Lampebergerfuel.com, Lampeoil.com

The timeline behind lampebergerfuel.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Lampe Berger, USA, Inc. v. Dot5Hosting, Ltd. Claim Number: FA0308000190508 PARTIES Complainant is Lampe Berger, USA, Inc., Somerset, NJ (“Complainant”) represented by Russel O. Primeaux, of Kean Miller Hawthorne D'Armond McCowan & Jarman, LLP. Respondent is Dot5Hosting Ltd., Waterlooville, Hampshire, Great Britain (“Respondent”). REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <lampebergerfuel.com> and <lampeoil.com>, registered with Enom, Inc. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Hon. Ralph Yachnin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 25, 2003; the Forum received a hard copy of the Complaint on August 26, 2003. On August 26, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain names <lampebergerfuel.com> and <lampeoil.com> are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On September 3, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 23, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@lampebergerfuel.com and postmaster@lampeoil.com by e-mail. Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default. On October 14, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <lampebergerfuel.com> and <lampeoil.com> domain names are confusingly similar to Complainant’s LAMPES BERGER mark. 2. Respondent does not have any rights or legitimate interests in the <lampebergerfuel.com> and <lampeoil.com> domain names. 3. Respondent registered and used the <lampebergerfuel.com> and <lampeoil.com> domain names in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Lampe Berger, USA, Inc., is the owner of the trademark registration for the LAMPES BERGER mark (U.S. Reg. No. 1,898,481, registered on June 13, 1995) and has used that mark since 1967 in connection with the manufacture and sale of perfume diffusers and fragrant liquids used in connection with those perfume diffusers. Complainant notes that the fragrant liquids used in LAMPES BERGER branded diffusers are often referred to as “fuel.” Respondent, Dot5Hosting, Ltd., registered the <lampebergerfuel.com> and <lampeoil.com> domain names on March 3 and March 27, 2003, respectively. Both domain names hosted webpages that purported to sell fragrance “fuels” or “oils” for Complainant’s LAMPE BERGER branded perfume diffusers. On September 3, 2003, Respondent submitted an email which stated that it had actually registered the disputed domain names on behalf of another party, going by the name of D.P. Hulsey. Respondent further contended that it merely registered and provided hosting accounts for the disputed domain names, and was not actually responsible for the content hosted at the disputed domain names. Respondent’s submission indicated that D.P. Hulsey’s account with Respondent was cancelled on or about June 6, 2003. However, as Respondent is listed as the Registrant for both domain names, and as UDRP Rule #1 clearly states that the Respondent in a domain name dispute is “the holder of a domain-name registration against which a complaint is initiated,” the Panel will proceed in this dispute with Dot5Hosting, Ltd. as the proper Respondent. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Complainant has established rights in the LAMPES BERGER mark through registration of the mark with the U.S. Patent and Trademark Office, as well as through widespread and continuous use of the mark in commerce. Respondent’s <lampebergerfuel.com> domain name is confusingly similar to Complainant’s LAMPES BERGER mark. It includes the entirety of Complainant’s registered mark (minus the pluralization of the word LAMPES), and the addition of the word “fuel” adds no further distinctiveness to the domain name as it is a term that describes one of the products provided by Complainant under its mark. See Oki Data Ams., Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (“Neither the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied). Respondent’s <lampeoil.com> domain name is also confusingly similar to Complainant’s mark. As in the domain name discussed above, Respondent has taken a part of Complainant’s mark (the unpluralized portion of the word LAMPE) and added the descriptive term “oil.” Again, Respondent’s addition of a descriptive term to Complainant’s mark is insufficient to distinguish the domain name from Complainant’s LAMPES BERGER mark. See Hammond Suddards Edge v. Westwood Guardian Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the <hammondsuddards.net> domain name is essentially identical to Complainant's HAMMOND SUDDARDS EDGE mark); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business) Accordingly, the Panel finds that the <lampebergerfuel.com> and <lampeoil.com> domain names are confusingly similar to Complainant’s LAMPES BERGER mark under Policy ¶ 4(a)(i). Rights or Legitimate Interests The disputed domain names were used to host webpages that promoted products designed for use in Complainant’s LAMPES BERGER branded perfume diffusers. Complainant also sells these types of “fuels,” and has not licensed or authorized anyone associated with the disputed domain names to use the LAMPES BERGER mark for any commercial purpose. Thus, the commercial activities at the disputed domain names cannot be considered to be a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), and are not noncommercial in nature as described by Policy ¶ 4(c)(iii), making both of these provisions of the Policy inapplicable in this dispute. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract Internet users to its business, which competed with Complainant). As Complainant has not licensed the use of the LAMPES BERGER mark for use at the disputed domain names, and as Respondent has not come forward with any evidence rebutting Complainant’s claim that it is not “commonly known by” the disputed domain names, the Panel is unwilling to find that Policy ¶ 4(c)(ii) applies in this dispute. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"). Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <lampebergerfuel.com> and <lampeoil.com> domain names under Policy ¶ 4(a)(ii). Registration and Use in Bad Faith The disputed domain names were used to sell products that competed with the products supplied by Complainant under the LAMPES BERGER mark. Thus, the operator of the disputed domain names is commercially benefiting from unauthorized use of Complainant’s mark insofar as it is capitalizing on the goodwill that Complainant has built up around that mark. This creation of a likelihood of confusion as to the source of sponsorship of the disputed domain names for commercial gain evidences bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see also Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”). The Panel thus finds that the <lampebergerfuel.com> and <lampeoil.com> domain names were registered and used in bad faith, and that Policy ¶ 4(a)(iii) is satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <lampebergerfuel.com> and <lampeoil.com> domain names be TRANSFERRED from Respondent to Complainant. Hon. Ralph Yachnin Justice, Supreme Court, NY (Ret.) Dated: October 24, 2003 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.