WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wimo Labs, LLC v. Domains By Proxy, LLC/ LightFury Innovations Pvt Ltd
Case No. D2020-1962
1. The Parties
The Complainant is Wimo Labs, LLC, United States of America (“USA”), represented by Neal, Gerber & Eisenberg, USA.
The Respondent is Domains By Proxy, LLC, USA / LightFury Innovations Pvt Ltd, India.
2. The Domain Name and Registrar
The disputed domain name <lunatikcase.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2020. On July 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 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 the Complainant on August 5, 2020, 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 August 10, 2020.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2020. The Respondent submitted the Response on September 1, 2020. On September 4, 2020, the Complainant submitted a supplemental filing. On September 18, 2020, the Respondent issued an email to the Center requesting that the Complainant’s supplemental filing be disregarded or that it be provided with an opportunity to answer the same. On September 19, 2020, the Respondent filed a supplemental filing and the Complainant filed a further supplemental filing. On September 22, 2020, the Center informed the Parties that the decision due date was extended to October 10, 2020.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on September 11, 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
The Complainant is a limited liability company organized under the laws of the state of Delaware, USA. The Complainant has developed, manufactured, and sold, including through its licensees, an innovative line of phone cases and watch bands for smart watches under the LUNATIK mark. Although at one time it sold LUNATIK branded products direct via a website at “www.lunatik.com”, the Complainant now only sells these via licensees and through the website of a design firm which it co-owns. An archived entry from “www.lunatik.com” in 2014 and 2015 shows the Complainant’s LUNATIK brand in use as follows:
The Complainant is the owner of a variety of registered trademarks for the word mark LUNATIK including, for example, USA registered trademark No. 4296576 registered on February 26, 2013 in international class 9 (broadly speaking, cases for handheld electronic devices) and USA registered trademark No. 4075222 registered on December 20, 2011 in international classes 9 and 14 (wristbands and watch bands designed to hold various electronic devices). The Complainant has filed Declarations of Use with the relevant national trademark office showing its actual use of various of its LUNATIK marks in March 2017, May 2018 and January 2019. The Complainant owns similar marks in other jurisdictions including Mexico, the European Union, Republic of Korea and China.
The Complainant also owns a device mark featuring interlocking polygons under USA registered trademark No. 4542506 registered on June 3, 2014 in international class 9 (various electronic devices and cases for handheld electronic devices). Although color is not claimed as a feature of the mark, the Complainant has used this device on its products in a matching yellow on black design.
The Complainant’s agency received an email dated June 9, 2020 from an individual who stated that he wished to alert the Complainant to the Respondent’s website. Said correspondent stated that the Respondent was using branding which was “admittedly similar to what was used for the original Lunatik products from your design suite”.
The disputed domain name was registered on December 27, 2017. The Respondent appears to be an Indian registered company. According to screenshots provided by the Complainant, the disputed domain name is used for a website which offers phone cases and watch bands for sale under a logo/brand which is markedly similar to that of the Complainant’s as follows:
The Complainant produces a screenshot from the website associated with the disputed domain name indicating that one of the Respondent’s products features an interlocking polygon device identical to the Complainant’s USA registered trademark No. 4542506. Evidence is also provided that said device has appeared in an image on the Respondent’s “Facebook” page, which uses the handle “LunatikCase”. Both the Complainant’s and Respondent’s screenshots of such “Facebook” page show that the Complainant’s TAKTIK word mark, registered under USA registered trademark No. 4262488 on December 18, 2012 under international class 9 (mobile phone cases), likewise features. The Complainant’s screenshots of the Respondent’s “Facebook” page further show that this page has been used in connection with specific promotions directed to the website at the disputed domain name and targeted to a USA audience on prominent USA holidays. The Complainant’s various screenshots are time, title and URL-stamped.
The Respondent is the owner of Indian registered trademark No. 3776764 for a device mark matching both the Respondent and the Complainant’s depictions of the word LUNATIK as shown above but in monochrome and without any background color, registered on March 13, 2018.
