LIXIL Group Corporation v. Laura Betgevergiz
Claim Number: FA1712001763188
Complainant is LIXIL Group Corporation (“Complainant”), represented by Mark Sommers of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington D.C., USA. Respondent is Laura Betgevergiz (“Respondent”), represented by Laura Betgevergiz, Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lixil-corp.com>, registered with GoDaddy.com, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint t o the Forum electronically on December 15, 2017; the Forum received payment on December 15, 2017.
On December 18, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lixil-corp.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 December 19, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2018 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@lixil-corp.com. Also on December 19, 2017, 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.
An Additional Submission from Complainant was received on January 4, 2018 and found to be timely and Compliant with Supplemental Rule 7.
On January 11, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 provides human-centric innovations to enhance people’s living spaces, including sanitary ware, bathroom fixtures, kitchen fixtures, as well as a full lineup of interior and exterior materials and products for houses and major architectural projects. Complainant registered the LIXIL (stylized) mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,239,674, registered November 13, 2012). Respondent’s <lixil-corp.com> domain name is confusingly similar to Complainant’s mark as it contains Complainant’s mark in its entirety and adds a hyphen, the generic term “corp,” and the non-distinguishing generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <lixil-corp.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to send emails that impersonate Complainant in order to defraud Complainant, Complainant’s customers, and Complainant’s supply chain. Further, the domain name resolves to an inactive webpage.
Respondent registered and uses the <lixil-corp.com> domain name in bad faith. Respondent registered and uses the domain name and an associated email account to impersonate Complainant as part of a phishing scheme aimed at defrauding Complainant, its customers, and/or its supply chain. Further, Respondent has attempted to commercially benefit unfairly and opportunistically from the goodwill associated with Complainant’s LIXIL mark. Finally, Respondent must have known about Complainant’s rights in the LIXIL mark prior to registering the <lixil-corp.com> domain name given the fame of Complainant’s LIXIL mark, Complainant’s long-standing use of the mark, the incorporation of the LIXIL mark in its entirety, Complainant’s international presence in the marketplace, and Respondent’s impersonation of Complainant through email addresses related to the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes that Respondent registered the <lixil-corp.com> domain name on November 9, 2017. Also the panel acknowledges receipt by the Forum of an informal response from Respondent suggesting that she is not the true registrant of this domain.
C. Additional Submissions
In its Additional Submission, Complainant contends that the informal communication from Laura Betgevergiz indicates that Respondent registered the the <lixil-corp.com> domain name in bad faith by using false contact information.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims to have registered the LIXIL (stylized) mark with the USPTO (e.g. Reg. No. 4,239,674, registered November 13, 2012). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. Accordingly, the Panel finds that Complainant has established rights in the LIXIL mark for the purposes of Policy ¶ 4(a)(i).”)
Complainant next argues that Respondent’s <lixil-corp.com> domain name is confusingly similar to Complainant’s mark as it contains Complainant’s mark in its entirety and adds a hyphen, and the generic term “corp”. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens are irrelevant for purposes of the Policy). The Panel therefore finds that the <lixil-corp.com> domain name is confusingly similar to the LIXIL mark under Policy ¶4(a)(i).”
Complainant contends that Respondent has no rights or legitimate interests in the <lixil-corp.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Laura Betgevergiz” as the alleged registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the LIXIL mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1620789 (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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <lixil-corp.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant contends that the disputed domain name resolves to a website that lacks any substantive content. Failure to make active use of a confusingly similar domain name can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. 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).”). Complainant provides a screenshot of the resolving domain, which displays the message “404. That’s an error. The requested URL / was not found on this server. That’s all we know.” Accordingly, the Panel finds that Respondent fails to actively use the disputed domain name and thus does not make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Further, Complainant argues that Respondent uses the domain name to send emails that impersonate Complainant in order to defraud Complainant, Complainant’s customers, and Complainant’s supply chain. Passing off as a complainant for fraudulent purposes can evince a failure to use a domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides a copy of an email it received from Respondent using an email address associated with the disputed domain name, “kinya.seto@lixil-corp.com,” which contains the message “Are you in your office? We would like you to take care of a small situation for us in the United States.” Complainant avers, and the Panel finds, that Respondent attempted to impersonate its employee, Kinya Seto, to defraud Complainant in some unspecified manner. This also demonstrates a lack of rights and legitimate interests per Policy ¶ 4(c)(i) and (iii).
Thus, Complainant has also satisfied Policy 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that Respondent registered and uses the <lixil-corp.com> domain name in bad faith by disrupting Complainant’s business and unfairly commercially benefitting from the goodwill associated with Complainant’s LIXIL mark. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). While Complainant provides arguments and evidence that shows Respondent does not actively use the domain name, Complainant also provides a copy of an email allegedly sent by Respondent to Complainant, which shows that Respondent attempted to impersonate Complainant’s employee, Kinya Seto, for unspecified reasons. On this basis, the Panel agrees that Respondent disrupted Complainant’s business and attempted to commercially benefit off Complainant’s mark, and thus finds bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Relatedly, Complainant argues that Respondent uses the <lixil-corp.com> domain name to fraudulently send emails passing off as Complainant to defraud Complainant, its customers, and/or its supply chain. Passing off as a complainant using a confusingly similar domain name through fraudulent email communications can evince bad faith under Policy ¶ 4(a)(iii). See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). As noted previously, Respondent appears to have used the domain name to send an email under the name Kinya Seto, who Complainant alleges is an employee working for Complainant. The Panel agrees that Respondent’s use of the domain name to pass off as Complainant does not amount to good faith use per Policy ¶ 4(a)(iii).
The email correspondence between Laura Betgevergiz and the NAF provides yet another ground to find that the Domain Name was registered in bad faith. For example, the December 28, 2017 email from “Laura Bergevergiz” to the NAF stated: “I received a written notice of complaint for a domain name dispute, and I have no idea what domain name this might be referring to as I don’t own a domain name”. If Laura Betgevergiz did not register the Domain Name, then the true registrant provided false information to the registrar when registering it. This indicates bad faith, See j2 Global Canada, Inc. and Lanslide Technlogies, Inc. v. Vijay S Kumar/Strategic Outsourcing Services Pvt Ltd, Case No. FA1647718 (Forum Jan. 4, 2016) (“False or misleading contact information indicates bad faith registration and use”); Mars, Incorporated v. RaveClub Berlin, Case No. FA97361(Forum Jul 16, 2001) (Providing false registration and contact information for infringing domain names evidenced Respondent’s bad faith).
Finally, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the LIXIL mark at the time of registering the <lixil-corp.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007). Complainant contends that Respondent must have known about Complainant’s rights in the LIXIL mark prior to registering the domain name at issue given the fame of Complainant’s LIXIL mark, Complainant’s long-standing use of the mark, the incorporation of the LIXIL mark in its entirety, Complainant’s international presence in the marketplace, and Respondent’s impersonation of Complainant through email addresses related to the domain name. The Panel agrees with Complainant and finds that Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
Thus, Complainant has also satisfied Policy ¶ (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 <lixil-corp.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: January 25, 2018
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