WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lardi Ltd v. Belize Domain WHOIS Service Lt

Case No. D2010-1437

1. The Parties

The Complainant is Lardi Ltd of Lugansk, Ukraine, represented by Oleksandr Kharchenko, Ukraine.

The Respondent is Belize Domain WHOIS Service Lt of Belize, Wisconsin, United States of America.

2. The Domain Name and Registrar

The disputed domain name <larditrans.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2010. On August 26, 2010, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain name. On the same day, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2010.

The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on September 27, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant operates Lardi-Trans.Com, a transport information server encompassing various online services in the field of international cargo transportation by road, at “www.lardi-trans.com”.

The Complainant owns registered trademark rights to LARDI-TRANS and LARDITRANS and claims to have unregistered trademark rights to LARDITRANS.COM.

The Respondent registered the disputed domain name <larditrans.com> on August 23, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it operates Lardi-Trans.Com by its website “www.lardi-trans.com”, a transport information server encompassing various online services in the field of international cargo transportation by road.

In that connection, the Complainant contends that, with the main focus on Ukrainian and Russian markets, it primarily operates as a logistics broker and that its website “www.lardi-trans.com” offers online access to databases listing close to real-time availability of freight carriers and shipments.

Moreover, the Complainant contends that it is a renowned and reputable provider of such services in Ukraine and the Russian Federation.

On the other hand, the Complainant contends that it owns numerous trademark registrations for LARDI-TRANS and LARDITRANS. Particularly, the Complainant contends that it owns Ukrainian registrations for LARDI-TRANS, Reg. Nos. No. 94874 and 120885, filed on November 27, 2006 and July 4, 2008, respectively; Ukrainian registration for LARDITRANS, Reg. No. 108712, filed on January 23, 2008; and a Russian registration for LARDI-TRANS, Reg. No. 411654, filed on 24 July, 2008.

Moreover, the Complainant acknowledges that the Respondent registered the disputed domain name <larditrans.com> before the Complainant acquired registered trademark rights in the trademarks LARDITRANS and LARDI-TRANS.

In that connection, the Complainant contends that notwithstanding the date on which it acquired registered trademark rights, it owns unregistered trademark rights on LARDITRANS.COM since 2001 when it registered and started offering services through the website associated to the domain name <lardi-trans.com>.

In that regard, the Complainant contends that the name Lardi-Trans.com appears on the Complainant’s website “www.lardi-trans.com” since it was first launched in 2001 and that, therefore, the Complainant has acquired unregistered trademark rights in LARDI-TRANS.COM which acquired “secondary meaning” associated with the services offered by the Complainant before the Respondent registered the disputed domain name <larditrans.com>.

Moreover, the Complainant contends that by the time the Respondent registered the disputed domain name <larditrans.com> in August 2005, monthly audience of the Complainant’s website already reached over 100,000 unique visitors.

In addition, the Complainant contends that it has registered and uses several other gTLDs and ccTLDs containing “larditrans” or “lardi-trans”, with most of them resolving to its website “www.lardi-trans.com”.

For the above, the Complainant contends that the disputed domain name <larditrans.com> is confusingly similar to marks in which the Complainant has rights.

Moreover, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

In that connection, the Complainant contends that the Respondent does not own registered or unregistered trademark rights for marks corresponding to the disputed domain name; that the Respondent is neither associated nor affiliated with the Complainant in any way, nor has it been licensed to use in any manner any of the Complainant’s marks; that the Respondent is not commonly known by the domain name; and that the Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services as the disputed domain name resolves to a website only containing sponsored links.

What is more, the Complainant also contends that the Respondent is not making a noncommercial or fair use of the disputed domain name as the Respondent is using the disputed domain name with intent for commercial gain to misleadingly divert consumers to other online location offering sponsored results.

On the other hand, the Complainant contends that the Respondent was aware of the Complainant’s mark and website when the disputed domain name was registered, and that the aim of the registration was to prevent the Complainant from reflecting its mark in the disputed domain name and to take advantage of the confusion between the disputed domain name and the Complainant’s mark.

Moreover, the Complainant contends that the disputed domain name resolves to a website containing pay-per-click links, which means that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website and other online locations, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

What is more, the Complainant contends that the Respondent has been involved as a respondent in numerous others UDRP cases, with mostly similar circumstances.

