WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LG Corp. and LG Chem Ltd. v. E Group Inc Xu

Case No. D2020-2387

1. The Parties

The Complainants are LG Corp., Republic of Korea (the “First Complainant”), and LG Chem Ltd., Republic of Korea (the “Second Complainant”), represented by You Me Patent & Law Firm, Republic of Korea.

The Respondent is E Group Inc Xu, United States of America (“United States”), internally represented.

2. The Domain Name and Registrar

The disputed domain name <lg18650.com> is registered with Domain.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2020. On September 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 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 September 16, 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 September 18, 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 September 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2020. On October 12, 2020, the Center received an email communication from the Respondent requesting for extension of the due date for Response. On October 13, 2020, the Center granted an extension of time until October 25, 2020 in accordance with paragraph 5(e) of the Rules. The Center received the Response on October 26, 2020.

The Center appointed Assen Alexiev as the sole panelist in this matter on November 6, 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.

On November 17, 2020, the Complainant submitted a supplemental filing, and the Respondent submitted a counter supplemental filing. The Panel decided to accept these supplemental filings, as they dealt with issues that were first raised in the Response.

4. Factual Background

The First Complainant, LG Corp., is a world leader in electronics, chemicals, telecommunications, and vehicle components products. The First Complainant is the holding company of the LG Group, established in 1947, with subsidiaries active in over 80 countries. The LG Group includes 67 companies with combined revenues of approximately USD 150 billion, 142 global operations and 250,000 employees, and is ranked 207 in the Fortune magazine Global 500 list for 2020. The official website of the First Complainant is located at the domain name <lgcorp.com>, and the First Complainant also owns the domain names <lg.com> and <lg.co.kr>, among others.

The Second Complainant, LG Chem Ltd., is a subsidiary of the First Complainant. Its business portfolio includes petrochemicals, energy solutions, advanced materials, and life sciences. It was the 10th largest chemical company in the world by sales in 2017, and has recently been ranked No.1 in the global electric vehicle battery market. The Second Complainant has eight factories in the Republic of Korea and a network of 29 business locations in 15 countries, including a holding company in China, 14 overseas manufacturing subsidiaries, five marketing subsidiaries, seven representative offices, and two research and development (“R&D”) centers. The official website of the Second Complainant is located at the domain name <lgchem.com>.

The First Complainant is the proprietor of the brand LG which has been the leading part of its corporate name and identity since 1995. The brand LG was coined and adopted using the first letters of the names of the Complainants’ two corporate predecessors, “Lucky Ltd” and “Goldstar Co. Ltd”.

The First Complainant is the owner of the International trademark LG with registration No. 988754, registered on February 14, 2008 for goods in International Classes 7, 9 and 11 for numerous jurisdictions, including China, the European Union, Japan and the United States (the “LG trademark”).

The disputed domain name was registered on July 15, 2015. It resolves to a commercial website offering for sale 18650-type battery cells of the Second Complainant and other manufacturers.

5. Parties’ Contentions

A. Complainant

The Complainants submit that the First Complainant has licensed the LG trademark to the Second Complainant, and the LG trademark is used by the Complainants as part of their corporate name and on all goods manufactured and marketed by them. According to the Complainants, as a result of its extensive use and marketing since 1995, the LG trademark has acquired substantial goodwill and has become globally well known, and the use of “LG” on any goods or services would indicate that they either originate from the Complainants or are associated to them.

The Complainants maintain that the disputed domain name is confusingly similar to the LG trademark, as it incorporates it in combination with the five-digit number “18650”, commonly used to refer to a particular type of cylindrical lithium-ion rechargeable battery with diameter 18 mm and height 65 mm, which is among the battery products produced by the Second Complainant. Thus, the disputed domain name may mislead and confuse consumers to believe that the Second Complainant’s 18650-type cylindrical battery cells are intended to be sold and to be handled by end-consumers, which is not accurate and in contravention to the express prohibition against such use.

