Lucifer Lighting Company v. guorong / guo rong
Claim Number: FA2002001882510
Complainant is Lucifer Lighting Company (“Complainant”), represented by Norton Rose Fulbright US LLP, Texas, USA. Respondent is guorong / guo rong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lucifer-lighting.com>, registered with Xin Net Technology 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 7, 2020; the Forum received payment on February 7, 2020.
On February 18, 2020, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <lucifer-lighting.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology 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 February 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 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@lucifer-lighting.com. Also on February 21, 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 March 16, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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" 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, Lucifer Lighting Company, offers lighting fixtures and designs lighting systems for architects, designers, developers and consumers alike. Complainant has rights in the trademark LUCIFER based upon the registration with the United States Patent and Trademark Office (“USPTO”) dating back to 1982. Complainant also claims common law rights in the LUCIFER LIGHTING mark based upon its use in commerce since 1979. It also has used the domain name <luciferlighting.com> for its own website since that time. Respondent’s <lucifer-lighting.com> domain name, registered on November 13, 2019, is confusingly similar to Complainant’s mark as Respondent incorporates the entire LUCIFER LIGHTING mark and merely adds a hyphen and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <lucifer-lighting.com> domain name. Respondent is not licensed or authorized to use Complainant’s LUCIFER or LUCIFER LIGHTING marks and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <lucifer-lighting.com> domain name to divert Internet users to Respondent’s website where Respondent hosts advertisements for casinos located in Macao and for other businesses.
Respondent has registered and uses the <lucifer-lighting.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name which features click-through advertisements to third party websites. Finally, Respondent had actual knowledge or constructive notice of Complainant’s LUCIFER and LUCIFER LIGHTING marks prior to registering the <lucifer-lighting.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name was registered and is being used by Respondent in bad faith.
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 Panel notes Complainant’s request that English be the language of this administrative proceeding pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement for the disputed domain name. It is established practice 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. Evidence exhibiting Respondent’s understanding of the English language should be considered and the parties must not be unduly prejudiced by the use of a language other than that appearing in the registration agreement of the disputed domain name. 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 weigh the relative time and expense in enforcing the Chinese language 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.”) In support of its request Complainant points to the fact that the <luciferlighting.com> domain name uses words and characters which are based in the English language, that portions of the website that resolves from the disputed domain name appear in English, and that the website displays a United States of America flag icon indicating that the site may be translated into the English language. Therefore, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to indicate the high probability that the Respondent is proficient in the English language. Further, Respondent has not filed a response or made any other submission to contest Complainant’s language request. After considering the circumstance of the present case, the Panel decides that the proceedings should be in English.
Complainant claims rights to the LUCIFER mark based upon registration with the USPTO. Registration with USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides copies of its USPTO registrations for the LUCIFER mark although one of these lists the owner as an entity named Emmanel Lighting Company. As this entity is not mentioned in the Complaint or any other evidence and its relationship to the Complainant is not explained, this one trademark registration certificate will not be considered for the purposes of the present case. In view of the evidence presented, the Panel finds that Complainant has sufficiently demonstrated its rights in the LUCIFER mark per Policy ¶ 4(a)(i).
Complainant also claims common law rights in the LUCIFER LIGHTING mark as Complainant has used its such mark in commerce since at least 1979. Common law rights are typically found through a showing of a secondary meaning in the mark. Traditionally, a secondary meaning is established by evidence of a complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to the complainant. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”) Here, it is apparent that LUCIFER LIGHTING is Complainant’s corporate name and the evidence provided shows that Complainant owns and uses the domain name <luciferlighting.com> for its website to promote its goods and services. Although this evidence is minimal, Respondent has not participated in this case to rebut it and so this Panel concludes that Complainant has established common law rights by showing the LUCIFER LIGHTING mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <lucifer-lighting.com> domain name is confusingly similar to Complainant’s mark. Specifically, Complainant argues that Respondent merely adds a hyphen and a gTLD to Complainant’s LUCIFER LIGHTING mark. Such minor changes do not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Complainant argues that Respondent merely adds a hyphen and the “.com” gTLD to Complainant’s LUCIFER LIGHTING mark. The Panel agree with Complainant and find that the <lucifer-lighting.com> domain name is confusingly similar to Complainant’s LUCIFER LIGHTING mark per Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant argues that Respondent has no rights or legitimate interests in the <lucifer-lighting.com> domain name. Specifically, Complainant argues that Respondent is not licensed or authorized to use the LUCIFER or LUCIFER LIGHTING marks and is not commonly known by the disputed domain name. In considering this issue, WHOIS information can support a finding that a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.) Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record for the <lucifer-lighting.com> domain name identifies Respondent as “guorong / guo rong,” and there is no other evidence to suggest that Respondent is known otherwise or that it is authorized to use the LUCIFER or LUCIFER LIGHTING marks. The Panel therefore finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant contends that the Respondent fails to use the <lucifer-lighting.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant alleges that Respondent uses the disputed domain name to host a parked webpage that contains links to third party casinos and other websites. Use of a domain name to host a parked webpage that contain third party links may not be considered to be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (iii). See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant); see also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Here, Complainant provides screenshots of the dispute domain name’s resolving website which shows multiple links to third party casinos and to other commercial websites. Therefore, the Panel finds that the Respondent lacks rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent must have had actual and constructive knowledge of Complainant’s LUCIFER and LUCIFER LIGHTING marks. The Panel finds that any arguments of bad faith based on constructive notice are not applicable, however, because UDRP case precedent most often declines to find bad faith as a result of constructive knowledge – especially where, as here, there is no evidence that the Respondent is subject to the laws of a jurisdiction that adopts such principle. See UBS AG v. Randy Allotey, FA1810001812533 (Forum Nov. 17, 2018) ("Arguments of bad faith based on constructive notice do not usually succeed, as UDRP decisions generally decline to find bad faith as a result of constructive knowledge.") However, actual knowledge of a complainant’s mark has been found to support a claim of bad. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize constructive notice as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”) Here, Complainant claims that due to Respondent’s use of Complainant’s LUCIFER and LUCIFER LIGHTING marks, particularly the close proximity of the <lucifer-lighting.com> domain name to Complainant’s own <luciferlighting.com> domain name and Complainant’s own business supplying lighting to a casino in Macau, Respondent had actual knowledge of Complainant’s LUCIFER and LUCIFER LIGHTING marks. Therefore, the Panel finds it more likely than not that Respondent had actual knowledge of Complainant’s rights in the LUCIFER and LUCIFER LIGHTING marks, and thus constitutes bad faith under Policy ¶ 4(a)(iii).
Complainant claims that Respondent registered and uses the <lucifer-lighting.com> domain name in bad faith. Specifically, Complainant claims that Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name which features click-through advertisements. Using a confusingly similar domain name to disrupt a complainant’s business and commercially benefit via monetized links can evince bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA 1605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”) Here, Complainant contends that the disputed domain name is intended to mislead Internet users and disrupt Complainant’s business by diverting Internet traffic away from Complainant’s site to Respondent’s website. Complainant then claims that Respondent hosts links to third party websites for casinos in Macao and for other commercial businesses to generate click-through advertisement revenue. Complainant provides a screenshot of Respondent’s use of the domain name’s resolving webpage to support its allegations. In view of the evidence presented and in the absence of any Response or other submission by Respondent, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶¶ 4(b)(iii) and/or (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lucifer-lighting.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: March 18, 2020
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