5. Parties’ Contentions
The Parties contend as follows in their various submissions:
The Complainant maintains numerous registrations for LUNATIK globally and for many years sold its products through the website at “www.lunatik.com” and via other online retailers and bricks and mortar stores. The Complainant was informed of the Respondent’s website via its former client’s email. The disputed domain name is used for a website which is a copycat of the Complainant’s former website with similar colors, logo and product offering, which uses the Complainant’s polygon mark, and other of its registered marks including TAKTIK (exemplary images provided). The Respondent’s phone cases and watch bands are believed to be imitations and counterfeit replicas of those of the Complainant and some of their features are patent-protected by way of the Complainant’s USA patents (examples provided). The Respondent’s Indian trademark is an exact copy of the Complainant’s LUNATIK mark, and relative stylization, and is an attempt to create legitimacy in the disputed domain name where none exists.
Identical or Confusingly Similar
The disputed domain name is identical to the Complainant’s mark which is contained in its entirety along with the highly descriptive dictionary word “case”. This cannot avoid the likelihood of confusion and may increase it. Internet users would be confused as to affiliation between the Parties where none exists.
Rights or Legitimate Interests
The Respondent cannot satisfy any of the factors in paragraph 4(c) of the Policy. The Respondent’s business is not making a bona fide offering of goods or services but is using the Complainant’s mark to offer inferior/counterfeit product. The Respondent has never been commonly known by the disputed domain name and, if they hold themselves out as such, this is a manifestation of intent to borrow from the notoriety of the Complainant’s mark. The Respondent’s Indian trademark was filed in bad faith and in the knowledge of the Complainant’s identical mark. The Complainant has not licensed the Respondent to use such mark. The Respondent is not making noncommercial or fair use of the disputed domain name but is baiting customers into thinking that they are visiting a website offering the Complainant’s LUNATIK branded products.
Registered and Used in Bad Faith
The only reasonable conclusion is that the Respondent has registered and used the disputed domain name in bad faith and in full knowledge of the Complainant’s superior rights in the LUNATIK mark. Given the latter’s renown and the Respondent’s copying of the Complainant’s mark and look and feel, it could not be plausible that the disputed domain name was innocently registered. The Respondent would also have had constructive knowledge of the Complainant’s trademarks. The use of the disputed domain name in connection with a website mimicking the Complainant’s prior use and offering competing products constitutes bad faith.
Identical or Confusingly Similar
The Respondent is based far away from the Complainant and has a registered trademark for the mark LUNATIK. Such mark is a stylized word/device mark with a different design and was registered at a different time from that of the Complainant. Trademarks are territorial and the Complainant has no protection in India via its USA registered marks. The Complainant’s mark is a simple word mark without design specifications. The Complainant has used a very different mark on its products (evidence provided consisting of a representation of the Complainant’s mark as “LunaTik”). There is no confusing similarity between representations of the Parties’ marks. The Complainant had no registered mark in India when the Respondent registered its mark and no presence in 2018 anywhere in the world. The Complainant does not sell through licensees and has produced, designed or manufactured no products since 2014. There is no evidence that the Complainant has an operational business and it went out of business in 2014, shutting all operations and its website in December 2016, since when it has had no active business, as confirmed by the USA’s Better Business Bureau.
Rights or Legitimate Interests
The email from the Complainant’s correspondent has been forged or has been carefully drafted by someone not at arm’s length. The correspondent last purchased a product for a 2012 phone and confirms that the Complainant has released no designs for over 6 years. The correspondent is not a customer of the Respondent and has no way of evaluating its products.
The Complainant does not own the domain name <lunatik.com>, has no relationship to its owner, and is not an operational business. Said domain name is owned by an entity with no apparent relationship to the Complainant named Lunatik Labs LLC. The Complainant began a crowdfunding campaign in 2014, which was mismanaged. In a 2016 update to said campaign, the Complainant stated that it was handing control to a new strategic partner and was revitalizing the “Lunatik” brand through a new company. It later renamed said campaign’s handle to “Lunatik Labs LLC”. The latter also went out of business in 2016. Had the Respondent known of this, it would have chosen a different brand but in any event, the Parties’ brands existed at different times.