According to the Complainants, the Respondent has no rights or legitimate interests in respect of the disputed domain name, as there is no relationship between the Parties and the Complainants have not authorized the Respondent to use the LG trademark or to register a domain name incorporating it. The Complainants note that the Respondent is not an authorized distributor of their products and its activities are not bona fide, as it has registered and used the disputed domain name to confuse Internet users to believe that the associated website is related to the Complainants with the intention to free ride on the Complainants’ goodwill attached to the LG trademark, and the Respondent is selling not only LG-branded battery products on its website, but also battery products of the Complainants’ competitors.

The Complainants contend that the disputed domain name was registered and is being used in bad faith. They maintain that the Respondent registered the disputed domain name to suggest that the Respondent is affiliated with the Complainants and thus attract Internet users and switch them to third-party battery products for commercial gain.

The Complainants state that the Second Complainant sent a cease-and-desist letter to the Respondent on April 1, 2020, demanding to stop the unauthorized sales of the Second Complainant’s cylindrical lithium-ion battery cells and to stop using the disputed domain name. However, the Respondent failed to respond to this letter and continued with its sales of the Second Complainant’s cylindrical lithium-ion battery cells together with competitive battery products using the disputed domain name. The Complainants note that the Respondent’s website introduces itself as “LG 18650 battery - LG18650”, and does not disclose the registrant’s relationship with the trademark owner, but falsely suggests that the Respondent has connection with the Complainants, thus creating a likelihood of confusion with the LG trademark as to the endorsement by the Complainants of the Respondent’s website and of the products offered on it.

In their supplemental submission, the Complainants point out that the Respondent’s assertion that it has a business name “Ligo Industrial Limited” and a website at the domain name <ligo.com.cn> is irrelevant and lacking context, as the relationship between Ligo Industrial Limited and the Respondent is not revealed on the website at the disputed domain name, and the website of Ligo Industrial Limited does not indicate that they use the abbreviation “LG”, while “Ligo” is itself a four-letter coined word without much need for abbreviation. According to the Complainants, it is thus unlikely that the Respondent selected the disputed domain name for genuine reasons independently of the Complainants’ LG trademark. Further, the Complainants submit that the Respondent failed to comply with the due date for submission of its Response. Therefore, the Complainants request the Panel that the Respondent’s Response submitted after the due date for Response not be considered.

B. Respondent

The Respondent submits that the disputed domain name has no “LG Chem” or “LG Corp.” element. It states that it has a business name “Ligo Industrial Limited” and a website at the domain name <ligo.com.cn>, which contains the “Ligo” logo. According to the Respondent, when it started the new business of battery supply and distribution by focusing on cylindrical cells, it combined the abstract letters “l” and “g” of its company name “Ligo” with the popular battery model number “18650” to create the disputed domain name.

The Respondent further notes that its company name “E Group Inc.” is clearly indicated on the Respondent’s website, letterhead and email addresses, and it does not claim to be part of the Complainants’ LG Group. The Respondent states that it sells and distributes battery cells produced by LG Chem, Samsung, Panasonic, Sony and others only to battery pack manufacturers and assemblers from 2019, and not to end consumers, and that all battery cells sold by it are accompanied by battery warning and caution notifications. Before 2019, the Respondent notes, its sales to stores were less than 5% of all sales. The Respondent submits that it maintains insurance coverage for its general liability and for its product liability for battery cells and business operations.

The Respondent states that it has more than dozens of customers in North America, some of them being the key suppliers of battery packs to all kinds of industries. The Respondent asserts that it has not harmed the interests of the Second Complainant, but has helped the Second Complainant to achieve a larger market share, to increase sales, and to provide local technical and sales support to customers. According to the Respondent, if the Second Complainant does not allow it to supply LG battery cells to these customers, the Second Complainant will lose this market to competitors.

