Lamps Plus, Inc. v DODSONCLAYTON

WIPO Case No. D2025-0790

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Lamps Plus, Inc. v. DODSONCLAYTON

Case No. D2025-0790

1. The Parties

The Complainant is Lamps Plus, Inc., United States of America (“United States”), represented by

Sheppard, Mullin, Richter & Hampton, United States.

The Respondent is DODSONCLAYTON, United States.

2. The Domain Name and Registrar

The disputed domain name <eurodesignlightinghub.shop> 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 February 25,
2025. On February 26, 2025, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. The next day, the Registrar transmitted by email
to the Center its verification response disclosing registrant and contact information for the disputed domain
name which differed from the named Respondent (Domain Admin, Privacy Protect, LLC (PrivacyProtect.org))
and contact information in the Complaint. The Center sent an email communication to the Complainant on
the same day, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on

March 3, 2025.

The Center verified that the Complaint together with the amended 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 March 6, 2025. In accordance with the Rules, paragraph 5,
the due date for Response was March 26, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on April 1, 2025.

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The Center appointed Evan D. Brown as the sole panelist in this matter on April 2, 2025. 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 in the business of providing lighting products and related retail services. It owns the trademarks POSSINI EURO DESIGN and EURO STYLE LIGHTING, for which it has obtained registration in the United States. Specifically, the mark POSSINI EURO DESIGN is registered under United States Reg. No. 5,605,588, with a registration date of November 13, 2018, and the mark EURO STYLE LIGHTING is registered under United States Reg. No. 3,724,006, with a registration date of December 8, 2009.

According to the WhoIs records, the disputed domain name was registered on July 22, 2024. The operator or indicating that it is unaffiliated with the Complainant.
Respondent has used the disputed domain name to establish a website that prominently features the

Complainant’s POSSINI EURO DESIGN mark and copyrighted product photographs, without authorization.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

To prevail, the Complainant must prove each of the three elements set out in paragraph 4(a) of the Policy: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the

disputed domain name; and (iii) that the disputed domain name has been registered and is being used in

bad faith.

A. Confusing Similarity

This first element of the Policy serves primarily as a standing requirement. As set out in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. The objective of this comparison is to assess whether the disputed domain name contains a trademark in which the complainant has rights and whether the trademark is recognizable in the domain name.

The Complainant has demonstrated that it owns registered rights in the marks POSSINI EURO DESIGN mark POSSINI EURO DESIGN, and the EURO STYLE LIGHTING mark is registered on the Supplemental

(United States Reg. No. 5,605,588) and EURO STYLE LIGHTING (United States Reg. No. 3,724,006).

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Register, disclaiming the term “lighting”. These circumstances limit the automatic presumption of distinctiveness that normally attaches to registrations on the Principal Register.

Under section 1.2.3 of the WIPO Overview 3.0, “if the similar elements of the domain name are made up exclusively of disclaimed terms, trademark rights under the Policy may not be found unless the complainant can show sufficient secondary meaning in the disclaimed terms”. Prior WIPO panels have noted that the presumptions which arise from registration on the Principal Register are not available to registrations on the Supplemental Register. See, e.g., Oil Changer, Inc. v. Name Administration, Inc., WIPO Case No. D2005-0530.

Nevertheless, the Complainant also asserts common law rights in both marks and has argued extensive use, substantial advertising expenditures, and broad public recognition of its branding. The Complainant points to features of its products in widely viewed television series such as Dead to Me (Netflix), in addition to

significant commercial distribution and customer recognition across both online and brick-and-mortar retail

channels.

The Panel finds that this evidence is sufficient to support a finding of acquired distinctiveness and
accompanying common law rights in the disclaimed and descriptive components of the marks for the
purposes of the Policy. The Panel also notes that the Respondent’s use of the Complainant’s trademarks
and original product imagery without authorization appears calculated to capitalize on the Complainant’s
goodwill. This further supports an inference of secondary meaning. Prior panels have followed the idea,
recognized under United States trademark law, that the knowing or intentional copying of another’s symbol
may constitute evidence of secondary meaning. See Rockstar Games v. Steve Twining, WIPO Case

No. D2007-0497, citing 2 McCarthy §15:38; see also WIPO Overview 3.0, section 1.3.

