Live fast Die Young Clothing GmbH v Aamir Ali

WIPO Case No. D2023-0501

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Live fast Die Young Clothing GmbH v. Aamir Ali

Case No. D2023-0501

1. The Parties

The Complainant is Live fast Die Young Clothing GmbH, Germany, represented by Osborne Clarke

Rechtsanwälte Steuerberater Partnerschaft mbB, Germany.

The Respondent is Aamir Ali, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <lfdyhoodie.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2023.
On February 2, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On February 2, 2023, 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 (Privacy service provided by Withheld for Privacy ehf) and
contact information in the Complaint. The Center sent an email communication to the Complainant on
February 7, 2023, 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 amendment to the

Complaint on February 7, 2023.

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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on March 1, 2023. In accordance with the Rules, paragraph 5,
the due date for Response was March 21, 2023. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 23, 2023.

The Center appointed Zoltán Takács as the sole panelist in this matter on March 30, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of

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Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant, founded in 2012 is a German manufacturer and distributor of clothing and street wear.

The Complainant’s products are available at its physical stores in Amsterdam, Berlin, Cologne, Dusseldorf,
Hamburg and Munich and all over the world via its online shop.

The Complainant is among others owner of the German Trademark Registration No. 302014034874 for the figurative mark LFDY, registered since August 14, 2014 for variety of clothing articles and services related to clothing.

The Complainant owns the domain name <livefastdieyoung.com>, which was registered on September 8,
2009 and resolves to its corporate website and official online shop.

The disputed domain name was registered on June 15, 2022 and has been resolving to a website that copies the Complainant’s trademarks and images and purports to sell the Complainant’s products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name, which incorporates the entirety of its LFDY trademark is confusingly similar to it because addition of the term “hoodie” to the trademark does not sufficiently distinguish the disputed domain name from the trademark.

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed
domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the
Policy.

The Complainant contends that the Respondent has registered and is using the disputed domain in bad faith. The Respondent’s use of its trademarks and images on the website at the disputed domain name shows the Respondent’s intent to mislead consumers into believing that it is a website operated or

authorized by the Complainant.

The Complainant requests that the disputed domain name be transferred from the Respondent to the

Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;

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(i)        the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii)       the respondent has no rights or legitimate interests in respect of the domain name; and

(iii)      the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.

It has been a consensus view among UDRP panels that if the complainant owns a nationally or regionally registered trademark, then it generally satisfies the threshold requirement of having trademark rights.

The Complainant produced evidence of having registered rights in the LFDY trademark and for the purpose of this proceeding the Panel establishes that the German Trademark Registration No. 30214034874 satisfies the requirement of having trademark rights for the purpose of the Policy.

Having determined the presence of the Complainant’s trademark rights, the Panel next assesses whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark.

According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the domain name. This

test typically involves a side-by-side comparison of the domain name and the textual components of the
relevant trademark to assess whether the mark is recognizable within the domain name.

According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the 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.

According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (in this case “.com”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test.

The design elements of the Complainant’s trademark do not convey any relevant information under the first element of the Policy; it’s the textual element LFDY that is the dominant feature of the trademark, which the disputed domain name fully incorporates and is evidently recognizable in the disputed domain name.

The Respondent’s addition of the term “hoodie” to the Complainant’s trademark in the disputed domain name does not prevent a finding of confusing similarity.

The Panel finds that the disputed domain name is therefore confusingly similar to the Complainant’s trademark and that the first ground of the Policy is established.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:

(i)        before any notice of the dispute, its use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;

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(ii)       it has been commonly known by the domain name;

(iii)      it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

According to section 2.1 of the WIPO Overview 3.0, while 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 often impossible 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 the relevant evidence demonstrating its rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well- established prior rights in the LFDY trademark.

The Complainant has never authorized the Respondent to use its LFDY trademark, in a domain name, or otherwise.

There is no evidence that the Respondent is commonly known by the disputed domain name.

The website at the disputed domain name effectively impersonates the Complainant, as the Respondent is prominently using on its website the trademarks and images found in the Complainant’s official website.

UDRP panels have categorically held that the use of a domain name for illegal activity, such as impersonation/passing of, or other types of fraud can never confer rights or legitimate interests on a respondent (see section 2.13.1 of the WIPO Overview 3.0).

Moreover, the inherently misleading nature of the disputed domain name, incorporating the Complainant’s trademark and a descriptive term, carries risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0).

The Respondent failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter to the Complainant’s prima facie case and the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with

paragraph 4(a)(ii) of the Policy

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:

(i)        circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii)       you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

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(iii)      you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)      by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

The Complainant’s LFDY trademark is inherently distinctive for the corresponding goods, namely clothing articles and predates the registration of the disputed domain name by years.

The Respondent reproduced the Complainant’s exact figurative trademark in the disputed domain name and the Complainant’s copyrighted materials on the website at the disputed domain name. Also, the Respondent’s website expressly refers to the Complainant’s activities and the Complainant’s designer, thus it is clear that the Respondent had full knowledge of the Complainant’s business and trademark at the time of registration of the disputed domain name and had registered it in order to take unfair advantage of it.

The use to which the Respondent has put the disputed domain name in view of the Panel amounts to bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy. The Respondent is using the disputed domain name to direct Internet traffic to its website in order to gain illegitimate profit through impersonation or false association.

The Respondent chose not to respond to the Complaint and rebut the Complainant’s credible assertions and evidence, which the Panel accepts and finds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy

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 <lfdyhoodie.com> be transferred to the Complainant.

/Zoltán Takács/
Zoltán Takács
Sole Panelist
Date: April 4, 2023