The Respondent was unaware of the Complainant’s mark before notice of this dispute. The Respondent’s name and mark originates from a Marvel Comics’ fictional character named “Lunatik” of which the Respondent’s founder is a fan. The Respondent’s color scheme derives from such character. The Complainant has no monopoly on this term, which is widely used by third parties. The Respondent does not claim any affiliation or relationship with the Complainant or any foreign company. The Respondent’s products are completely different from the Complainant’s original products sold some time ago. All phone cases bear similarities as the scope of design is limited. The Respondent has never released products for older phones and it is illogical to compare the Complainant’s patents with phone cases made today.
The Respondent registered the disputed domain name in December 2017, then filed its trademark in March 2018. Website development began in November 2018 (invoice evidence provided). The Respondent’s brand has been carefully built over 2 years, it is a top search for the keyword “lunatik" and is recognized by Amazon India (granting exclusivity on the Amazon platform for suitably branded products).
Registered and Used in Bad Faith
The disputed domain name was registered in good faith and without knowledge of the Complainant or its mark’s existence. The Complainant’s mark is not renowned, as demonstrated by a Google search, and the Complainant’s business was dead by the end of 2016. The Complainant’s website was unavailable to copy by the time when the Respondent’s website was created in 2018. The Complainant’s website was inactive in 2016 and 2017 (evidence provided) and remains so in 2020. The Respondent has never come across the Complainant in the two years of its existence. The Complainant has no registered trademarks in India, nor any legitimate rights there. The Respondent’s brand is the most popular “Lunatik” brand and is at the top of Google search results. The Respondent’s business owns a corresponding registered trademark and pays its taxes. Its website is different from that of the Complainant. The Respondent’s products cannot compete with those of the Complainant as the latter has released none since 2014. The Respondent has a legitimate website selling bona fide products which it designs and manufactures. The Respondent has heavily invested in background support such as website design and search engine optimization.
Reverse Domain Name Hijacking
The Respondent requests a finding of reverse domain name hijacking because the Complainant claims to be an operational business despite going out of business in 2016. The Complainant was well aware of the Respondent’s legitimate rights including its registered trademark, yet continued to proceed with the Complaint in bad faith. The Complainant could not have been unaware of the Respondent’s business over the last two years due to the size of its online presence (over 15,000 followers on social media). This is a “Plan B” case, calculated to steal a valuable domain name legitimately held outside the Complainant’s jurisdiction.
C. Complainant’s Supplemental Filing
A supplemental filing is necessary because it addresses points unknown to the Complainant when the proceeding commenced and are relevant to the Respondent’s claim for Reverse Domain Name Hijacking.
The Complainant is and has been operational since 2008, originally formed as an Illinois limited liability company and merged into a Delaware LLC in 2015. It is active and in good standing (evidence provided). It has not abandoned its LUNATIK mark. It continues to receive revenues from licensees including from Lunatik Labs, LLC (license entered into in 2016 – evidence provided) with which it thus had a business relationship, contrary to the Respondent’s claims, when the disputed domain name was registered. Pursuant to such license agreement, Lunatik Labs, LLC was the registrant of <lunatik.com> in 2017. The LUNATIK mark is also promoted on the website associated with <mnml.com> and this was the case when the disputed domain name was registered (archived screenshot evidence provided). Any broken links on archived pages are not evidence that such pages did not exist. The Respondent admits that the Complainant and its licensees use the disputed domain name with phone cases, watch bands and related accessories. The argument that the Complainant had gone out of business underscores the Respondent’s bad faith.
