WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LPG Systems SA v. ProUnits GMbH

Case No. D2021-3837

1. The Parties

The Complainant is LPG Systems SA, France, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is ProUnits GMbH, Switzerland.

2. The Domain Names and Registrar

The disputed domain names <lpg-rus.com>, <lpgrus.com>, and <ruslpg.com> are registered with Regtime Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2021. On November 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 18, 2021, 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.

On November 15, 2021, the Center sent an email communication regarding the language of the proceeding in both Russian and English. On November 25, 2021, the Complainant confirmed its request to proceed in English, and the Respondent did not submit any comments.

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 in both English and Russian, and the proceedings commenced on December 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2022.

The Center appointed Ganna Prokhorova as the sole panelist in this matter on February 2, 2022. 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, LPG Systems SA, is a French manufacturer of massage and beautifying apparatuses operating through effective non-invasive, non-aggressive and natural techniques.

The Complainant owns the “www.lpgsystems.com” website and is the owner of the mark LPG across various jurisdictions, in particular

- a stylized word Trademark LPG, International Registration No. 636962, registered on June 6, 1995, in International Classes 3, 10, 16, 38, 41 and 42, and designated for a variety of countries, including the Russian Federation;
- a combined Trademark LPG, International Registration No. 1388863, registered on December 4, 2017, in International Class 25, and designated for a variety of countries, including the Russian Federation; and;
- a word Trademark LPG, International Registration No. 1452014, registered on December 21, 2018, in International Classes 3, 10, 25, 28 and 44, and designated for a variety of countries, including the Russian Federation.

The Respondent registered the disputed domain names on July 13, 2019. Although at the time of this decision the disputed domain names are inactive, the Complainant submitted evidence showing that previously the disputed domain names resolved to websites in Russian displaying the Complainant’s LPG logo and images of its products, offering counterfeits or unauthorized products.

5. Parties’ Contentions

A. Complainant

The Complainant (“LPG”) is a privately held company with more than 30 years of experience in the health, beauty and wellness industries. Founded in 1986 and headquartered in Valence, France, with subsidiaries in Benelux, Italy, Switzerland, Germany, China, the United Kingdom and Spain, LPG designs and produces professional machines for use in cellular stimulation and the treatment of connective tissue, with unique and patented high-tech technology. LPG has a presence in 110 countries, and has been present in the Russian Federation through local distributors since 1999. Over 200,000 patients are treated globally on a daily basis using its 60,000 specialist machines

The Complainant’s contentions can be summarized as follows.

(1) The Complainant is the owner of numerous trademarks LPG across various jurisdictions. The disputed domain names are confusingly similar to the Complainant’s mark LPG mark, with the mere addition of term “rus” (and a hyphen in <lpg-rus.com>).

(2) The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is neither affiliated with nor has been licensed or permitted to use the LPG mark. Besides, the Respondent is not commonly known by the disputed domain names. The Respondent’s use of the disputed domain names is neither a bona fide offering of goods or services nor legitimate noncommercial or fair use of the disputed domain names.

(3) The Respondent registered and is using the disputed domain names in bad faith. Given the Complainant’s worldwide reputation, the Respondent was aware of the LPG mark prior to registering the disputed domain names. The Respondent’s uses create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain names, and the Respondent is thus using the fame of the Complainant’s trademarks to improperly increase traffic to the websites listed at the disputed domain names for the Respondent’s own commercial gain. Furthermore, the number of the disputed domain names registered by the Respondent demonstrates that the Respondent is engaging in a pattern of cybersquatting, which is further evidence of bad faith registration and use.

The Complainant seeks a decision that the disputed domain names be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

6.1. Procedural issue – Language of the proceeding

According to the information provided by the Registrar, the language of the Registration Agreement for the disputed domain names is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Complainant respectfully requests that the language of proceedings be English. It submits that:

- the Complainant is unable to communicate in Russian and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter;

- such additional delay, considering the obviously abusive nature of the disputed domain names and their websites poses continuing risk to the Complainant and unsuspecting consumers seeking the Complainant or its products;

- the disputed domain names are comprised of Latin characters;

- the term “lpg”, which is the dominant portion of the disputed domain names, does not carry any specific meaning in the Russian language; andpursuant to paragraph 11(a) of the Rules, the Panel may determine the language of the proceedings having regard to all circumstances, and to help ensure fairness, and maintain an inexpensive and expeditious avenue for resolving domain disputes.

The Center has sent all its communications to the Respondent of the disputed domain names in both English and Russian, and invited to express the Respondent’s view on the language of the proceeding. The Respondent has not submitted any Responses or any objections to the Complainant’s request that the proceedings be held in English. This satisfies the Panel that the Respondent would not be disadvantaged if the language of the proceeding is English, and that using the English language in this proceeding would be fair and efficient.

6.2 Substantive issues

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the disputed domain name. As the UDRP proceedings are administrative, the standard of proof is the balance of probabilities.

To succeed in a UDRP complaint, the Complainant has to demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, namely:

(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.

The Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint.

However, even if the Respondent has not replied to the Complainant’s contentions, the Complainant still bears the burden of proving that all these requirements are fulfilled. Concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.

A. Identical or Confusingly Similar

According to paragraph 4(a)(i) of the Policy it should be established that the disputed domain names are identical or confusingly similar to a mark in which the Complainant has rights.

The Complainant has demonstrated ownership of its LPG trademarks. Therefore, the Panel is satisfied that the Complainant has registered trademark rights in the LPG mark.

