LGMB Holding LLC v. yang liu
Claim Number: FA1507001627997
Complainant is LGMB Holding LLC (“Complainant”), represented by Sidney D Bluming of Meister Seelig & Fein LLP, USA. Respondent is Yang Liu (“Respondent”), represented by Qiang Gao, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lidia.com>, registered with DropCatch.com 445 LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Mrs. Prathiba M. Singh as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 9, 2015; the Forum received payment on July 9, 2015.
On July 9, 2015, DropCatch.com 445 LLC confirmed by e-mail to the Forum that the <lidia.com> domain name is registered with DropCatch.com 445 LLC and that Respondent is the current registrant of the name. DropCatch.com 445 LLC has verified that Respondent is bound by the DropCatch.com 445 LLC 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 July 13, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 2015 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@lidia.com. Also on July 13, 2015, 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.
A timely Response was received and determined to be complete on July 31, 2015.
A timely Additional Submission was received from Complainant on August 4, 2015.
On August 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mrs. Prathiba M. Singh 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. COMPLAINANT
Complainant has registered the LIDIA trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,909,350, registered January 18, 2011). The mark is used in connection with the sale of cookware, namely skillets, spider skimmers, sauté pans, saucepans, roasting pans, and related products. The <lidia.com> domain name is identical to the LIDIA trademark because the only difference between the domain name and the mark is the addition of the gTLD “.com.”
Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain name, nor is Respondent a licensee of Complainant. Further, Respondent has not provided a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Rather, Respondent has failed to actively use the disputed domain name.
Respondent has engaged in bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii). Respondent’s bad faith is demonstrated by the fact that Respondent is not actively using the disputed domain name.
B. RESPONDENT
Respondent makes no contentions with regard to whether the disputed domain name is identical to the LIDIA trademark. Respondent does argue that because the mark is registered in the United States and Respondent is located in China, Complainant cannot enforce its trademark rights against Respondent.
Respondent has rights or legitimate interests in the disputed domain name. Further Respondent submits that the registration of the domain name should follow “first come, first registration” principle and that anyone is entitled to register his/her favorite word or words combination. Since Respondent registered the domain name now in dispute before Complainant could, Respondent has rights or legitimate interests.
Respondent has not acted in bad faith. Respondent was first to register the disputed domain name, which negates a finding of bad faith. Also, passive holding of a domain name is not in and of itself bad faith, especially because Respondent has plans to use the disputed domain name in the future.
C. ADDITIONAL SUBMISSIONS
Respondent’s contention that Complainant has not proven its trademark rights under Policy ¶ 4(a)(i) because it has not registered the mark in China is incorrect. Complainant’s registration with the USPTO is entirely sufficient to confer rights in this proceeding.
Respondent has not provided evidence that it has rights or legitimate interests in the disputed domain name. Respondent’s assertion that registration of domain names follows a “first come, first registration” is completely erroneous.
Respondent has registered and used the disputed domain name in bad faith. Respondent has failed to make any active use of the disputed domain name. Respondent has presented no evidence of its preparation to use the disputed domain name for a current business operation of a developing project.
From the documents filed, it clearly appears that Complainant is the owner of all the trademark rights relating to its celebrity chef principal, Ms. Lidia Matticchio Bastianich. Ms. Lidia Matticchio Bastianich is an Emmy- award winning public television host, best selling cookbook author, restaurateur (including several restaurants that bear her first name) and owner of a flourishing food and entertainment business. Ms. Bastianich has a television show as well which is aired in over 100 countries around the world.
Complainant has invested significant time and resources in developing and protecting Ms. Lidia Matticchio Bastianich name and brand through the application and registration of the LIDIA trademarks. Complainant has obtained U.S. federal trademark registrations for the famous LIDIA mark and for its derivative marks namely LIDIA’S and LIDIA CELEBRATES AMERICA.
Respondent’s domain name <lidia.com> is identical to the LIDIA trademark and the only difference between the domain name and the marks owned by Complainant is the addition of the gTLD “.com.”
