Decision for dispute CAC-UDRP-108645

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

The Complainant bases its Complaint, among others, on the following trademarks:

• International trademark registration “LOVABLE”, no. 1240775, registered on 19 January 2015, for goods and services in classes 14, 18, 25, 35;
• International trademark registration “LOVABLE”, no. 1249885, registered on 30 April 2015, for goods in class 25.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain names should be transferred to it.

The Complainant's contentions are the following:

The disputed domain names <lovablestore.shop>, <lovablefashion.shop>, <lovablestylestore.shop> and <shoplovable.shop> are confusingly similar to the Complainant's trademark LOVABLE, that the Respondents lack rights or legitimate interests in the disputed domain names for a number of reasons and that the disputed domain names were registered and are being used in bad faith.

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are 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).

The Complainant has, to the satisfaction of the Panel, shown the Respondents to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

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.

1. Confusing Similarity

 The Panel agrees that the disputed domain names <lovablestore.shop>, <lovablefashion.shop>, <lovablestylestore.shop> and <shoplovable.shop> are confusingly similar to the Complainant's trademark LOVABLE, as the Complainant’s trademark LOVABLE is included in its entirety in all four disputed domain names.

The addition of the terms "store" within the disputed domain name <lovablestore.shop>, "fashion” within the disputed domain name <lovablefashion.shop>, “style” and “store” within the disputed domain name <lovablestylestore.shop>, and "shop" within the disputed domain name <shoplovable.shop> is not sufficient to escape the finding that the disputed domain names are confusingly similar to the Complainant’s LOVABLE trademark and it does not change the overall impression of the designations as being connected to the trademark LOVABLE. WIPO Overview 3.1, section 1.7.

 Moreover, the extension “.shop” is not to be taken into consideration when examining the similarity between the Complainant’s trademark and the disputed domain names (WIPO Case No. D2005-0016, Accor v. Noldc Inc.). The mere adjunction of a generic Top-Level Domain (“gTLD”)  such as “.shop” is irrelevant as it is well established that the generic Top Level Domain is insufficient to avoid a finding of confusing similarity (WIPO Case No. 2013-0820, L’Oréal v Tina Smith, WIPO Case No. D2008-0820 Titoni AG v Runxin Wang and WIPO Case No. D2009-0877, Alstom v. Itete Peru S.A.).

 Therefore, the Panel is satisfied that the first condition under the Policy is met.

2. Lack of Respondent's rights or legitimate interests

The Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden of proof shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy.

 Based on the available evidence, the Respondents do not appear to be known by the disputed domain names as such are not identified in the WHOIS database as the disputed domain names or by the terms “lovable”, “lovablestore”, “lovablefashion”, “lovablestylestore” nor “shoplovable”. The Complainant has never authorised the Respondents to make use of its trademark, nor of a confusingly similar trademark in the disputed domain names.

 Moreover, based on the available evidence, the Respondents are not affiliated with the Complainant, do not carry out any activity for the Complainant, nor have any business with the Complainant.

 Furthermore, all four disputed domain names which incorporate entirely the Complainant’s trademark LOVABLE with the addition of terms which as descriptive for the Complainant’s business, namely "store" within the disputed domain name <lovablestore.shop>, "fashion” within the disputed domain name <lovablefashion.shop>, “style” and “store” within the disputed domain name <lovablestylestore.shop>, and "shop" within the disputed domain name <shoplovable.shop>, resolve to the same website displaying the Complainant’s logo and offering LOVABLE branded products, creating thus the impression of being affiliated with, authorised by, or endorsed by the Complainant in relation to its LOVABLE brand and products, without disclosing in a clear and prominent manner the lack of relationship with the Complainant.

The above does not amount to a bona fide offering of goods or services, or to a legitimate noncommercial or fair use of the disputed domain names.

The Panel notes that the Respondents had an opportunity to comment on the Complaint’s allegations by filing a Response, which the Respondents failed to do.

Thus, the Panel is satisfied that the Complainant has at least established a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names. Accordingly, the Panel takes the view that also the second requirement under the Policy is met. 

3. Bad Faith

Based on the available evidence, the Complainant's LOVABLE mark predates the registration date of all four disputed domain names. Thus, the Respondents have chosen to register the disputed domain names incorporating the Complainant’s trademark LOVABLE entirely with the addition of descriptive terms for the Complainant’s business, in order to create a confusion with such trademark. Therefore, the Panel concludes that at the time of registration of the disputed domain name, the Respondents were well aware of the Complainant’s LOVABLE trademark and have intentionally registered the disputed domain names in order to create confusion with such trademark.

In the present case, the following factors should be considered:

(i) the Complainant's LOVABLE mark predates the registration date of the disputed domain names;

(ii) the Respondents failed to submit any response and have not provided any evidence of actual or contemplated good faith use of the disputed domain names;

(iii) the Respondents registered the disputed domain names incorporating entirely the Complainant’s trademark LOVABLE, with the addition of descriptive terms for the Complainant’s business;

(iv) the Respondents were not authorised to use domain names similar to the Complainant's LOVABLE trademark;

(v) the disputed domain names resolved to the same website, displaying the Complainant’s logo and offering LOVABLE branded products, without disclosing in a clear and prominent manner the lack of relationship with the Complainant.

 In light of the foregoing, the Panel concludes that the Respondents have registered and have been using the disputed domain names in bad faith. Thus, also the third and last condition under the Policy is satisfied.