For all the above, the Complainant requests that the disputed domain name <larditrans.com> be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

For the Complaint to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has filed relevant evidence showing that it owns Ukrainian trademark registrations for LARDITRANS and LARDI-TRANS.

Moreover, the Complainant alleges that it owns unregistered trademark rights in LARDITRANS.COM. Such rights would arise from the use of LARDITRANS.COM since 2001 as a trademark.

It has become generally accepted under the Policy that in order to show trademark rights over a name that has not been registered as a trademark, the complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction¹.

In line with the above, the Panel finds that the Complainant has presented relevant evidence to the Panel’s satisfaction showing that the Complainant has used the name LARDITRANS.COM as a trademark identifying the goods and services offered by the Complainant and, therefore, it constitutes an unregistered trademark in which the Complainant has rights in the terms of the Policy. Moreover, the Panel finds that the most distinctive term in LARDITRANS.COM is “larditrans”.

In view of the foregoing, the Panel finds that the disputed domain name <larditrans.com> is confusingly similar to trademarks in which the Complainant has rights, and therefore, the Complainant has succeeded on this first element under the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the Policy, the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in its paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.

Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a clear prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of producing evidence rebutting such case then shifts to the respondent.

The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s prima facie case.

Furthermore, the Complainant has submitted relevant evidence showing that the only content of the website to which the disputed domain name resolves are pay-per-click links that redirect Internet users to other online locations.

While a website containing pay-per-click links does not per se constitute any illegitimate or illegal activity, the Panel finds that in the circumstances of the present case, the Respondent is not making a bona fide offering of goods or services and that such use does not appear to be a fair use of the disputed domain name.

Moreover, the Panel finds that the Respondent is trying to misleadingly divert consumers to the website to which the disputed domain name resolves and that the Respondent is attracting Internet users to its website for commercial gain. Such use cannot be considered a bona fide use, nor a fair or noncommercial use.

Additionally, there is no evidence that the Respondent is commonly known as or identified by “Larditrans” or that it has any right in it. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.

For these reasons, and in the absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the disputed domain name has been registered and is being used in bad faith.

The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.

The Complainant has proved to the Panel’s satisfaction that it owns registered trademark rights in LARDITRANS and LARDI-TRANS, but as acknowledged by the Complainant, said rights have arisen after the Respondent registered the disputed domain name, which could preclude the finding of bad faith registration on their basis.

On the other hand, the Complainant has proved to the Panel’s satisfaction that it owns unregistered trademark rights in LARDITRANS.COM since 2001. In that connection, the Complainant has proved to the Panel’s satisfaction that LARDITRANS.COM has been used since 2001 as part of its website².

Furthermore, the Complainant has proved to the Panel’s satisfaction that on January 11, 2001 it registered the domain name <lardi-trans.com> through which it has been offering its services at least from March 8, 2001 (date in which it first uploaded content to the website “www.lardi-trans.com”).

What is more, the Complainant has proved to the Panel’s satisfaction that by the time the Respondent registered the disputed domain name <larditrans.com>, the Complainant’s website “www.lardi-trans.com” had more than 100,000 Internet visitors per month.

In view of the foregoing, and in the absence of a rebuttal from the Respondent, the Panel finds that the Respondent was aware or must have been aware of the trademark LARDITRANS.COM before registering the disputed domain name <larditrans.com>, which evidences bad faith registration.

Moreover, as stated by the Complainant and on the basis of the printouts of the website to which the disputed domain name resolves³, and in the absence of a rebuttal by the Respondent, the Panel finds that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online locations, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement.

For these reasons, the Panel finds that the Respondent both registered and is using the disputed domain name in bad faith and that the Complainant has therefore made out the third element of it case.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <larditrans.com> be transferred to the Complainant.

Miguel B. O'Farrell
Sole Panelist
Dated: October 7, 2010

¹ WIPO Overview of WIPO Panel Views on Selected UDRP Questions, question 1.7.

² See “www.lardi-trans.com/old_v1/” and “www.lardi-trans.com/old_v2/”

³ The website contains pay-per-click links that redirect Internet users to other online locations.