On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 104037
Time of Filing 2021-09-29 09:12:29
Disputed domain name LYONDLELLBASELL.COM
Case Administrator
Name Iveta Špiclová
Complainant
Organization LyondellBasell Industries Holdings B.V.
Authorized Representative
Name Claudio Tamburrino
Respondent
Name Enock Kazige
Other Legal Proceedings
The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.
Identification of rights
The Complainant has submitted evidence, which the Panel accepts, showing that it is the registered owner of the following:

- the US trademark LYONDELLBASELL (registration n°3634012) dated May 7, 2008;

- the US trademark LYONDELLBASELL (registration n°5096173) dated December 6, 2016;

- the EU trademark LYONDELLBASELL (registration n°006943518) dated May 16, 2008;

- the EU trademark LYONDELLBASELL (registration n°013804091) dated March 6, 2015;

- the EU trademark LYONDELL (registration n°001001866) dated November 26, 1998; and

- the IR trademark LYONDELLBASELL (registration n°972681) dated May 5, 2008.


Moreover, the Complainant is also the owner of the domain names bearing the signs “LYONDELLBASELL” and “LYONDELL” such as the domain names <lyondellbasell.com>, <lyondell.com>.
Factual Background
The Complainant, LyondellBasell Industries Holdings B.V. is a multinational chemical company and its roots go back to 1953. The Complainant has more than 13000 employees around the world; manufactures at 55 sites in 17 different countries and its products are sold in 100 countries.

The Complainant holds several trademark registrations for “LYONDLELLBASELL” and “LYONDLELLBASELL” and the Complainant also holds the domain names bearing LYONDLELLBASELL” and “LYONDLELLBASELL”.

On October 6, 2020; the Respondent registered the disputed domain name <lyondlellbasell.com>. The disputed domain name is currently inactive.
 
PARTIES' CONTENTIONS:

COMPLAINANT:

1. THE DISPUTED DOMAIN NAME IS CONFUSINGLY SIMILAR

The disputed domain name is confusingly similar to the Complainant’s well-known and distinctive trademarks “LYONDELLBASELL” and “LYONDELL” as it bears the Complainant’s “LYONDELLBASELL” trademark as a whole with the addition of the letter “L” between “LYOND” and “ELL”.

The Complainant states that the disputed domain name contains an obvious misspelling of the Complainant’s trademark and the present case is a clear example of typosquatting where the disputed domain name is a slight alphabetical variation of the Complainant’s trademark.

The Complainant refers to earlier decisions including Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No.D2001-0015 and Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No.D2002-0760, the top level “.com” is merely instrumental to the use of the Internet so the domain names remain confusingly similar despite their inclusion.


2. NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAME

The Complainant states that the Respondent has no rights on the disputed domain name as the Respondent is not known as the disputed domain name and as the Respondent does not hold any trademark for “LYONDELLBASELL” and “LYONDELL”.

The Complainant also states that the Respondent is neither affiliated nor authorized by the Complainant in any way.

The Complainant also alleges that neither license nor authorization has been granted to the Respondent to use the Complainant’s trademarks “LYONDELLBASELL” and “LYONDELL”.

The Complainant argues that the Respondent is not using the disputed domain name in connection with bona fide offering of goods or services or a legitimate non-commercial or fair use.


3. THE DISPUTED DOMAIN NAME WAS REGISTERED AND IS USED IN BAD FAITH

The Complainant indicates that the Respondent intentionally used a misspelled version of the Complainant’s trademarks in order to create a confusing similarity.

The Complainant argues that “LYONDELLBASELL” trademark consists of a distinctive and fanciful word and the Respondent could not ignore the existence of “LYONDELLBASELL” and “LYONDELL” trademarks belonging to the Complaiant.

The Complainant asserts that considering the well-known status of the Complainant’s trademarks, the Respondent knew about the Complainant and its rights before the registration of the disputed domain name. Accordingly, the disputed domain name was registered and is being used in bad faith.

The Complainant states that the disputed domain name is not being used for any bona fide offering and this fact, not being used of the disputed domain name, alone is sufficient to prove the bad faith of the Respondent according to many WIPO UDRP decisions.

The Complainant alleges that the disputed domain name has not been using by the Respondent and the passive holding of the disputed domain name demonstrates the bad faith of the Respondent.

The Complainant also alleges that the Respondent registered the disputed domain name for scamming purposes. The Complainant argues that the disputed domain name has been used in order to send communications impersonating the Complainant.

Accordingly, the Complainant alleges that the disputed domain name was registered and is being used in bad faith.


RESPONDENT:

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.
Rights
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).
No rights or legitimate interests
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).
Bad faith
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.
Principal Reasons for the Decision
Paragraph 15 of the Rules provides that the Panel is to 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.

In this context, the Panel also notes that the burden of proof is on the Complainant to make out its case and past UDRP panels have consistently said that a Complainant must show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.


For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

A. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

B. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

C. the disputed domain name has been registered and is being used in bad faith.


The Panel will therefore deal with each of these requirements in turn.



A. IDENTICAL OR CONFUSINGLY SIMILAR

The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of registration of “LYONDELLBASELL” and “LYONDELL” trademarks.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s “LYONDELLBASELL” trademark and the addition of the letter “L” is not sufficient to vanish the similarity.

In particular, this case represents a clear example of typo-squatting, where the disputed domain name is one letter less or more than the Complainant's mark.

Moreover, the addition of the gTLD “.COM” is not enough to abolish the similarity.

The Panel is of the opinion that the Internet users will easily fall into false impression that the disputed domain name is an official domain name of the Complainant. The Panel recognizes the Complainant's rights and concludes that the disputed domain name is confusingly similar with the Complainant's trademark. Therefore, the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy is provided.


B. NO 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 domain name.

It is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to the respondent of the dispute, the use or making 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 of the dispute (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent of the dispute is making a legitimate non-commercial or fair use of the domain name, without an intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.


Thus, if the respondent proves any of these elements or indeed anything else that shows that it has a right or legitimate interest in the disputed domain name, the complainant will have failed to discharge its burden of proof and the complaint will fail. The burden is on the complainant to demonstrate a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. Once the complainant has made out a prima facie case, then the respondent may, inter alia, by showing one of the above circumstances, demonstrate rights or legitimate interests in the disputed domain name.

The Complainant contends that the Respondent has nothing to do with the Complainant and any use of the trademarks “LYONDELLBASELL” and “LYONDELL” has to be authorized by the Complainant and there is no such authorization. Moreover, the disputed domain name has no relation with the Respondent and the Respondent is not commonly known as the disputed domain name.

In the absence of a response, the Panel accepts the Complainant’s allegations as true that the Respondent has no authorization to use the Complainant’s trademarks in the disputed domain name.

Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain dame, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.


C. BAD FAITH

The Panel concludes that the Complainant's “LYONDELLBASELL” trademark is of distinctive character. Therefore, the Panel is of the opinion that due to the earlier rights of the Complainant in the “LYONDELLBASELL” and “LYONDELL” trademarks, the Respondent, was aware of the Complainant and its trademarks at the time of registration of the disputed domain name (see e.g., Ebay Inc. v. Wangming, WIPO Case No. D2006-1107). Referring to Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, the Panel believes that the awareness of the Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith registration.

Moreover, the link <lyondlellbasell.com> is currently inactive.

Therefore, in light of the above-mentioned circumstances in the present case, the Panel finds that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.
Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) is (are) to be
LYONDLELLBASELL.COM Transferred to the Complainant
Panellists
Name Mrs Selma Ünlü
Date of Panel Decision 2021-11-12
Publication of the Decision
Publish the Decision