WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Levio Consulting Inc. v. Super Privacy Service LTD c/o Dynadot / Company Director, Glocal Commerce Limited
Case No. D2021-0528
1. The Parties
The Complainant is Levio Consulting Inc., United States of America (“United States” or “US”), represented by Reinhart Boerner Van Deuren s.c., United States.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States, / Company Director, Glocal Commerce Limited, Hong Kong, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <levio.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2021. On February 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 2021, 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 February 23, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant did not file an amendment to the Complaint.
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 March 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2021. The Center received an email communication from the Respondent on March 3, 2021, and on March 23, 2021, the Respondent requested the four-calendar day extension of the due date for Response under paragraph 5(b) of the Rules. Accordingly, the Center granted the Respondent the requested extension, and due date for Response was fixed at March 28, 2021. The Response was filed with the Center on March 28, 2021.
The Center appointed Assen Alexiev as the sole panelist in this matter on April 9, 2021. 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 an information technology services company.
The Complainant is the owner of the United States trademark LEVIO with registration No. 6037665, registered on April 21, 2020, for services in International Classes 35 and 42 and claiming first use in commerce on April 1, 2019 (the “LEVIO trademark”).
The disputed domain name was registered on September 28, 2013. It resolves to a webpage containing commercial links to third party websites.
5. Parties’ Contentions
According to the Complainant, the LEVIO trademark is arbitrary and inherently distinctive and has no known meaning in English other than as a fanciful trademark indicating the Complainant as the source of LEVIO goods and services. The Complainant submits that it has continuously used the sign LEVIO as a trademark and trade name since December 24, 2015, including on its websites at the domain names <levio.ca> and <levioconsulting.com>, as a result of which it has obtained unregistered trademark rights in the LEVIO trademark that date back to 2015.
The Complainant states that the disputed domain name is confusingly similar to the LEVIO trademark, because it incorporates the trademark in its entirety and confuses consumers looking for the Complainant’s websites at <levioconsulting.com> and <levio.ca>.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because the Complainant has not authorized the Respondent to use the LEVIO trademark, and the Respondent is not known by the name LEVIO. The Complainant further alleges that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, because the disputed domain name resolves to a webpage with sponsored links served by a third party. The Complainant notes that the Respondent uses the disputed domain name in an attempt to pass itself off as the Complainant, or suggest affiliation with or sponsorship by the Complainant, by incorporating the LEVIO trademark in the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith to create a likelihood of confusion with the LEVIO trademark and to attract Internet users to the disputed domain name for commercial gain. The Respondent has made no use of the associated website, other than a parking page with sponsored links that presumably provide financial benefit to the Respondent.
The Complainant points out that the transfer of a domain name registration from a third party to the Respondent is not a renewal and the date on which the current registrant acquired the disputed domain name is the date that should be taken into account in assessing bad faith. In this regard, the Complainant submits that the WhoIs records for the disputed domain name show that the Respondent acquired it after the Complainant established trademark rights in the LEVIO trademark as of February 26, 2018, so the Respondent knew or should have known of the Complainant’s trademark rights in the LEVIO trademark when it acquired the disputed domain name.
The Complainant submits that it has reached out to the Respondent on numerous occasions to attempt to acquire the disputed domain name in exchange for a price that would compensate the Respondent for its out-of-pocket costs. The Complainant offered USD 2,500 for the disputed domain name, and then increased its offer to USD 10,000. The Respondent however refused to indicate an amount or range that would satisfy it or compensate its out-of-pocket costs.
The Respondent points out that the Complainant has its formation date in 2020, and that the Complainant has omitted to mention this in the Complaint. The address of the Complainant in Canada, specified in the Complaint, belongs to a Mr. Maxime Plante, and the Complaint contains numerous references to the Canadian company Levio Conseils Inc. According to the Respondent, the Complainant attempts to pass itself as Levio Conseils Inc. when in fact these are two separate entities. The Respondent disputes the Complainant’s statement that it has prominently used the LEVIO trademark on its websites at the domain names <levio.ca> and <levioconsulting.com> since 2015 with the argument that the Complainant did not exist until 2020, and attempts to make a confusion between Levio Conseils Inc. and Levio Consulting Inc. The Respondent adds that the websites at these domain names include a notice that the copyright in them belongs to Levio Conseils Inc., and not to the Complainant.
The Respondent notes that the Complainant failed to disclaim that its trademark was registered on April 21, 2020, while the disputed domain name was registered on September 9, 2013 – almost seven years earlier.
