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Generic Top Level Domain Name (gTLD) Decisions |
Lampe Berger, USA, Inc. v. Dot5Hosting,
Ltd.
Claim
Number: FA0308000190508
Complainant is Lampe Berger, USA, Inc., Somerset, NJ
(“Complainant”) represented by Russel O.
Primeaux, of Kean Miller Hawthorne D'Armond McCowan
& Jarman, LLP. Respondent is Dot5Hosting Ltd., Waterlooville,
Hampshire, Great Britain (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <lampebergerfuel.com> and <lampeoil.com>,
registered with Enom, Inc.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 25, 2003; the
Forum received a hard copy of the
Complaint on August 26, 2003.
On
August 26, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain
names <lampebergerfuel.com> and <lampeoil.com> are
registered with Enom, Inc. and that Respondent is the current registrant of the
names. Enom, Inc. has verified that Respondent
is bound by the Enom, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties
in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
September 3, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of September 23, 2003 by which Respondent could file a Response to
the Complaint, was transmitted to Respondent
via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing
contacts, and to postmaster@lampebergerfuel.com and
postmaster@lampeoil.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 14, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon.
Ralph Yachnin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum has discharged its
responsibility under
Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy
(the "Rules") "to
employ reasonably available means calculated
to achieve actual notice to Respondent."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules,
the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response
from Respondent.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lampebergerfuel.com>
and <lampeoil.com> domain names are confusingly similar to
Complainant’s LAMPES BERGER mark.
2. Respondent does not have any rights or
legitimate interests in the <lampebergerfuel.com> and <lampeoil.com>
domain names.
3. Respondent registered and used the <lampebergerfuel.com>
and <lampeoil.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Lampe Berger, USA, Inc., is the owner of the trademark registration for the
LAMPES BERGER mark (U.S. Reg. No. 1,898,481,
registered on June 13, 1995) and
has used that mark since 1967 in connection with the manufacture and sale of
perfume diffusers and
fragrant liquids used in connection with those perfume
diffusers. Complainant notes that the fragrant liquids used in LAMPES BERGER
branded diffusers are often referred to as “fuel.”
Respondent,
Dot5Hosting, Ltd., registered the <lampebergerfuel.com> and <lampeoil.com>
domain names on March 3 and March 27, 2003, respectively. Both domain names
hosted webpages that purported to sell fragrance “fuels”
or “oils” for
Complainant’s LAMPE BERGER branded perfume diffusers.
On September 3,
2003, Respondent submitted an email which stated that it had actually
registered the disputed domain names on behalf
of another party, going by the
name of D.P. Hulsey. Respondent further contended that it merely registered and
provided hosting accounts
for the disputed domain names, and was not actually
responsible for the content hosted at the disputed domain names. Respondent’s
submission indicated that D.P. Hulsey’s account with Respondent was cancelled
on or about June 6, 2003. However, as Respondent is
listed as the Registrant
for both domain names, and as UDRP Rule #1 clearly states that the Respondent
in a domain name dispute is
“the holder of a domain-name registration against
which a complaint is initiated,” the Panel will proceed in this dispute with Dot5Hosting,
Ltd. as the proper Respondent.
Paragraph 15(a)
of the Rules instructs this Panel to "decide a complaint on the basis of
the statements and documents submitted
in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain
name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has
rights; and
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Complainant has
established rights in the LAMPES BERGER mark through registration of the mark
with the U.S. Patent and Trademark Office,
as well as through widespread and
continuous use of the mark in commerce.
Respondent’s <lampebergerfuel.com> domain
name is confusingly similar to
Complainant’s LAMPES BERGER mark. It includes the entirety of Complainant’s
registered mark (minus the pluralization
of the word LAMPES), and the addition
of the word “fuel” adds no further distinctiveness to the domain name as it is
a term that
describes one of the products provided by Complainant under its
mark. See Oki Data Ams., Inc. v. ASD Inc., D2001-0903
(WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a
Complainant’s registered mark is sufficient to
establish identity or confusing
similarity for purposes of the Policy despite the addition of other words to
such marks”); see also Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (“Neither the
addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract
from the
overall impression of the dominant part of the name in each case,
namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Respondent’s <lampeoil.com> domain name is also confusingly
similar to Complainant’s mark. As in the domain name discussed above,
Respondent has taken a part
of Complainant’s mark (the unpluralized portion of
the word LAMPE) and added the descriptive term “oil.” Again, Respondent’s
addition
of a descriptive term to Complainant’s mark is insufficient to
distinguish the domain name from Complainant’s LAMPES BERGER mark.
