LTWHP, LLC v. Sebastian Frei
Claim Number: FA2303002035973
Complainant is LTWHP, LLC (“Complainant”), represented by Eric Perrott of Gerben Perrott, PLLC, USA. Respondent is Sebastian Frei (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lottoshoesza.com>, registered with MAT BAO CORPORATION.
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on March 15, 2023; Forum received payment on March 15, 2023.
On March 17, 2023, MAT BAO CORPORATION confirmed by e-mail to Forum that the <lottoshoesza.com> domain name is registered with MAT BAO CORPORATION and that Respondent is the current registrant of the name. MAT BAO CORPORATION has verified that Respondent is bound by the MAT BAO CORPORATION 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 March 17, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 6, 2023 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@lottoshoesza.com. Also on March 17, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On April 12, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the fact that the Registration Agreement is in the Vietnamese language. That being so, the language of the proceeding is Vietnamese unless, pursuant to Rule 11 (a), the Panel determines that in all the circumstances, another language is more appropriate.
It is also established practice in determining this issue to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as relevant in resolving that issue have been: WHOIS information which establishes Respondent in a country which would normally demonstrate familiarity with a language different from the language of the Registration Agreement; filing of a trademark registration with an entity which shows an understanding of that language; and any other evidence (or lack thereof) exhibiting Respondent’s understanding of such a language. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may also weigh the relative time and expense in enforcing the language of the Registration Agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Here, Complainant submits that the Registration Agreement is in both English and Vietnamese, and the domain name includes in part, the letters “az” which make up the the country-code abbreviation for South Africa whose national language is English. Also, the <lottoshoesza.com> domain name also incorporates the English words “lotto” and “shoes” which are English words. Moreover, the Panel has examined the website to which Respondent has caused the domain name to resolve and notes that virtually all of its content, including detailed provisions such as the Privacy Policy, is in English and virtually none of it is in Vietnamese. Indeed, based on the Panel’s own use of the website, clicking on the South African flag on the website, presumably meant to indicate that South African users will be able to read and understand the website if they click on that symbol, takes the user to a virtually solely English website.
Taking all of these circumstances into consideration, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to show that the Respondent is conversant and proficient in the English language. After considering all the circumstance of the present case, the Panel finds that the proceeding should be in the English language.
A. Complainant
Complainant made the following contentions.
Complainant, LTWHP, LLC, is a retailer of clothing, accessories, footwear, and sporting goods. Complainant has rights in the LOTTO mark through numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,023,806, which was registered on October 28, 1975). See Compl. Exhibit A. Respondent’s <lottoshoesza.com> domain name is confusingly similar to the LOTTO mark as it includes the entire mark and adds a geographic term.
Respondent lacks rights or legitimate interests in the <lottoshoesza.com> domain name since Respondent is not licensed or authorized to use Complainant’s LOTTO mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent passes off as Complainant and purports to sell Complainant’s goods. In addition, Respondent confuses customers and diverts traffic away from Complainant to a competing website.
Respondent registered the <lottoshoesza.com> domain name in bad faith by capitalizing on the goodwill associated with the LOTTO mark and disrupting Complainant’s business. Respondent also clearly intends to cause confusion as to the source or affiliation of the domain name and to suggest that the domain name and website to which it resolves are an official domain name and website of Complainant and its LOTTO mark, and to divert Internet away from them and towards the disputed domain name and its website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a United States company engaged in the clothing, accessories, footwear, and sporting goods industries.
2. Complainant has established its rights in the LOTTO mark through numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,023,806, which was registered on October 28, 1975).
3. Respondent registered the <lottoshoesza.com> domain name on January 6, 2022.
4. Respondent has caused the disputed domain name to be used to pass itself off as Complainant and to sell Complainant’s goods. In addition, Respondent has attempted to confuse potential customers of Complainant and to divert internet traffic away from Complainant to Respondent’s competing website.