The disputed domain names can be considered as capturing, in its entirety, the Complainant’s LPG trademark and simply adding the term “rus” (a three-letter abbreviation code for “the Russian Federation”) to the trademark. The mere addition of this term to the Complainant’s trademark does not negate the confusing similarity between the disputed domain names and the Complainant’s trademark under paragraph 4(a)(i) of the Policy and, therefore, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s trademark. It is well established that the addition of descriptive terms is not sufficient to overcome a finding of confusing similarity. See WIPO Overview 3.0, section 1.8.

The Respondent’s addition of a hyphen in the disputed domain name <lpg-rus.com> does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks. See Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119.

Additionally, the Respondent’s use of the disputed domain names has also being taken into account by this Panel to confirm the confusing similarity. The Respondent is using the disputed domain names to resolve to websites displaying the Complainant’s LPG logo and images of its products, offering counterfeits or unauthorized products, thereby competing with the Complainant’s own offerings. This suggests that the Respondent intended the disputed domain names to be confusingly similar to the Complainant’s trademark as a means of furthering consumer confusion.

Although the content is usually disregarded under the first element of the UDRP, this Panel has taken note of the content of the websites associated with the disputed domain names to confirm confusing similarity where it appears prima facie that the Respondent seeks to target a trademark through the disputed domain names. As a result, the Respondent’s use of the disputed domain names to resolve to websites displaying the Complainant’s logo and offering unauthorized LPG services is further evidence that the disputed domain names are confusingly similar to the Complainant’s trademark. See WIPO Overview 3.0, section 1.15.

Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant's trademark and that the requirement of paragraph 4(a)(i) of the Policy is met in this case.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant has not authorized the use of its mark. The Respondent is not sponsored by or affiliated with the Complainant in any way. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the disputed domain names.

Furthermore, the Respondent is not using the disputed domain names for a bona fide offering, nor for a legitimate noncommercial or fair use. Instead, the Panel finds that the Respondent uses the disputed domain names in connection with commercial websites offering unauthorized or counterfeited versions of the Complainant’s products. Past UDRP panels have concluded that a respondent’s efforts to sell unauthorized or counterfeit products under the guise of a complainant’s brand, trademarks, and/or logos amounts to neither a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, nor paragraph 4(c)(iii) of the Policy legitimate noncommercial or fair use. See WIPO Overview 3.0, section 2.13.1.

Moreover, the Respondent’s inclusion of the Complainant’s logo on the websites at the disputed domain names is further evidence that the Respondent takes advantage of the fame and goodwill that the Complainant has built in its brand, and the Respondent is not only using the confusingly similar disputed domain names, but is also imitating the Complainant by displaying the Complainant’s logo. This imitation is referred to as “passing off”, and “Respondent, in [also] using [a] confusingly similar domain name to mislead Complainant’s customers, is not making a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use of the domain name pursuant to paragraph 4(c)(iii) of the Policy.” See Houghton Mifflin Co. v. The Weatherman, Inc., WIPO Case No. D2001-0211.

Further, the Respondent is using the disputed domain names to direct Internet users to websites that feature a colour scheme similar to that of the Complainant’s own website as well as copyrighted images of the Complainant’s products. The Respondent has used blue and white used by the Complainant’s in business, as well as the aforementioned images of the Complainant’s branded products, all as a means of deceiving Internet users into believing that the website is associated with the Complainant. Therefore, the Panel agrees that the Respondent’s attempt to pass the disputed domain names off as the Complainant is in itself evidence of the fact that the Respondent does not have rights and legitimate interests in the disputed domain names.

As such the Panel finds that the Complainant has established that the Respondent does not have rights or a legitimate interest in the disputed domain names and that the element under paragraph 4(a)(ii) of the Policy has been established.

C. Registered and Used in Bad Faith

The third element of paragraph 4(a) refers to the question of whether the disputed domain names have been registered and are being used in bad faith by the Respondent.

Here the Panel finds that, by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of services on that website (paragraph 4(b)(iv) of the Policy), which is supported by the following findings.

The Panel repeats its findings that the Respondent creates a likelihood of confusion with the Complainant and its trademarks by registering three domain names that solely consist of the Complainant’s LPG trademark, with the mere addition of the term “rus”, and using their disputed domain names to resolve to websites displaying the Complainant’s logo and images of the Complainant’s products, with the Respondent then attempting to profit from such confusion by offering counterfeit or unauthorized products that compete with the Complainant’s own offerings. As such, the Respondent is attempting to cause consumer confusion in a nefarious attempt to profit from such confusion. The Panel believes that the impression given by the disputed domain names and their websites would cause consumers to believe the Respondent is somehow associated with the Complainant when, in fact, it is not. Therefore, the Respondent’s actions create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain names, and the Respondent is thus using the fame of the Complainant’s trademarks to improperly increase traffic to the websites listed at the disputed domain names for the Respondent’s own commercial gain.

Finally, on balance of the facts set forth above, it is more likely than not that the Respondent knew of and targeted the Complainant’s trademark, and the Respondent should be found to have registered and used the disputed domain names in bad faith.

Moreover, the Panel notes that the disputed domain names are currently inactive as they resolve to parking pages stating that the pages are not working. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In this context, it can be said that the passive holding of the disputed domain names is further evidence of bad faith.

Therefore, the Panel observes the presence of additional factors that also support the finding of bad faith in relation to the passive holding of the disputed domain names. Such factors relate to the degree of distinctiveness and reputation of LPG trademark, and the failure of the Respondent to submit a response (WIPO Overview 3.0, section 3.3).

Consequently, the Panel considers that the disputed domain names were registered and are being used in bad faith. In light of the above, the third element under paragraph 4(a)(iii) of the Policy has been established.

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 names <lpg-rus.com>, <lpgrus.com>, <ruslpg.com> be transferred to the Complainant.

Ganna Prokhorova
Sole Panelist
Date: February 16, 2022