Accordingly, the Panel finds that the Complainant has demonstrated trademark rights for purposes of the
Policy.

Turning to the issue of similarity, the disputed domain name incorporates recognizable elements of the Complainant’s marks. Specifically, it includes the terms “euro” and “design” from the POSSINI EURO DESIGN mark and “euro” and “lighting” from EURO STYLE LIGHTING. The Panel finds persuasive the

decision in VF Corporation v. Vogt Debra, WIPO Case No. D2016-2650, in which the domain name
<bagpakonline.com> was found to be confusingly similar to the mark EASTPAK.

As set forth in section 1.8 of the WIPO Overview 3.0, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” The addition of descriptive terms such as “hub” does not prevent a finding of confusing similarity.

Additionally, in accordance with section 1.11.1 of the WIPO Overview 3.0, the applicable generic Top-Level Domain (gTLD) “.shop” is typically disregarded when assessing confusing similarity under the first element.

The overall commercial impression created by the disputed domain name strongly suggests a connection to the Complainant’s branding. This is particularly so where, as here, the disputed domain name is used in connection with a website that mimics the Complainant’s sale of its products. Panels have taken note of the content of the website associated with a disputed domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name. See WIPO Overview 3.0, section 1.15.

In view of the foregoing, the Panel concludes that the Complainant has satisfied the first element under paragraph 4(a)(i) of the Policy.

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B. Rights or Legitimate Interests

The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondent (with the burden of proof always remaining with the Complainant). See WIPO Overview 3.0, section 2.1; AXA SA v. Huade Wang, WIPO Case No. D2022-1289.

In this case, the Complainant has submitted evidence that the Respondent lacks rights or legitimate interests in the disputed domain name. Specifically, (1) the Respondent is not affiliated with the Complainant in any way and is not a licensee or authorized distributor of the Complainant’s products; (2) the Respondent is not commonly known by the name reflected in the disputed domain name, nor is there any indication that it has ever been known by such a name; (3) there is no suggestion in the record that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services; and (4) there is likewise no indication that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.

To the contrary, the record shows that the Respondent has used the disputed domain name to operate a website that offers for sale products purporting to be those of the Complainant, at discounted prices. The website prominently features the Complainant’s POSSINI EURO DESIGN trademark and uses the

Complainant’s copyrighted product photographs without authorization, clearly intending to mimic the look and feel of the Complainant’s legitimate website. This deceptive use trades on the goodwill associated with the Complainant’s marks and gives the false impression that the Respondent is affiliated with, or endorsed by, the Complainant. Such conduct does not constitute a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use under the Policy.

The use of a domain name to impersonate a trademark owner, particularly by copying protected branding materials, is inherently misleading and unlawful. As panels have consistently held, such use can never establish rights or legitimate interests. See Société des Produits Nestlé S.A. v. Great Homes, jobs- nestle.com, WIPO Case No. D2024-2911; WIPO Overview 3.0, section 2.13.1.

On this basis, the Panel finds that the Complainant has established the second element under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

To satisfy the third element, the Complainant must show that the disputed domain name was registered and is being used in bad faith.

The Respondent’s conduct demonstrates that it was well aware of the Complainant’s marks at the time of registration. The use of the Complainant’s protected images and marks to populate a misleading website, which falsely suggests affiliation with or authorization by the Complainant, establishes that the disputed

domain name was registered with the Complainant’s business in mind. This constitutes targeting and bad
faith registration.

The Respondent has used the domain name intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the site. This fits squarely within the definition of bad faith use set out in paragraph 4(b)(iv) of the Policy.

Accordingly, the Panel finds that the Complainant has satisfied the third element under the Policy.

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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 <eurodesignlightinghub.shop> be transferred to the Complainant.

/Evan D. Brown/
Evan D. Brown
Sole Panelist
Date: April 15, 2025