
(III) That the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainants.
Although the Complainants have not explicitly said so, it is clear from their complaint and the submissions made that they have not authorized the Respondent to use the LAMZAC trademark or sell or promote the LAMZAC Hangout product. It is also notable that "LAMZAC" is a made up term, and is combined in the disputed domain name with the word "Hangout" which is a part of the Complainants' product name. In these circumstances the only available inference is that the Respondent intended to refer to the Complainants' product in adopting the disputed domain name, and as the Respondent is not authorized to sell or promote the LAMZAC Hangout product (and has not provided a disclaimer on its webpage disclosing this fact), the Respondent cannot be using the disputed domain name in connection with a bona fide offering of goods or services. Further, there is no evidence that the Respondent has been commonly known by the disputed domain name, and it is clear that the Respondent is not making a legitimate noncommercial use of the disputed domain name.
In these circumstances, and in the absence of any response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favour of the Complainants.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trademark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) That the respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) That the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) That by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, 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.
The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons:
(i) At the time of registering the disputed domain name, the Respondent must have been aware of the Complainants and their rights in the trademark LAMZAC. The Panel infers this from the adoption of the disputed domain name <lamzac-hangout.com>, in circumstances where the Complainants' popular product is called the "LAMZAC Hangout". It is inherently unlikely that the Respondent would think to combine the entirely made up term "LAMZAC" with the word "Hangout" without any knowledge of the Complainants and their product.
(ii) Further, paragraph 2 of the UDRP puts a burden on registrants where it states "By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that … to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of a third party … it is your responsibility to determine whether your domain name infringes or violates someone else's rights." An online search prior to the Respondent registering the disputed domain name would have instantly revealed the first Complainant and its trademark. See in this regard paragraph 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Panel is also satisfied that the disputed domain name has been used in bad faith, for the following reasons:
(i) The Complainants have provided screenshots of the website which displayed at the disputed domain name before it was locked by the Registrar. The screenshots show that the Respondent was utilizing the Complainants' marketing material on the website available at the disputed domain name. The Respondent used the website at the disputed domain name to link interested consumers to Amazon listings for possibly fake versions of the Complainants' product. The Panel therefore finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Amazon listings by creating a likelihood of confusion with the Complainants' mark LAMZAC as to the source, sponsorship, affiliation or endorsement of the Respondent's website and Amazon listings. Some consumers who visit the disputed domain name thinking that the Complainants are its source or that it is affiliated with the Complainants, may click through to the Amazon listings and purchase products not officially on offer from the Complainants. In this regard the Respondent is causing the Complainants loss.
(ii) The Respondent has used a privacy service. Although use of a privacy service is not in and of itself an indication of bad faith, it is relevant that this service is continuing to be used to conceal the Respondent's identity after institution of this proceeding. In this regard, paragraph 3.9 of the WIPO Overview 2.0 states "registrant use of a privacy service in combination with provision of incomplete contact information to such service or a continued concealment of the 'true' or 'underlying' registrant (possibly including that registrant's actual date of acquisition) upon the institution of a UDRP proceeding may be evidence of bad faith."
(ii) The Panel is also entitled to draw a negative inference from the Respondent's failure to respond to the Complaint.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.
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 <lamzac-hangout.com> be transferred to Fatboy the Original B.V.
Andrew Brown Q.C.
Date: August 3, 2016
1 While the Complainant makes reference to Ebay links on the site under the disputed domain name, the evidence on record reflects that these links are in fact to Amazon.