The Policy does not require the Complainant to establish trademark infringement, nor a likelihood of marketplace confusion, nor that the Parties be competitors. The Respondent has been unable to refute the Complainant’s establishment of the requisite elements under the Policy. The Respondent applies an incorrect standard in analyzing confusing similarity which calls for a straight visual comparison between mark and domain name, with no consideration of marketplace confusion factors. The Complainant has established rights in its trademarks and has filed Declarations of Use with the competent authority in 2017, 2018 and 2019.
The Respondent’s after the fact registered trademark only underscores its lack of legitimate rights and bad faith conduct. There is nothing on the record which suggests that the Respondent ever conducted a trademark search or what was revealed thereby. A simple keyword search would have revealed the Complainant’s mark in use on the website associated with <mnml.com> or would have led to the website associated with <lunatik.com>, representative examples of which have been provided. It is impossible that the Respondent came up with the same mark, same stylization, same logo, same color scheme and same exact product line covered by the same trade dress and multiple valid patents without being aware of the Complainant’s prior use. The record itself demonstrates the Respondent’s constructive or actual knowledge of such.
The Respondent does not only conduct business in India but sells its goods in the USA, targeting the relevant customers. Its shipping policy states that it ships to almost every country, its website is entirely in English, and it promotes sales centered around USA holidays such as Independence Day and Memorial Day. Accepting the Respondent’s suggestion that a registrant can find a country to register a well-known mark and thereby generate rights to copy a website on to a common URL would completely undermine the Policy. The Policy is not territorial or geographically limited.
The Respondent has taken over one of the Complainant’s social media accounts without authorization, further evidencing its bad faith. A web page on “Vimeo” promoting the Complainant’s LUNATIK brand contains a link to an account named “LunaTikLife” on “Twitter” created by the Complainant as well as an account named “LunaTikLife” on “Facebook” operated by the Respondent.
The Respondent has no basis to challenge the authenticity of the correspondence received by the Complainant evidencing an instance of actual confusion. The Respondent’s conduct is deceitful and can only be described as bad faith and lacking an ability to support a claim to rights and legitimate interests.
D. Respondent Supplemental Filing
A supplemental filing is necessary because a fair opportunity should be provided to each of the Parties to state their case. If the Complainant’s supplemental filing is to be considered, the Respondent’s supplemental filing should likewise be considered.
The Complainant is a “registered entity” while the LUNATIK brand was a business which has ceased to exist. The Better Business Bureau confirms that the Complainant went out of business in 2016. The Complainant’s merger with another company proves nothing about its activities. The Complainant has provided no evidence of its current products, its business website, or the ongoing sale of products by its licensees. The Complainant’s evidence all pre-dates 2016. The Complainant’s only business model is to sue other USA marketplaces and websites.
The Complainant may claim common law rights but each country has their own territorial approach to such rights. The Complainant cannot show an Indian trademark or that it ever conducted business in India. The Complainant’s and the Respondent’s marks can only be confused if they exist in the same geographical location.
All of the Respondent’s social media handles are based on the term “LunatikCase” (links provided). The “LunaTikLife” “Facebook” handle which the Complainant claims is the Respondent’s page is a dead page not controlled by the Respondent. The Complainant has presented false evidence to the Panel on the basis of the “Vimeo” page and the “Facebook” entries relative to holiday promotions in the USA. The Respondent does not operate outside India in any respect but does accept international payments and engage in international shipping. The Complainant never had any presence on the largest social media platforms while the Respondent has 16,000 followers and its entries are clear that it is based in India. The Respondent’s Google search dominance is growing.
The Complainant has successfully chosen a time when smaller entities such as the Respondent are disadvantaged due to COVID-19. The Complainant is wrongfully attempting to gain control of the Respondent’s valuable two-year-old business.
E. Complainant’s reply to Respondent’s Supplemental Filing
The Complainant cannot stand silent when it is accused of falsification of evidence, which is absurd. The Respondent’s “Facebook” handle exhibit truncates at page 1 which should be compared to the Complainant’s exhibit of the same “Facebook” handle” to see the entire page, which shows USA holiday promotions, such postings having been since deleted by the Respondent. Said screenshots were taken using a professional screen capture service which cannot be faked. The Respondent sells in the USA and targets the marketplace in that country. The Respondent felt comfortable usurping the Complainant’s intellectual property such that its claims do not have credibility.