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 Jurisprudential Overview 3.0 at ¶ 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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the LOTTO mark through multiple trademark registrations with the USPTO (e.g., Reg. No. 1,023,806, which was registered on October 28, 1975). See Compl. Exhibit A. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Since Complainant provides evidence of registration of the LOTTO mark with the USPTO, the Panel finds that Complainant has demonstrated rights in the LOTTO mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s LOTTO mark. Complainant argues that the <lottoshoesza.com> domain name is confusingly similar to its LOTTO mark since it uses the entire mark and them adds the generic word “shoes” and the geographic abbreviation for South Africa, “za.” When a disputed domain name wholly incorporates another’s mark, additional terms such as a generic word and a geographic indicator have been found insufficient to negate a finding of confusing similarity. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Given that Respondent adds such terms to Complainant’s LOTTO mark, the Panel finds that the <lottoshoesza.com> mark is confusingly similar to Complainant’s LOTTO mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s LOTTO mark and to use it in its domain name, adding the generic word “shoes” and the geographic abbreviation for South Africa, “za” which do not negate a finding of confusing similarity between the domain name and the trademark;
(b Respondent registered the <lottoshoesza.com> domain name on January 6, 2022;
(c) Respondent has caused the disputed domain name to be used to pass itself off as Complainant and to sell Complainant’s goods. In addition, Respondent has attempted to confuse potential customers of Complainant and to divert internet traffic away from Complainant to Respondent’s competing website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e)Complainant argues that Respondent has no rights or legitimate interests in the <lottoshoesza.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has never licensed rights to or authorized Respondent to use the LOTTO mark. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support for the conclusion that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for <lottoshoesza.com> lists the registrant as “sebastian frei” with the company “Sebastian Frei.” See Registrar Email Verification. Further, there is no evidence to suggest that Respondent was authorized, licensed rights to, or otherwise permitted to use the LOTTO mark. Therefore, the Panel finds that Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent seeks to mislead consumers about the source or affiliation of the disputed domain name and divert them away from Complainant to Respondent’s own website. Previous Panels have found that use of a domain name to deceive and divert customers away from a complainant does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). As the Panel agrees that Respondent uses the <lottoshoesza.com> domain name and LOTTO mark to divert Internet users to its own website, it finds that Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant further argues that Respondent is passing itself off as Complainant. Panel have declined to find a bona fide or legitimate use when a respondent uses a resolving site to impersonate a complainant and thus to pass itself off as complainant. See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”). Complainant has not adduced in evidence that Respondent has used the disputed domain name at all, or, in particular, that it has used the domain name to pass itself off as Complainant. However, the domain name is in evidence and for that reason the Panel has tested the domain name to see if and how it has been used. Having done so, it is apparent that the domain name has been used to resolve to a website that clearly passes itself off as the Complainant and to purport to sell the same products that Complainant sells and by inference Complainant’s own products. The website clearly uses the LOTTO mark on the resolving website, which is apparent from the website itself and Respondent is thus clearly attempting to pass itself off as Complainant and to attempt to sell Complainant’s products. That cannot be bona fide and cannot be a legitimate use of the domain name. Therefore, Respondent is not using the domain name for a bona fide or legitimate use;
(h) Complainant submits that Respondent uses the disputed domain name to purport to sell Complainant’s goods. Use of a disputed domain name to offer a complainant’s goods without authorization does not satisfy Policy ¶¶ 4(c)(i) or (iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). It is apparent from perusing the website to which the disputed domain name resolves that Respondent is using the disputed domain name to purport to sell Complainant’s goods. Therefore, Respondent is not using the domain name for a bona fide or legitimate use.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, as already noted, the Panel has tested the domain name to see how it resolves. It resolves to a website where Respondent is clearly pretending to be the Complainant by using the Complainant’s brand name and hence to pass itself off as Complainant. It is also purporting to use the website to sell either counterfeit goods or the Complainant’s own products. That conduct is deceptive and amounts to use of the domain name in bad faith. As the domain name could only be used in that manner if it were registered with the intention of engaging in such conduct, it also shows that the domain name was registered in bad faith.
Secondly, Complainant argues that Respondent registered and uses the <lottoshoesza.com> domain name in bad faith by trading off Complainant’s goodwill in the LOTTO mark so as to cause confusion and to divert Internet traffic to the website to which the domain name resolves. The Panel agrees. When a disputed domain name is found to be confusingly similar to a complainant’s mark, Panels have frequently reached the conclusion that a respondent intends to deceive consumers as to the source or affiliation of a domain name and to attract them in bad faith for commercial gain. See MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). As the Panel agrees, it finds that Respondent’s use of the confusingly similar domain name in the present case shows bad faith under Policy ¶ 4(b)(iv).
Complainant has thus made out the second of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lottoshoesza.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: April 16, 2023
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