WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lanxess Deutschland GmbH v. David Larson

Case No. D2019-3149

1. The Parties

The Complainant is Lanxess Deutschland GmbH, Germany, represented by Wolpert Rechsanwälte, Germany.

The Respondent is David Larson, United States of America.

2. The Domain Name and Registrar

The disputed domain name <laanxess.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2019. On December 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2019, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2020.

The Center appointed Alan L. Limbury as the sole panelist in this matter on January 22, 2020. 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 is the registrant of the European Union Trademark LANXESS, registered on June 26, 2005, No. 003696581 in classes 1, 2, 4, and 17 for products such as chemicals. It is also the registrant of the European Union Trademark LANXESS, registered on February 13, 2009, No. 006596514 in classes 16, 18, 21, 24, 25, 28, 35, 37, 38, 41, 42, 43, and 45.

The disputed domain name <laanxess.com> was registered by the Respondent on December 8, 2019. It does not resolve to an active website. On December 10, 2019, the domain name was used to send an email to a customer of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant says the disputed domain name is confusingly similar to the Complainant’s LANXESS trademark and the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.

As to legitimacy, the Complainant says the Respondent is not commonly known by the domain name; has no trademark rights regarding “laanxess”; and uses the disputed domain name in the field of interest of the Complainant to appear to be the Complainant itself.

As to bad faith, the Complainant says the Respondent is using the domain name to give the impression that it is the Complainant, by sending, in the name of a genuine employee of the Complainant, emails from the disputed domain name to customers of the Complainant falsely stating that the Complainant’s bank account has been closed, giving details of a different bank account and attaching “an amended invoice”, designed to induce the customers to pay money intended for the Complainant into the Respondent’s bank account.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, to obtain transfer of the domain name, the Complainant must prove the following three elements:

(i) the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(iii) the Respondent has registered the domain name and is using it in bad faith.

Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

No Response

A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.

A. Identical or Confusingly Similar

The Complainant has shown, by annexing copies of the relevant registration certificates, that it has rights in its registered European Union Trademarks LANXESS.

In determining confusing similarity, evidence of actual confusion is not required. The test is an objective one, confined to a comparison of the domain name and the trademark alone, independent of the products or services for which the domain name may be used, or other marketing and use factors usually considered in trademark infringement (see Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000‑1698; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327). Confusion in this context, in the sense of bewilderment or failing to distinguish between things, may be regarded as a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: “Is it likely that, because of the similarity between the domain name on the one hand and the Complainant’s trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?”: SANOFI-AVENTIS v. Jason Trevenio, WIPO Case No. D2007‑0648.

Disregarding the generic Top-Level Domain (“gTLD”) suffix “.com”, which is generally regarded as irrelevant for the purpose of determining whether the domain name is identical or confusingly similar, the disputed domain name <laanxess.com> differs from the Complainant’s mark only by the additional letter “a”. This is insufficient to distinguish the domain name from the mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 1.9: “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.” And see Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073, <humanna.com>.

The Panel finds the disputed domain name to be confusingly similar to the Complainant’s mark.

The Complainant has established this element.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

The Complainant has produced evidence of the Respondent having used the domain name to impersonate the Complainant. This, together with the Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show that he does have rights or legitimate interests in the domain name. See Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753. The Respondent has made no attempt to do so.

According to the WIPO Overview 3.0 , paragraph 2.13.1 : “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”

In the circumstances of this case, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.

The Complainant has established this element.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides examples of circumstances, in particular but without limitation, which shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

Here the Complainant has produced evidence that, two days after registering the domain name, the Respondent, masquerading as an employee of the Complainant, sent an email to a customer of the Complainant, seeking payment into the Respondent’s bank account of money intended for the Complainant. Hence it is clear to the Panel that the Respondent registered the disputed domain name with the Complainant and its trademark in mind and has used the disputed domain name with intent to defraud the Complainant. This case is on all fours with Arla Foods Amba v. Michael Guthrie, M. Guthrie Building Solutions, WIPO Case No. D2016-2213, <arlarfoods.com>. The words of the learned panelist in that case are apposite here:

“the Respondent plainly was aware of the Complainant’s marks when registering the disputed domain name. In the absence of any explanation from the Respondent, the Panel concludes that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights, by creating a likelihood of confusion with the Complainant’s mark with the intent to unlawfully profit therefrom.”

In the circumstances of this case, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

The Complainant has established this element.

7. Decision

For 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 <laanxess.com> be transferred to the Complainant.

Alan L. Limbury
Sole Panelist
Date: January 27, 2020