Complainant submits that Respondent has no rights or legitimate interests in the <lidia.com> domain name on the following grounds
1. Respondent is not commonly known by the Disputed Domain Name as per the relevant WHOIS information, nor has any plea to this effect been raised;
2. Respondent purposely registered the Disputed Domain Name using a privacy service;
3. Respondent’s allegation that the trademark registration is in the United States and not in China means that Complainant has not been able to establish confusion is baseless, as the ubiquity of the internet extends beyond geographical boundries;
4. Respondent has not furnished any evidence to show that the use of the Disputed Domain Name is in connection with a bonafide offering of goods and services or is making any legitimate non commercial or fair use of the same;
5. Respondent has been failing to actively use the domain name since at least December 2014;
6. Respondent’s assertion that the registration of domain names should follow the “first come, first registration is completely baseless, unsubstantiated and groundless especially if it is a name which is the trade mark of a 3rd party who has legitimate interest in the same;
7. Respondent’s registration of the Disputed Domain Name prevents Complainant, the legitimate rights holder in the LIDIA trademark and its derivatives, from registering the domain name.
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.
Complainant has registered the LIDIA trademark with the USPTO (e.g., Reg. No. 3,909,350, registered January 18, 2011). The mark is used on or in connection with the sale of cookware, namely skillets, spider skimmers, sauté pans, saucepans, roasting pans, and related products. Complainant believes that a USPTO registration establishes its rights in the LIDIA mark, even though Respondent purportedly resides in China. Previous panels have agreed with this argument. In W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Accordingly, the Panelist finds that Complainant has rights in the LIDIA mark under Policy ¶ 4(a)(i). Moreover, the mere expanse, presence and the reach of the internet does result in creating marks which need to be protected globally.
Complainant argues that the <lidia.com> domain name is identical to the LIDIA trademark. Complainant notes that the only difference between the domain name and the mark is the addition of the gTLD “.com.” Panels have been overwhelmingly consistent in ruling that the gTLD “.com” is insufficient to distinguish a domain name from the trademark at issue. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panelist finds that the <lidia.com> domain name is identical to the LIDIA trademark according to Policy ¶ 4(a)(i).
Complainant has made a out a case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and that the burden shifts to Respondent to show it does have rights or legitimate interests. In Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); and also in AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. Complainant has satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the <lidia.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the LIDIA mark in domain names. Yang Liu is listed as the registrant of record for the disputed domain name and that the said record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant asserts that Respondent has been failing to actively use the domain name since at least December 2014. Complainant has provided the Panel with a screenshot of the resolving webpage, which contains a message reading “Lidia.com is coming soon.” In Compl., at Attached Ex. D. In the past, panels have declined to award a respondent rights under Policy ¶¶ 4(c)(i) and (iii) where the domain name is not actively being used. Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). The Panelist finds that Respondent has failed to actively use the domain name for a sufficient time period, I find that Respondent does not have rights under Policy ¶¶ 4(c)(i) and (iii).
While Complainant does not make contentions that neatly fall within the articulated provisions of Policy ¶ 4(b), these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith is demonstrated under the totality of the circumstances. In Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant argues that Respondent has displayed bad faith under Policy ¶ 4(a)(ii) because the domain name is not actively being used. Complainant again notes that Respondent has failed to actively use the domain name since at least December 2014. Complainant has provided the Panelist with a screenshot of the resolving webpage, which contains a message reading “Lidia.com is coming soon.” In Compl., at Attached Ex. D. In the past, panels have found bad faith where the respondent has not used the domain name for a sufficient time period. In Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). The adoption of the word LIDIA has not been explained by Respondent in any manner whatsoever. The Panelist finds that Respondent has failed to actively use the disputed domain name for a sufficient time period, it finds bad faith pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the domain name <lidia.com> be TRANSFERRED from Respondent to Complainant.
Mrs. Prathiba M. Singh, Panelist
Dated: August 19, 2015
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