The assertion that the Complainant is out of business is irrelevant as there is no requirement that the Complainant occupy any particular website. The burden to show abandonment is high and easily overcome. The Complainant has no interest in the Respondent’s business and is merely seeking to prevent confusion.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the 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.
A. Preliminary Issues – Parties’ Supplemental Filings
Paragraph 12 of the Rules provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case. Unsolicited supplemental filings are generally discouraged unless specifically requested by the panel. Panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response.
In the present case, the Panel is satisfied that each of the Parties’ supplemental filings seeks to respond to new matters and evidence raised by the other. For the most part, both Parties confine their supplemental filings to such new matters although there is a limited degree of repetition of previous submissions which the Panel will disregard. In all of these circumstances, the Panel considers that it is reasonable for the Parties’ supplemental filings to be admitted and considered along with the Complaint and Response. The Panel is of the opinion that this approach is consistent with the general principles set out in paragraph 10 of the Rules, namely, that the Parties have been treated with equality and that each has been provided with a fair opportunity to present its case.
B. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in its LUNATIK registered trademark as described in the factual background section above. The appropriate test under the Policy is that described by the Complainant in its submissions, namely, to compare such mark on a straightforward side-by-side comparison with the disputed domain name in order to determine whether or not the mark is recognizable therein. Questions of the territorial effect of the trademark concerned or the different marketplaces which the Parties might be addressing, as raised by the Respondent, are not relevant to this issue.
It may be seen that the Complainant’s mark is identical to the first element of the Second-Level of the disputed domain name, the second element thereof being the word “case”. The latter word is descriptive, and its inclusion does not prevent the Complainant’s mark from being recognizable in the disputed domain name. The generic Top-Level Domain, in this case “.com”, is typically disregarded for the purposes of comparison with the relied-upon mark.
In these circumstances, the Panel finds that the Complainant has rights in a mark and that the disputed domain name is confusingly similar to such mark. The Complainant has therefore established the first element test.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has established the requisite prima facie case based on its submissions that the Respondent cannot satisfy any of the factors in paragraph 4(c) of the Policy, that the Respondent is not making a bona fide offering of goods or services, that the Respondent is using the Complainant’s mark to offer inferior/counterfeit product, that the Respondent has never been commonly known by the disputed domain name and merely borrows from the notoriety of the Complainant’s mark, that the Respondent’s Indian trademark was filed in bad faith and with knowledge of the Complainant’s identical mark, and that the Complainant has not licensed the Respondent to use the Complainant’s mark. The burden of production therefore shifts to the Respondent to bring forward evidence of its rights and legitimate interests in the disputed domain name.
The essence of the Respondent’s case is that it is a legitimate business making a bona fide offering of goods and services entirely unrelated to, and with no prior knowledge of, the Complainant’s rights. The Respondent says that it could not have known of the Complainant’s rights due to the fact that the Complainant had ceased business at the time that the Respondent commenced trading and that there was nothing online which it could have copied. The Panel accepts the Complainant’s reply that even if it had ceased manufacturing and direct sales, this would not justify an entity such as the Respondent attempting to reproduce the Complainant’s intellectual property rights and to pass these off as their own via the disputed domain name. In any event, the Complainant has supplied sufficient evidence and explanations satisfying the Panel that it has not gone out of business, that its business is in good standing and continues to operate via licensees, and notably, that it has made declarations of use of its various trademarks to the competent authority throughout the relevant period.
It is instructive before going any further into the Respondent’s case to compare the Respondent’s logo with that of the Complainant, bearing in mind the extent of the Complainant’s prior use, which the Panel finds to be established on the evidence before it. As will be noted from the factual background section above, these logos are to all intents and purposes identical. The Respondent appears to have come up with an identical stylized representation of an identical word, in an identical typeface, with an identical distinctive missing crossbar on the capital “A”, in an identical color and with an identical background color, all for application to identical product types. These similarities lead the Panel to make the reasonable inference that the Respondent could not have come up with its brand name and logo, and thus the disputed domain name, independently of the Complainant and its rights. The coincidences would simply be too great and this alone renders the Respondent’s contentions incredible.