In its supplemental submission, the Respondent notes that the website of the company “Ligo Industrial Limited” has always indicated the name “Wade Xu” and its contact information. The Respondent maintains that it has not misled any visitors of the website at the disputed domain name, because it shows its company name “E Group Inc.” in bold at the top of the website and within the company profile section. The Respondent submits that the Response was filed at 9:12 p.m. on October 25, 2020 United States Eastern Standard Time. Therefore, the Response was submitted on time.

6. Discussion and Findings

6.1. Procedural issues

A. Consolidation of Complainants

The two Complainants have jointly filed the Complaint against the Respondent. They submit that the First Complainant is the owner of the LG trademark, while the Second Complainant is an affiliate and an authorized licensee of the same trademark. The Respondent has made no comments on this issue.

The Panel is satisfied that a consolidation of the two Complainants in a single proceeding against the Respondent in respect of the disputed domain name is justified and would be appropriate in the circumstances.

As summarized in section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in assessing whether a complaint filed by multiple complainants may be brought against a single respondent, UDRP panels look at whether the complainants have a specific common grievance against the respondent or the respondent has engaged in a common conduct that has affected the complainants in a similar fashion, and whether it would be equitable and procedurally efficient to permit the consolidation. Prior UDRP panels have held that a “specific common grievance” is shown where the complainants have a common legal interest in the trademark rights on which the complaint is based or have been the target of common conduct by the respondent, which has clearly affected their individual legal interests in a similar fashion.

The prerequisites for consolidation appear to be present in the case at hand. The Complainants have submitted evidence that the First Complainant holds registered trademark rights in the LG trademark, submit that they are affiliates and they both use the LG trademark for their businesses, and are represented by the same counsel in this proceeding. The conduct they allege that the Respondent has engaged into may affect, if present, the rights and legitimate interests of each of them. Neither of the Parties has made the Panel aware of any reason why a consolidation of the proceeding would not be equitable or procedurally inefficient.

In view of the above, the Panel decides to allow the consolidation of the two Complainants in a single proceeding against the Respondent in respect of the disputed domain name.

B. Filing of the Response

The Complainants request the Panel not to consider the Response because it was filed after the Response due date. The Panel notes that according to the information in the public WhoIs database, the Respondent is located in New Jersey, United States, and the Center received the Response at 2:12 a.m. on October 26, 2020. Therefore, it appears that the Respondent filed its Response on October 25, 2020 based on where it is located.

Even if the Response was filed on October 26, 2020, the Panel would deem appropriate to admit the Response in this case because: a) it would not cause any prejudice to the Complainants; and b) the Complainants already filed a supplemental filing replying to the Response, and the Panel has decided to accept such supplemental filing; and c) paragraph 10(b) of the Rules provides that in all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.

In view of the above, the Panel will thus consider the Response in rendering the Decision.

6.2. Substantive issues

Pursuant to the Policy, paragraph 4(a), the Complainants must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”.

A. Identical or Confusingly Similar

The Complainants have jointly filed the Complaint and provide evidence that the First Complainant is the owner of the LG trademark. They submit that the Second Complainant is an affiliate of the First Complainant and a licensee of the LG trademark. As discussed in section 1.4.1 of the WIPO Overview 3.0, a trademark owner’s affiliate is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint. In view of this, the Panel accepts that the Complainants have rights in the LG trademark for the purposes of the Policy and have standing to jointly file the Complaint.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The relevant part of the disputed domain name for purposes of the first element analysis is therefore the sequence “lg18650”, which is a combination of “lg” and “18650”. As discussed in section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of descriptive or meaningless terms would not prevent a finding of confusing similarity under the first element. In the present case, the “lg” element of the disputed domain name is identical to the word element of the LG trademark, which is easily recognizable in the disputed domain name, and the addition of “18650” does not prevent a finding of confusing similarity. The Panel further notes that while “18650” would appear as a non-distinctive number to the general public, but being an indication of a specific type of battery cell, produced by the Second Complainant and its competitors (an issue on which the Parties are in agreement), it may be regarded as such by professionals and users of such products, and they may expect the disputed domain name to be an online location authorized by the Second Complainant, offering its 18650-type battery cells.

