Lodo IP, LLC v Tracy Girard

WIPO Case No. D2024-0444

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Lodo IP, LLC v. Tracy Girard

Case No. D2024-0444

1. The Parties

The Complainant is Lodo IP, LLC, United States of America (“United States”), represented by Milgrom &

Daskam, United States.

The Respondent is Tracy Girard, United States.

2. The Domain Name and Registrar

The disputed domain name <vitalityshop.shop> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2024. connection with the disputed domain name. On February 5, 2024, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 February 9, 2024. In accordance with the Rules, paragraph
5, the due date for Response was March 5, 2024. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on March 6, 2024.

The Center appointed Evan D. Brown as the sole panelist in this matter on March 11, 2024. 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.

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4. Factual Background

The Complainant is in the clothing and accessories business and owns the mark VITALITY. It enjoys the selling counterfeits of the Complainant’s clothing at discount prices without the Complainant’s permission.

benefits of registration of that mark in the United States (e.g., Reg. No. 5352936, registered on December
12, 2017). According to the WhoIs records, the disputed domain name was registered on August 3, 2023.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and second, whether the disputed domain name is identical or confusingly similar to that mark. This element under the Policy functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of multiple valid and subsisting trademark registrations for the mark VITALITY.

The incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical Complainant’s trademark VITALITY in its entirety, as a dominant element, with additional word “shop” which does not prevent a finding of confusing similarity. The VITALITY mark remains recognizable for a showing of confusing similarity under the Policy. Accordingly, the Panel finds that the Complainant has satisfied this first element under the Policy.

or confusingly similar to the Complainant’s registered mark. See Britannia Building Society v. Britannia

B. Rights or Legitimate Interests

The Complainant’s allegations under this second element are relatively sparse, but having reviewed the
overall allegations of the Complaint, as well as the website appearing at the disputed domain name, it is
clear to the Panel that the Respondent’s use of the disputed domain name to purportedly sell counterfeit
goods bearing the mark of the Complainant is not a bona fide offering of goods or services. The Respondent
has not provided any evidence of rights or legitimate interests in the disputed domain name. Accordingly,
the Panel finds that the Complainant has satisfied this second element under the Policy.

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C. Registered and Used in Bad Faith

The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [the respondent’s] website or location”.

The Respondent registered and is using the disputed domain name in bad faith. Establishing a website that bears the Complainants mark to sell counterfeit products using the disputed domain name that incorporates the Complainant’s mark, is a clear example of bad faith registration and use under the Policy. Columbia

Sportswear Company v. PrivacyGuardian.org / Dorota Borowska, WIPO Case No. D2019-0314; Millet
Mountain Group SAS v. AndreasSankt, JuliaKruger, TomZimmer, WIPO Case No. D2023-3363.

Accordingly, the Panel finds that this third element under the Policy has been met.

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 <vitalityshop.shop> be transferred to the Complainant.

/Evan D. Brown/
Evan D. Brown
Sole Panelist
Date: March 26, 2024