The Respondent further states that the Complainant chose to keep the Respondent identified as Super Privacy Service LTD c/o Dynadot, despite being informed by the Center that the underlying registrant was Glocal Commerce Limited. According to the Respondent, the company Levio Conseils Inc. directly tried to buy the disputed domain name from the Respondent in 2015 and then in 2018 / 2019, which was omitted in the Complaint. The third purchase attempt in 2020 was again initiated and managed by Levio Conseils Inc., and not by the Complainant. The representative of Levio Conseils Inc. was aware of Glocal Commerce Limited, as well as of its manager, from their previous communications in 2015 and 2018 / 2019, as the email addresses used to reply to Levio Conseils Inc.’s offers were hosted at the domain name <glocalcommerce.com> and indicated Glocal Commerce Limited in their signature. The three attempts to acquire the disputed domain name in 2015, 2018 / 2019 and 2020, show that Levio Conseils Inc. and Levio Consulting Inc. understood that they had no rights in the disputed domain name. As evident from the evidence submitted by the Complainant, on November 3, 2020, Levio Conseils Inc. and the Complainant were already planning to start the present proceeding, although the last conversation with the Respondent took place later – on November 11, 2020.
The Respondent disputes the Complainant’s statement that the LEVIO trademark is arbitrary, and points out that it was chosen by the Complainant because “levio” is an actual dictionary word in Latin, with a very specific meaning. It notes in this regard that the website at “www.levioconsulting.com”, referred to by the Complainant as belonging to it, states that “levio” was taken from the Latin word meaning “to make lighter”, and the Complainant’s French language Facebook page refers to “l’élévation” and “action d’élever”.
The Respondent asserts that it needs no authorization from the Complainant in order to use the disputed domain name, since it precedes the Complainant’s incorporation, and the Respondent has legitimate interest in it and no interest in having any business relationship with the Complainant. The Respondent explains that the word “levio” is a dictionary word in Latin, and many other words in English have the same root. The Respondent’s manager is from Brazil, and there are many words in Portuguese that are related to the word “levio”. The Respondent’s interest in the disputed domain name started while negotiating the import of food and personal hygiene products from the Philippines to Brazil and the Respondent needed a brand for these products, since most of the original brands from the Philippines would not make sense in Brazil. The brand LEVIO worked well for food and for personal hygiene products, as “leve” in Portuguese means “light”. However, when the US Dollar exchange rate against the Brazilian Real changed and made imports in Brazil not competitive, the Respondent decided to wait for more favorable conditions to implement its plans. Since its registration, the disputed domain name has been alternating between forwarding to the Respondent’s website at “www.glocalcommerce.com”, not resolving, and being on parking. The Respondent notes that the Complainant has confirmed that nothing on the Respondent’s website refers to the Complainant’s business, and points out that Levio Conseils Inc. has itself never complained about the use of the disputed domain name when it made three attempts to buy it. The Respondent refers to the disclaimer on the website at the disputed domain name, which states that the sponsored listings displayed on it are served automatically by a third party and that the disputed domain name owner maintains no relationship with the advertisers. The Respondent notes that it has also registered the domain name <levio.org> in 2016, which also precedes the Complainant’s existence.
The Respondent maintains that it has always been the owner of the disputed domain name, and has only changed the registrar from time to time, which has led to changes in the publicly available information in the WhoIs records for the disputed domain name, which indicated the names of the privacy services offered by the respective then current registrars. The Respondent further notes in this regard that the name servers for the disputed domain name have always remained the same, and submits an email message received from the former registrar Epik in 2019 confirmed the Respondent’s ownership of the disputed domain name at the time.
The Respondent requests a finding of Reverse Domain Name Hijacking against the Complainant on the basis that the Complainant should also have known that it would not be able to prevail on all of the three elements of the Policy. It points out that the Complainant should have been aware that the disputed domain name was registered in 2013, well in advance of the registration of the Complainant and of its trademark, that the disputed domain name is comprised of a dictionary word in Latin, that the Complainant had tried to buy the disputed domain name at least two other times, and tried a third time to acquire it while already preparing for the present proceeding as its “Plan B”.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant 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 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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of the registration of the LEVIO trademark in the United States and has thus established its trademark rights for the purposes of the Policy. As noted by the Respondent, the LEVIO trademark was registered only in 2020, which is seven years after the registration of the disputed domain name. As discussed in section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Policy makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, but such rights must be in existence at the time the complaint is filed, and the fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element. However, where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith. This aspect of the dispute is discussed in the following sections of the present decision.
