Lightspeed IP Company, L.L.C. v 丁春梅 (dingchunmei)
WIPO Case No. D2024-4054
•16-04-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Lightspeed IP Company, L.L.C. v. 丁春梅 (dingchunmei)
Case No. D2024-4054
1. The Parties
The Complainant is Lightspeed IP Company, L.L.C., United States of America (“United States”), represented by Morrison & Foerster, LLP, United States.
The Respondent is 丁春梅 (dingchunmei), China.
2. The Domain Name and Registrar
The disputed domain name <lightspeed.asia> is registered with DNSPod, Inc. (the “Registrar”).
3. Procedural History
| 2, 2024. On October 3, 2024, the Center transmitted by email to the Registrar a request for registrar | The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October registrant and contact information disclosed by the Registrar, and inviting the former Complainant to submit an amendment to the Complaint. The former Complainant filed an amendment to the Complaint in English on October 21, 2024. |
| On October 10, 2024, the Center informed the Parties in Chinese and English, that the language of the Complainant submitted the Complaint translated into Chinese but further requested English to be the language of the proceeding on October 22, 2024. The Respondent did not submit any comment on the former Complainant’s submission. | |
| The Center verified that the Complaint together with the amendment to 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”). |
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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the The former Complainant requested suspension of the proceedings by email on November 5, 2024, and the proceedings were suspended until March 5, 2025. Since the Parties could not reach a settlement, the proceedings were reinstituted on March 5, 2025 as per the former Complainant’s request and the due date for Response was March 10, 2025. The Respondent did not submit any formal Response.
Complaint, and the proceedings commenced on October 23, 2024. In accordance with the Rules, paragraph
5, the due date for Response was November 12, 2024. The Respondent sent email communications to the
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on March 19, 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.
On April 4, 2025, the Panel issued the Procedural Order No.1 in Chinese and English, essentially stating that the ownership information, as reflected in the official trademark registry, of the trademark registrations relied upon by the former Complainant does not correspond to the information listed in the Complaint. The Panel also noted that the former Complainant had not proactively provided any information of trademark
assignment in this proceeding. The former Complainant was allowed until April 9, 2025 to submit further
information clarifying its relation with the current owner of those trademark registrations.
On April 9, 2025, the former Complainant filed its Response to the Procedural Order No.1 in English, requesting that Lightspeed IP Company, L.L.C. be substituted as the Complainant in this proceeding, since on November 22, 2024, the former Complainant Lightspeed Management Company, L.L.C. had transferred all worldwide trademark registrations in its name to Lightspeed IP Company, L.L.C. as part of a plan to maintain all company intellectual property in a separate IP holding company.
4. Factual Background
The former Complainant is a global venture capital firm focusing on seed stage, early stage, and growth stage investments in the enterprise, fintech, consumer and healthcare sectors. The former Complainant has eleven offices globally and, as of 2023, had approximately USD 25 billion in assets under management. The former Complainant claims that it has used the LIGHTSPEED trademark in connection with its services at least as early as 2000.
The Complainant owns the mark LIGHTSPEED (and variations thereon), including but not limited to the following trademark registrations: United States Trademark Registration number 3,738,247 for LIGHTSPEED, registration date January 12, 2010; United States Trademark Registration number 7,279,768 for LIGHTSPEED ASIA, registration date January 16, 2024; and United States Trademark Registration number 6,231,098 for L LIGHTSPEED with design, registration date December 29, 2020. The trademarks were registered by the former Complainant and assigned to LIGHTSPEED IP COMPANY, L.L.C.
The disputed domain name was registered on April 12, 2024 and is therefore of a later date than the abovementioned trademarks. The former Complainant submits evidence that the disputed domain name has only directed to an inactive, blank webpage.
5. Parties’ Contentions
A. Complainant
The former Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
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Notably, the former Complainant contends that the disputed domain name is identical to its registered trademarks as it incorporates the LIGHTSPEED mark entirely with no additional matter. The former Complainant also states that the Respondent has no rights or legitimate interests in respect of the disputed domain name: the Respondent is not a licensee of the former Complainant, and the former Complainant has not given the Respondent any right or permission to register the trademark as a domain name, nor is there any evidence that the Respondent has been commonly known by the disputed domain name, the Respondent has not used, or prepared to use, the disputed domain name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair purpose. As to registration in bad faith of the disputed domain name, the former Complainant essentially contends that the identical use of LIGHTSPEED and LIGHTSPEED ASIA marks in the disputed domain name, as well as its long-term prior use of the LIGHTSPEED mark, shows that the Respondent had actual knowledge of its rights in the mark. In addition, the former Complainant stresses that the disputed domain name directs to an inactive website. As per the use of the disputed domain name, the passive holding of the disputed domain name by the Respondent constitutes bad faith.
