La Pharma S.R.L LLC v. Kanda Suwimon
Claim Number: FA2010001918219
Complainant is La Pharma S.R.L LLC (“Complainant”), represented by Abhijeet Singh of La Pharma S.R.L LLC, United States. Respondent is Kanda Suwimon (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <laeinfo.com>, registered with NameCheap, 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 26, 2020. The Forum received payment on October 26, 2020.
On October 26, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <laeinfo.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 27, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@laeinfo.com. Also on October 27, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.
On November 21, 2020, Complainant submitted to the Forum an unsolicited additional submission.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, La Pharma S.R.L. LLC, has rights in the LA PHARMA S.R.L. mark based upon registration with the United States Patent and Trademark Office (“USPTO. Respondent’s <laeinfo.com> domain name is confusingly similar to Complainant’s LA PHARMA S.R.L. mark because it uses “LA”, the most distinctive part of the mark.
Respondent does not have rights or legitimate interests in the <laeinfo.com> domain name. Respondent has no license or agreement to use the LA PHARMA S.R.L. mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to cause confusion and redirect Internet users to a website that sells similar products.
Respondent registered and uses the <laeinfo.com> domain name in bad faith. Respondent uses Complainant’s marks and logos in conjunction with the disputed domain name to confuse consumers and attract them to a competing webpage.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has failed to establish all the elements entitling it to relief.
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."
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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Procedural issue: Unsolicited Additional Submission
Paragraph 12 of the Rules does not contemplate unsolicited submissions after the Complaint and Response and gives the Panel the "sole discretion" as to acceptance and consideration of additional submissions. The overriding principle of Rule 12 enables the Panel both to disregard unsolicited submissions received within the time limits contemplated by the Forum’s Supplemental Rule 7 and to take into account unsolicited submissions received outside those time limits. See Darice, Inc. v. Texas International Property Associates - NA NA, FA1082320, (Forum 16 November, 2007).
Complainant’s additional aubmission notes changes made to Respondent’s website occurring after the filing of the Complaint. Under these circumstances the Panel has taken the additional submission into consideration.
Complainant has shown that it has rights in USPTO registered trademark No. 6,028,658, registered on April 7, 2020:
“the LA PHARMA S.R.L. mark”.
Complainant submits that Respondent’s <laeinfo.com> domain name is confusingly similar to the LA PHARMA S.R.L. mark because it uses “LA”, the most distinctive part of the mark.
As noted in section 1.7 of WIPO Overview 3.0, the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
According to section 1.8 of WIPO Overview 3.0, “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”.
Ignoring the design features of the mark and the inconsequential gTLD “.com” in the domain name, it is by no means clear that the word “laeinfo” is confusingly similar to the words of Complainant’s LA PHARMA S.R.L. mark. In English the word “la” is the syllable used for the sixth tone of a diatonic scale. It is also a commonly used abbreviation for the city of Los Angeles. In French it is a definite article. Since the word “info” is easily identified in the domain name, the letter “e” appears attached to the letters preceding that word, so the domain name looks more like “lae info” than “la einfo”. On the other hand, the letter “e” often signifies “electronic” so the domain name could be seen as “la e info”.
According to section 1.15 of WIPO Overview 3.0, the content of the website associated with the domain name is usually disregarded by panels when assessing confusing similarity under the first element. In some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.
In the present case, the Panel has taken into consideration the content of Respondent’s website, which is clearly directed at Complainant’s customers and is designed to mislead them into believing that it is Complainant’s website.
However, having regard to the Panel’s finding in relation to the third element, it is unnecessary to reach a conclusion as to whether the <laeinfo.com> domain name is confusingly similar to the textual components of Complainant’s LA PHARMA S.R.L. mark.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The disputed domain name was registered on December 26, 2016. When the Complaint was filed the domain name resolved to a website displaying the whole of Complainant’s LA PHARMA S.R.L. mark and corporate name, offering for sale goods competing with those of Complainant and containing statements purporting to be made by Complainant.
These circumstances, coupled with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Respondent has made no attempt to do so. In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
As mentioned, the disputed domain name was registered on December 26, 2016. The evidence put forward by Complainant includes a copy of its certificate of formation, which shows that Complainant was incorporated under New Jersey State Law on July 9, 2020. The LA PHARMA S.R.L. mark was registered on April 7, 2020 with a claimed date of first use as May 5, 2019. Hence Respondent’s registration of the <laeinfo.com> domain name predates Complainant’s first claimed rights in the LA PHARMA S.R.L. mark by several years. Indeed. Complainant did not exist when the disputed domain name was registered, so despite the recent clear bad faith use of the domain name, targeting Complainant and its trademark, Respondent could not have had Complainant or its trademark in mind when registering the disputed domain name.
It follows that Complainant cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of both bad faith registration and bad faith use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
Complainant has failed to establish this element.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <laeinfo.com> domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: November 27, 2020
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