To cite two other notable examples of an obvious link between the Complainant’s prior rights and the Respondent’s present activity, which go beyond coincidence: First, the Respondent has used an identical polygon device to that covered by the Complainant’s USA registered trademark No. 4542506 on a product image, as shown on the Complainant’s screenshot of the website associated with the disputed domain name. Secondly, the Respondent has used the Complainant’s TAKTIK mark online, and this is evident even from the Respondent’s own screenshot of its “Facebook” page, operating under the “LunatikCase” handle. The Respondent likewise uses the Complainant’s polygonal design on images of products on its said “Facebook” page. It is simply not tenable for the Respondent to suggest that it was unaware of the Complainant or its rights when it registered the disputed domain name, that it is commonly known by the disputed domain name or that it is using it in connection with a bona fide offering of goods or services. The Respondent’s use of the disputed domain name appears to the Panel to be entirely based upon the Complainant’s prior mark and the various prior online representations of it.
The Respondent asserts that it selected its name and logo from the name of a particular comic character. The representation provided does not bear out the Respondent’s contention that this was its genuine inspiration. There is identity between the respective stylized representations used by the Parties and yet there does not appear to be any similarity whatsoever between the Respondent’s representation and that of the comic character (leaving aside the fact that if there was, this might potentially infringe third party intellectual property rights). Although the Respondent goes on to provide examples of the use of the “Lunatik” brand by various third parties, in order to show that others have come up with this name independently of the Complainant’s rights, none of these uses relate to the line of business shared by the Parties in this case, nor do they show any similarity to the Complainant’s distinctive logo.
The Respondent suggests that the Complainant has at times used different branding in connection with its trademark, along the lines of “LunaTik”. Supporting evidence is available. This does not alter the fact that the Complainant first used the representation set out in the factual background section above, both on its website and directly on its line of products, and that the Respondent appears to have copied this. Such representation is covered by the Complainant’s various LUNATIK registered trademarks. The Respondent’s representation of its own brand, created after the fact, matches the Complainant’s former website and product logo. The Respondent has likewise used the Complainant’s polygonal design mark and the Complainant’s TAKTIK mark. The disputed domain name thus seems part of a wider plan on the Respondent’s part to clone the Complainant’s brand online.
If the Panel understands the Response correctly, the Respondent appears to be suggesting that because the Complainant’s principal mark is a word mark, protecting the word LUNATIK, this in some way means that graphical representations are not protected or that the Parties’ graphical uses are irrelevant to the issues before the Panel. If so, this misunderstands the position. The Complainant’s word mark is in fact of broad scope. It may be deployed in, and protects, whatever graphical representation the Complainant might choose. At some point, the Complainant chose to deploy the mark in a graphical form which appears to have been adopted by the Respondent at a later date in a manner which goes beyond coincidence. As far as the Panel is concerned, the mark LUNATIK is itself highly distinctive when applied to the goods and services in respect of which the Complainant has registered it. There is no suggestion that the term has any descriptive quality which might conceivably have led to its independent selection on the Respondent’s part.
The Respondent places much emphasis on the fact that it is in a different jurisdiction to the Complainant. This might have had some relevance if it supported the Respondent’s general assertion that it had no prior knowledge of the Complainant and no intent to target its rights. However, such knowledge may be inferred reasonably on the present record from the identity between the Parties’ logos coupled with the identity of their lines of business and also the fact that the Respondent’s “Facebook” page features the Complainant’s LUNATIK and TAKTIK marks and has been targeting the USA with special promotions related to the website at the disputed domain name. On that matter, the Respondent’s submission that it does not operate outside India is somewhat disingenuous. It accepts international payments and ships its products to customers worldwide. The “Facebook” posts promoting the website at the disputed domain name show that two “sales” have been advertised focused on major holidays in the USA, one of which even deploys an emoticon of the flag of the USA and proposes a discount code “4THJULY”.