In view of the above, the Panel finds that the disputed domain name is confusing similar to the LG trademark in which the Complainants have rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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. See section 2.1 of the WIPO Overview 3.0.

The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name, stating that there is no relationship between the Parties, and the Complainants have not authorized the Respondent to use the LG trademark or to register a domain name incorporating it. The Complainants maintain that the Respondent is not an authorized distributor of their products and its activities are not bona fide, since it is selling not only LG-branded battery products on its website, but also those of the Complainants’ competitors. The Complainants have thus established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent does not dispute that it is not an authorized distributor of the Complainants and that it has not been licensed by them to use the LG trademark. It submits that it created the disputed domain name for its cylindrical cell battery distribution business by combining the abstract letters “l” and “g” of the name of its other company “Ligo Industrial Limited” with the popular battery model number “18650”. The Respondent notes that its company name “E Group Inc.” is indicated on the website at the disputed domain name.

As discussed in section 6.2.A above, the disputed domain name incorporates the LG trademark in combination with the number “18650”, which both Parties agree is a commonly used indication of a specific type of battery produced by the Second Complainant and its competitors. The Respondent admits that this was the reason why it included this number in the disputed domain name, and that it sells 18650-type battery cells produced by the Second Complainant and other manufacturers on the associated website. The name of the person representing the Respondent in this proceeding is indeed specified in the contact details of Ligo Industrial Limited on its website, but there is no notice on the same website or on the Respondent’s website that there is a connection between the Respondent and Ligo Industrial Limited, and, as noted by the Complainant, the website of Ligo Industrial Limited does not feature the abbreviation “LG”. In addition, the evidence submitted by the Complainant shows that the Respondent’s website features the heading “LG Chem has three series of cylindrical 18650 batteries: High Power cells, Middle Power cells and Energy cells. - LG18650”, in which “LG18650” is used to specifically refer to the Second Complainant’s 18650-type battery cells. All this makes the Respondent’s explanation why it chose the disputed domain name for its battery distribution business unconvincing.

Taking the above into account, the Panel is satisfied that the Respondent was well aware of the goodwill of the Complainants’ LG trademark when it registered the disputed domain name, and that this registration was more likely than not that made targeting this trademark. There are instances were the registration and use of a domain name comprising a trademark plus a descriptive term may be legitimate. Panels acting under the Policy have recognized that distributors using a domain name containing the complainant’s trademark to sell of the complainant’s goods may be making a bona fide offering of goods or services and thus have a right or legitimate interest in such domain name, if they comply with a number of cumulative requirements applied in the specific conditions of each case. These include, inter alia, the requirements that the website at the respective domain name must accurately and prominently disclose the registrant’s relationship with the trademark holder, and that the respondent must use its website to sell only the trademarked goods or services. See section 2.8.1 of the WIPO Overview 3.0.

These two requirements have however not been complied with in the present case. The website at the disputed domain name does not accurately and prominently include a disclaimer that the Respondent is not affiliated to the Complainants and has not been authorized by them to distribute their products. The Respondent confirms that it also sells products of other manufacturers on the website at the disputed domain name. In view of this, the Panel finds that the Respondent’s conduct is not legitimate and does not give rise to rights or legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(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 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.”

In the present case, the disputed domain name is confusingly similar to the Complainants’ LG trademark, and is being used for a website offering the Second Complainant’s 18650-type battery cells alongside similar products of the Complainants’ competitors, and which contains no disclaimer of the lack of relationship between the Parties and of the lack of endorsement of the website by the Complainants. As discussed in section 6.2.B above, the Respondent’s explanation why it chose and registered the disputed domain name is unconvincing.

In view of the above, the Panel accepts as more likely than not that the Respondent has registered the disputed domain name targeting the LG trademark, and by using it, it has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ LG trademark as to the affiliation or endorsement of the Respondent’s website or of the products offered on it. Therefore, the Panel finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

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 <lg18650.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: November 25, 2020