WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LG Electronics do Brasil Ltda. v. Perfect Privacy, LLC / Ineide M Oliveira
Case No. D2020-0589
1. The Parties
Complainant is LG Electronics do Brasil Ltda., Brazil, represented by Dannemann Siemsen, Brazil.
Respondent is Perfect Privacy, LLC, United States of America / Ineide M Oliveira, Brazil.
2. The Domain Name and Registrar
The disputed domain name <assistencialgcentralsp.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2020. On March 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2020, 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 Complainant on March 12, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on March 19, 2020.
The Center verified that the Complaint together with the amendment 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 14, 2020. Respondent sent various email communications on April 14 and April 21, 2020.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on April 21, 2020. 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
Complainant is LG Electronics do Brasil Ltda., which is the Brazilian subsidiary of LG Corporation. LG Corporation is a Republic of Korea conglomerate, one of the world leaders in the electronics segment, which controls more than 118 local subsidiaries over the world, with approximately 75,000 executives and employees.
LG Corporation has manufactured many new products, applied new technologies in the form of mobile devices and digital TVs in the 21st century, and continues to grow worldwide as a global company. Complainant is responsible for LG Corporation’s operations in Brazil, offering to the Brazilian consumers a broad range of electronic products as well as the support and technical assistance services for its products.
In order to protect its investments and rights in Brazil, LG Corporation owns several trademark registrations before the Brazilian Patent and Trademark Office (INPI) for the sign LG in International class 9 (Reg. Nos. 910448841; 818502967; 910449333); 7 (Reg. No. 901060330); 11 (Reg. No. 901060615); and 37 (Reg. Nos. 821026836; 830978062).
Complainant’s main shareholder also owns the domain name <lg.com> since 1995, that is, 20 years before the registration of the disputed domain name <assistencialgcentralsp.com>.
It is important to note that Complainant’s trademark LG is protected in Brazil since 1995, while the disputed domain name <assistencialgcentralsp.com> was registered by Respondent on July 10, 2015 and resolves to a page offering technical support services for LG as well as Complainant competitors’ household appliances.
5. Parties’ Contentions
Complainant submits that the disputed domain name <assistencialgcentralsp.com> is confusingly similar to its registered trademark LG and its domain name <lg.com>.
This is because the words which integrate the disputed domain name, namely, “assistencia”, “central” and “sp”, are descriptive and of common use in Brazil. This way, the distinctive part of the disputed domain name is “lg”, which is identical and therefore confusingly similar to Complainant’s trademark LG.
In addition, Complainant argues that the term “assistencia” means “assistance” or “support” in English, what may cause consumer’s confusion by leading them to think that Respondent’s website is Complainant’s official website for technical support services, fulfilling the requirements of paragraph 4(a)(i).
Furthermore, Complainant affirms that Respondent does not have any rights or legitimate interests in respect of the trademark LG nor any permission to register the trademark as a domain name.
Complainant alleges that the webpage displayed through the disputed domain name offers technical support services for LG appliances, but Respondent is not an authorized technical support provider by Complainant. In this regard, Complainant claims that the referred webpage does not clarify that it has no relation with Complainant, and this will be the consumer’s presumption since the trademark LG is being used by Respondent as the distinctive part of the disputed domain name.
Moreover, Complainant notices that not even its several authorized technical support companies are authorized to use the LG trademark as domain names. Thus, Respondent is taking a clear fraudulent advantage not only in relation to Complainant, but also to other technical support providers.
Considering this scenario, Complainant concludes that there is no indication that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, Complainant pleads that Respondent has no rights or legitimate interests in the disputed domain name <assistencialgcentralsp.com>, thus paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules would be also fulfilled.
Moreover, Complainant claims that Respondent was aware of Complainant’s well-known business when registering the disputed domain name and uses the trademark LG in order to promote its services, obtaining an unfair advantage over other companies that offer LG authorized technical support services.
ln conclusion, Complainant alleges that Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, creating a likelihood of confusion with Complainant and its trademark LG as to the source, sponsorship, affiliation or endorsement of Respondent’s website, fulfilling paragraph 4(a)(iii) and 4(b) of the Policy and paragraph 3(b)(ix)(3) of the Rules.
Respondent did not reply to Complainant’s contentions. After having being notified of its default, Respondent sent several messages in Portuguese to the Center, essentially stating that it no longer has any interest in keeping the disputed domain name.
6. Discussion and Findings
To succeed, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The burden of proving these elements is on Complainant.
Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if Respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint.
A. Identical or Confusingly Similar
Complainant has duly proven the first element under paragraph 4(a) of the Policy is met by showing evidence that its main stockholder is the owner of several trademark registrations for LG before INPI and that such trademark is contained in its entirety in the disputed domain name <assistencialgcentralsp.com>.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark, since the trademark is included in the disputed domain name in its entirety.
In addition, the three other words that compose the disputed domain name – “assistencia”, “central”, and “sp” – are descriptive and of common use in Portuguese and imply that the webpage offers LG technical assistance in the State of São Paulo (SP), Brazil. In fact, Respondent indeed uses the disputed domain name to offer such technical assistance services. The aforementioned affirms the confusing similarity and the fact that Respondent is seeking to target Complainant’s trademark through the disputed domain name.
Finally, the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
Therefore, the Panel considers the requirements of the first element of paragraph 4(a) of the Policy to be satisfied.
B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) as follows: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Noting the facts and arguments set out above, the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions, that burden of production has not been discharged, and the Panel has considered Complainant’s prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <assistencialgcentralsp.com>.
The Panel finds that Respondent’s use of the disputed domain name incorporating Complainant’s trademark with the addition of some dictionary words does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
In this case, it is important to note that, according to section 2.8 of the WIPO Overview 3.0, “[p]anels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name”.
To prove its legitimate interests, Respondent in these specific conditions must meet the following cumulative requirements:
“(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.”
The Panel finds that Respondent does not comply with requirements (ii) and (iii). This is because Respondent’s webpage offers not only repair services related to LG products, but also related to LG’s direct competitors’ products, such as Samsung. In addition, in relation to requirement (iii), Respondent’s webpage does not clarify that Complainant has never granted any authorization or license to Respondent, regarding the use of Complainant’s trademarks.
Accordingly, Complainant established a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Since Respondent has not replied to Complainant’s contentions and, thus, has not presented any evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name, the Panel has found no indication that any of the circumstances described in paragraph 4(c) of the Policy could apply to the present case.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Panel finds it highly unlikely that Respondent had no knowledge of Complainant’s rights to the trademark LG at the time of registration of the disputed domain name. This is even more clear when considered that Complainant’s trademark LG is protected in Brazil since 1995, while the disputed domain name <assistencialgcentralsp.com> was registered by Respondent on July 10, 2015.
The evidence also shows that Respondent was likely trying to target Complainant’s trademark and promote its services by creating an undue association with Complainant when using the trademark LG as part of its disputed domain name and prominently displaying it on its website. This way, Respondent ended up creating an unfair advantage over Complainant’s official dealers.
Thus, the Panel concludes that Respondent acts in bad faith since the disputed domain name reproduces Complainant’s LG trademark as an attempt to attract Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant and its famous trademark LG as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
Lastly, the Panel notes that, in conjunction with all of the abovementioned, the fact that Respondent did not present any formal response to the Complaint and stated that it no longer had any interest in keeping the disputed domain name, reinforces the conclusion that Respondent acted in bad faith.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
As such, the Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 <assistencialgcentralsp.com> be transferred to Complainant.
Gabriel F. Leonardos
Date: May 5, 2020