The principal comment offered by the Respondent regarding this alleged promotional activity is the very serious allegation that the Complainant’s screenshots from “Facebook” have been falsified. Where such an allegation is made, this needs to be backed up with solid evidence and not merely be put forward as an unsupported accusation. No such evidence is forthcoming. The accusation is made despite the fact that the Complainant says it has used professional image capture software. Indeed, each screenshot displays a title, time and URL-stamp. If the Respondent’s allegations were well-founded, it should have been able to produce evidential support by way of independent confirmation of the history of its “Facebook” account. This is presumably available from the social media platform on request. There is no suggestion that the Respondent has even attempted to obtain any such evidence. In these circumstances, the Panel is satisfied on the balance of probabilities that the Respondent’s handle on the “Facebook” social media platform has been used to promote the Respondent’s goods under the LUNATIK mark to an audience in the USA and that such promotions, in turn, directed interested parties to the disputed domain name. The fact that the Parties remain at odds regarding whether the Respondent also controls the “LunatikLife” “Facebook” handle is of no particular significance.
Turning to the fact that the Respondent has its own registered trademark, it is well-recognized in cases under the Policy that where a respondent owns a registered mark corresponding to a domain name this does not automatically confer rights or legitimate interests upon it. Panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP or otherwise prevent the complainant’s exercise of its rights, even if only in a particular jurisdiction (see section 2.12.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). This is the Panel’s conclusion in the present case for the reasons outlined above.
In all of these circumstances, the Panel considers that the Respondent has failed to rebut the Complainant’s prima facie case and accordingly finds that the Respondent has no rights or legitimate interests in the disputed domain name. The second element under the Policy has been established.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location”.
In the present matter, for the reasons outlined in the preceding section, the Panel finds that it is more probable than not that the disputed domain name was registered and has been used in order to usurp the goodwill which the Complainant has established in its LUNATIK mark by way of the Complainant’s original direct sales channel and/or via its licensees’ activities. The similarities between representations of the Parties’ marks are too great for there to be any credibility in the Respondent’s suggestion that it might have been unaware of the Complainant or its rights, or indeed that it was not intent on benefiting from confusion between these. This conclusion is fortified by the evidence of the Respondent’s activities on social media.
The Respondent has used the disputed domain name in connection with a logo matching the Complainant’s representation of its LUNATIK mark to promote sales of the same types of product in respect of which the Complainant’s said mark is registered. The Respondent has created a social media presence under a handle matching the Second-Level of the disputed domain name to promote products substantially similar to those in respect of which the Complainant’s mark is registered in the Complainant’s principal jurisdiction. The products sold by the Respondent bear said representation of the Complainant’s LUNATIK mark. Some products also bear the Complainant’s polygonal design mark. Some bear the Complainant’s TAKTIK mark. The inescapable conclusion in these circumstances is that registration and use of the disputed domain name is paradigmatic cybersquatting and constitutes registration and use of the disputed domain name in bad faith in terms of paragraph 4(b)(iv) of the Policy. The third element under the Policy has been established.
E. Reverse Domain Name Hijacking
The Respondent requested a finding of Reverse Domain Name Hijacking. The Complainant has been successful in this proceeding. The Panel finds there to be no indication of any bad faith on the Complainant’s part in connection with the bringing of the Complaint. Furthermore, the Respondent’s submission that this is a “Plan B” case is entirely misplaced. There is no evidence that the Complainant has used the Policy to increase leverage in negotiations to purchase the disputed domain name (compare the circumstances of this case with, for example, the circumstances described in Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653). The Respondent’s request that the Panel make a finding of Reverse Domain Name Hijacking is denied.
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 <lunatikcase.com> be transferred to the Complainant.
Andrew D. S. Lothian
Date: October 9, 2020