The Complainant also submits that it has unregistered trademark rights in the LEVIO trademark as a result of its use starting from December 24, 2015, including on its websites. As discussed in section 1.3 of the WIPO Overview 3.0, to establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier, which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.
The Panel finds that the evidence provided by the Complainant, is not sufficient enough to show that the Complainant has acquired unregistered trademark rights in the sign LEVIO. There is no evidence about the volume of sales under the LEVIO trademark, about the nature and extent of advertising using it, or about the degree of its actual public recognition. The Complainant has only submitted printouts of archived copies of the websites at the domain names <levio.ca> and <levioconsulting.com>, but no evidence about the popularity and rating of these websites. As pointed out by the Respondent, the websites at these domain names include a notice that the copyright in them belongs to Levio Conseils Inc., rather than to the Complainant, and it appears from the evidence submitted by the Respondent that the Complainant was itself established only in 2020.
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 of 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 is therefore the element “levio”, which is identical to the LEVIO trademark.
Therefore, the Panel finds that the disputed domain name is identical to the LEVIO trademark in which the Complainant has registered trademark rights.
B. Rights or Legitimate Interests
The disputed domain name was registered in 2013, and the arguments and evidence submitted by the Respondent satisfies the Panel enough to make the conclusion that the Respondent has been its owner also prior to the registration of the LEVIO trademark. The Respondent has shown that “levio” is a Latin word meaning “to make lighter”, rather than a fancy word invented by the Complainant, and this is confirmed by a statement on the website at “www.levioconsulting.com”, claimed by the Complainant to be its own. The Complainant has also admitted that the website at the disputed domain name does not target the Complainant and its LEVIO trademark.
The Respondent has explained that it chose the disputed domain name for a bona fide commercial project that has not materialized yet and is not related in any way to the Complainant or to its LEVIO trademark. Nothing submitted by the Parties contradicts the Respondent’s explanation, and in the light of the considerations above the Panel sees no reason to question it. The fact that the Complainant, or parties related to it, have on three occasions unsuccessfully attempted to purchase the disputed domain name from the Respondent without raising any complaints about the Respondent’s conduct further affirms this conclusion.
Taking the above into account, the Panel finds that the Complainant has failed to establish that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As summarized in section 3.8.1 of the WIPO Overview 3.0, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.
The disputed domain name was registered seven years prior to the registration of the LEVIO trademark, and the Respondent has shown that it has been its owner also prior to 2019. The evidence shows that the website at the disputed domain name does not target the Complainant or its LEVIO trademark. The Respondent has provided a plausible explanation for the registration of the disputed domain name, and the Complainant and its related parties have never raised any complaints about the Respondent’s conduct in the course of their three unsuccessful attempts to purchase the disputed domain name from the Respondent. None of these attempts was initiated by the Respondent, and it never indicated any price at which it would be willing to sell the disputed domain name. In view of this, the Panel sees no reason to disapprove of the Respondent’s conduct and no reason to accept that the Respondent has somehow targeted the Complainant with the registration and use of the disputed domain name.
Therefore, the Panel finds that the Complainant has failed to establish that the Respondent has registered and used the disputed domain name in bad faith.
7. Reverse Domain Name Hijacking
Reverse Domain Name Hijacking (“RDNH”) is defined under the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
As set out in section 4.16 of the WIPO Overview 3.0, reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence.
As pointed out by the Respondent, the Complainant should have taken into account that the Respondent has been the owner of the disputed domain name for a long period of time, which started years before the registration of the Complainant and of the LEVIO trademark, and that there is an established Policy precedent that where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.
The submitted evidence shows that the Complainant and parties related to it have initiated three consecutive attempts since 2015 to purchase the disputed domain name from the Respondent, in none of which the Respondent indicated a selling price, and that in the course of these attempts the Respondent revealed its identity as Glocal Commerce Limited. Even if the identity of the present registrant of the disputed domain name was not readily apparent due to the use of more than one privacy services, the Complainant was made aware that this was still the Respondent on February 23, 2021, when it received the communication by the Center with the registrant and contact information disclosed by the Registrar. Being made aware that the identity of the registrant of the disputed domain name has not changed, and knowing that the website at the disputed domain name has never targeted the Complainant or its LEVIO trademark, the Complainant should have appreciated that it would not be able to prevail on the issue of bad faith under of the Policy, and should have withdrawn the Complaint. Instead, it chose not to amend the Complaint and kept it addressed only against the privacy service offered by the Registrar.
On the basis of the above, the Panel finds that the Complainant has engaged in Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
Date: April 25, 2021