See
Hammond Suddards Edge v. Westwood Guardian Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding
that the <hammondsuddards.net> domain name is essentially identical to
Complainant's
HAMMOND SUDDARDS EDGE mark); see also Space Imaging LLC v.
Brownwell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with
a generic term that has an obvious relationship to
Complainant’s business)
Accordingly, the
Panel finds that the <lampebergerfuel.com> and <lampeoil.com>
domain names are confusingly
similar to Complainant’s LAMPES BERGER mark under Policy ¶ 4(a)(i).
The disputed
domain names were used to host webpages that promoted products designed for use
in Complainant’s LAMPES BERGER branded
perfume diffusers. Complainant also
sells these types of “fuels,” and has
not licensed or authorized anyone associated with the disputed domain names to
use the LAMPES BERGER mark for any
commercial purpose. Thus, the commercial
activities at the disputed domain names cannot be considered to be a bona fide
offering
of goods and services pursuant to Policy ¶ 4(c)(i), and are not
noncommercial in nature as described by Policy ¶ 4(c)(iii), making
both of
these provisions of the Policy inapplicable in this dispute. See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (holding that Respondent’s appropriation of Complainant’s mark to market
products that
compete with Complainant’s goods does not constitute a bona fide
offering of goods and services); see also Avery Dennison Corp. v. Steele,
FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights
or legitimate interests in the disputed domain name
where it used Complainant’s
mark, without authorization, to attract Internet users to its business, which
competed with Complainant).
As Complainant
has not licensed the use of the LAMPES BERGER mark for use at the disputed
domain names, and as Respondent has not
come forward with any evidence
rebutting Complainant’s claim that it is not “commonly known by” the disputed
domain names, the Panel
is unwilling to find that Policy ¶ 4(c)(ii) applies in
this dispute. See Compagnie de
Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interest where Respondent was not commonly known by the
mark and
never applied for a license or permission from Complainant to use the
trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb.
Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing
that one has been commonly known
by the domain name prior to registration of
the domain name to prevail").
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<lampebergerfuel.com> and <lampeoil.com> domain names under Policy ¶ 4(a)(ii).
The disputed
domain names were used to sell products that competed with the products supplied
by Complainant under the LAMPES BERGER
mark. Thus, the operator of the disputed
domain names is commercially benefiting from unauthorized use of Complainant’s
mark insofar
as it is capitalizing on the goodwill that Complainant has built
up around that mark. This creation of a likelihood of confusion
as to the
source of sponsorship of the disputed domain names for commercial gain
evidences bad faith use and registration pursuant
to Policy ¶ 4(b)(iv). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (finding that Respondent’s use of the <saflock.com> domain name to
offer goods competing
with Complainant’s illustrates Respondent’s bad faith
registration and use of the domain name, evidence of bad faith registration
and
use pursuant to Policy 4(b)(iv)); see also Pfizer, Inc. v. Papol Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between
Complainant’s mark and the content advertised on Respondent’s
website was
obvious, Respondent “must have known about the Complainant’s mark when it
registered the subject domain name”).
The Panel thus
finds that the <lampebergerfuel.com> and <lampeoil.com> domain names were registered and used in bad faith, and that Policy ¶ 4(a)(iii) is
satisfied.
Having established
all three elements required under the ICANN Policy, the Panel concludes that
relief shall be GRANTED.
Accordingly, it
is Ordered that the <lampebergerfuel.com> and <lampeoil.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin
Justice, Supreme Court, NY (Ret.)
Dated:
October 24, 2003
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