The former Complainant requests the transfer of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions. On October 29, 2024, the Respondent stated that “[w]e don't need this domain anymore, you can take it back”.
6. Discussion and Findings
6.1 First Preliminary Issue: Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
The Complaint was filed in English. On October 18, 2024, the former Complainant submitted the Complaint
translated into Chinese but further requested English to be the language of the proceeding on October 22,
2024.
The Respondent did not make any specific submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).
The Panel has considered all facts in this regard and notes particularly the following elements: the in either Chinese or English but chose not to respond or cooperate in this case; and, the Respondent sent two bilingual emails (in both Chinese and English) regarding a potential settlement of this proceeding on October 29, 2024, from which the Panel concludes that the Respondent has a sufficient understanding of English for the purposes of this proceeding. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2 Second Preliminary Issue: Substitution of the Complainant
The Complaint was originally filed by Lightspeed Management Company, L.L.C. as the former Complainant.
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However, following the initiation of this proceeding, the Panel noticed that the registration information for the trademark registrations had changed and therefore issued Procedural Order No. 1, as explained above. In its Response to the Procedural Order No.1, as discussed above, the former Complainant requested substitution by Lightspeed IP Company, L.L.C., which maintains the same ownership as itself.
The Panel considers that the assignment of the relevant trademark rights to Lightspeed IP Company, L.L.C. post-dates the filing of the Complaint and that Lightspeed IP Company, L.L.C., which is an entity maintaining the same ownership as the former Complainant, now holds the relevant trademark registrations that form the basis of the Complaint originally filed by the former Complainant. Additionally, the Panel considers that such substitution would be procedurally efficient, would not affect or prejudice the Respondent’s rights or interests and would ensure a swift and equitable outcome, in line with the principles underlying the UDRP system.
Accordingly, the Panel accepts the substitution of Lightspeed IP Company, L.L.C. as the Complainant in this proceeding.
However, the Panel would also remind the former Complainant of its professional obligations to proactively disclose the change in trademark ownership in a timely manner to the Panel. Such information is material to the proceeding and should have been voluntarily and spontaneously submitted to the Center and the Panel without requiring a procedural order. The Panel emphasizes the importance of full and transparent disclosure, especially where standing to bring a complaint is clearly grounded in trademark ownership, and expects parties to proactively update the record in such circumstances to preserve the integrity and efficiency of the administrative process.
Accordingly, the Panel accepts the substitution of Lightspeed IP Company, L.L.C. as the Complainant and proceeds to consider the merits of the Complaint on that basis. Further references to “the Complainant” in this Decision shall therefore be to Lightspeed IP Company, L.L.C..
6.3 Decision on the Merits
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.
The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.
The entirety of the mark LIGHTSPEED is reproduced within the disputed domain name without any additions
or variations. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.
The Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
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proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.
Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.
Furthermore, the Panel notes that the disputed domain name directs to an inactive, blank webpage and that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, nor any credible preparations for that purpose. In this regard, the Panel finds that holding a domain
name passively, without making any use of it, does not confer any rights or legitimate interests in the
disputed domain name on the Respondent (see in this regard earlier UDRP decisions such as Bollore SE v.
赵竹飞 (Zhao Zhu Fei), WIPO Case No. D2020-0691; and Vente-Privee.Com and Vente-Privee.com IP
S.à.r.l. v. 崔郡 (jun cui), WIPO Case No. D2021-1685).
The Panel finds the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
In the present case, the Panel notes that the Respondent has registered a domain name which is identical to the Complainant’s reputable, intensely used and distinctive trademarks for LIGHTSPEED. The Panel concludes from this fact that by registering the disputed domain name, on balance of probabilities, the Respondent deliberately and consciously targeted the Complainant’s prior reputable trademarks. The Panel finds that this creates a presumption of bad faith. In this regard, the Panel refers to the WIPO Overview 3.0, section 3.1.4, which states “[p]anels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” Furthermore, the Panel also notes that the Complainant’s trademarks were registered several years before the registration date of the disputed domain name. The Panel concludes from these elements that the Respondent knew, or at least should have known, of the existence of the Complainant’s LIGHTSPEED trademarks at the time of registering the disputed domain name. In the Panel’s view, these elements indicate bad faith on the part of the Respondent, and the Panel therefore finds that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.
Further, as to use of the disputed domain name in bad faith, panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes
the distinctiveness and intensive use made of the Complainant’s trademark, the composition of the disputed domain name (being identical to the Complainant’s mark), and the unlikelihood of any good faith use of the disputed domain name by the Respondent and finds that, in the circumstances of this case, the passive
holding of the disputed domain name does not prevent a finding of bad faith under the Policy.
The Panel finds that the Complainant has established the third element of 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 <lightspeed.asia> be transferred to the Complainant.
/Deanna Wong Wai Man/
Deanna Wong Wai Man
Sole Panelist
Date: April 16, 2025
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