Complainant is Closed joint-stock company “Center of navigation technologies” (hereinafter “JSC CNT”) of Moscow, Russian Federation, represented internally.
Respondent is Royal Consulting of Zug, Switzerland. 2. The Domain Name and Registrar
The disputed domain name is registered with TierraNet d/b/a DomainDiscover. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2010. On July 23, 26, and 27, 2010, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the disputed domain name. On July 27, 2010, TierraNet d/b/a DomainDiscover transmitted by email to the Center its verification response, confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2010. No Response was received as of that date, so the Center notified Respondent’s default on August 19, 2010.
The Center then proceeded to appoint Paul E. Mason as the sole panelist in this matter on August 25, 2010. 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 August 30, 2010, the Center received an email communication from an attorney stating that Respondent had only recently received notification of the dispute, that his firm had been retained to represent Respondent, and requesting a copy of the Complaint.
On September 1, 2010 the Panel issued Procedural Order No. 1 under which a copy of the Complaint was forwarded electronically to the attorney with a deadline revised to receive his Response by 4:00 PM Geneva time on September 8, 2010. Even though the strict deadline had passed for Respondent to submit a Response, the Panel found that a one-week extension to give Respondent a fair opportunity to be represented and heard is consistent with due process and authority of the Panel under the Rules, paragraph 10.
On September 10, 2010 the Panel granted a further extension to respond until 4:00 PM Geneva time on September 20, 2010 at the explicit request of Respondent.
However, as of the deadline times set by the Center as referred to above, no Response was received. A further email communication was received from the attorney on September 22, 2010, which was not substantive in nature. The attorney’s office did send a formal Response to the Center on September 28, 2010, but as this date was well beyond the second deadline set by the Panel, this Response was not accepted or considered by the Panel in its decision. Therefore the Panel proceeds to issue its Decision below. 4. Factual Background
The disputed domain name was created on July 29, 2003 and was to expire on July 29, 2010.
According to paragraph 12 of the Complaint:
- Complainant is engaged in the production and distribution of navigation software and creation of digital maps of various countries including Russian Federation, Ukraine, Belarus, Kazakhstan, Lithuania, Latvia, Estonia, Hungary, Romania, Finland, Moldova, Czech Republic, Slovakia, Poland, Turkey, Iran, Jordan, India, Mongolia, Philippines, Thailand, Indonesia, Malaysia, Singapore, Taiwan, SAR of China, Colombia, Bolivarian Republic of Venezuela, Costa Rica, Peru, Mexico, Uruguay, etc.
- At the present time there are more than 1,800,000 end users of goods and services marked with the name “navitel” distributed by JSC CNT worldwide.
- JSC CNT is the owner of:
a. the computer software program “Navitel Navigator 3.2.5”;
b. The trademark NAVITEL registered at the Russian Federal Agency for Intellectual Property, Patents and Trademarks (Certificate no. 381025 dated June 5, 2009, with priority from December 16 2008). (Actually, annex 5 to the Complaint shows Certificate no. 381025 for the mark NAVITEL with the Russian language indication that it is a service mark (знак обслуживания);
c. The trademark НАВИТЕЛ which is the Russian language equivalent of “Navitel” (Certificate no. 357369, dated August 14, 2008);
d. The trademark NAVITEL registered at WIPO (Certificate no. 1034001 dated June 5, 2009).
- JSC CNT is actively distributing products to major OEMs in many countries and has incorporated a legal entity called NAVITEL s.r.o. in the Czech Republic for this purpose.
- JSC CNT itself uses the following domain names: , , , , , , , , , . Interestingly, a visit to many of these websites resolved to a central site in the Russian language rather than home country language versions. 5. Parties’ Contentions A. Complainant
Complainant contends that:
A) The disputed domain name is identical to its registered trademarks, the only difference being the addition of the gTLD suffix “.com” which is not legally sufficient to distinguish the domain name from its trademarks; and
B) Complainant has given no license or permission to Respondent to use its trademarked name as a domain name, and Respondent has not met its burden of persuasion that it has a right or legitimate interest in the domain name; and
C) Respondent has registered and used the disputed domain name in bad faith as follows:
i) Bad faith registration is evidenced by the fact that Respondent’s address given to the Registrar is either false or not updated. Complainant avers it has been unable to contact Respondent at that address and Respondent has failed to answer the Complaint sent to that address. Moreover, Complainant contends that Respondent registered the domain name to attract, for commercial gain, Internet users to Respondent’s web site, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or of a product or service on Respondent’s web site.
ii) Bad faith use of the disputed domain name is evidenced by the use of the webpage to which the domain name resolves. The screenshot provided by the Center shows that Respondent has been and is currently using the disputed domain name to attract Internet traffic to market and sell products which compete with those of Complainant in the GPS and navigational software markets through the provision of links on the webpage. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
It is well settled UDRP practice that the mere addition of a gLTD suffix such as “.com” does nothing to change the similarity between a complainant’s trademark and a domain name being used by a respondent. Therefore this Panel finds that the domain name is identical to the trademark of Complainant. B. Rights or Legitimate Interests
In light of the Panel’s finding under the third element, it is not necessary for this Panel to rule on the question of rights or legitimate interests. C. Registered and Used in Bad Faith
It has become widely accepted UDRP practice that in order to prevail, a complainant must prove respondent both registered AND used the disputed domain name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 () and other UDRP cases cited thereafter.
In this case we have a situation where the disputed domain name was registered on July 29, 2003 while the Complainant’s trademarks were not registered until 2008 and 2009 with priority in the earliest of such registrations to 2007. This means that Complainant only acquired rights in the trademark “NAVITEL” and Russian language equivalent thereof at the earliest in 2007, over four years after Respondent registered the domain name.
As noted on the WIPO Overview of WIPO Panel Views on Selected UDRP Questions1, “Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.” See John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited,WIPO Case No. D2001-0074; Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827; PrintForBusiness B.V v. LBS Horticulture,WIPO Case No. D2001-1182.
There are some exceptions, where a respondent must have known of the existence of complainant’s name or mark – even an unregistered mark – before registering the same or similar domain name. This would normally apply where it is shown that a respondent was clearly aware of complainant, or in the case of very famous worldwide names or marks. However the Panel does not find that either of these situations exist here. Complainant has not made out a case to indicate the presence of either of these two exceptional scenarios.
The Panel has examined the screen shot of the webpage supplied by the Center as a part of its verification that the Complaint is compliant with the Rules. However, since bad faith registration was not proven, it is not necessary for this Panel to rule on the question of bad faith use of the disputed domain name. 7. Decision
For the foregoing reasons, the Complaint is denied.
Paul E. Mason
Sole Panelist
Dated: September 29, 2010
1 See
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