The Complainant is Russian Standard Vodka, LLC of Moscow, Russian Federation, self represented.
The Respondent is Stephen Wood of the State of Virginia, United States of America, unrepresented. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2010. On September 14, 2010, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On September 14, 2010, Wild West Domains, Inc. 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on September 20, 2010 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 September 21, 2010. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2010. On September 23, and October 14, 2010, the Center received informal communication from the Respondent. However, no formal Response was filed with the Center.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on October 20, 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. 4. Factual Background
The facts relevant to the findings and decision in this case are that:
1. The Complainant is a Russian Federation company which uses the trademark MISS RUSSIA in relation to a range of goods and services connected with the promotion of beauty pageants.
2. The Complainant is the owner of many registrations for the trademark MISS RUSSIA 1.
3. The disputed domain name was registered on April 2, 2008.
4. The domain name resolves to a website offering dating services.
5. The Complainant has not authorised the Respondent to use the trade mark or to register any domain name incorporating the trademark.
6. Post-Complaint contact between the parties failed to resolve the dispute.
7. The Complainant petitions the Panel to order transfer of the disputed domain name from the Respondent to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant asserts trademark rights and states that the disputed domain name is at least confusingly similar to its trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith. B. Respondent
The Respondent did not make a formal reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural issue
Although no Response was filed in a timely manner in compliance with the Rules, the Respondent did informally communicate with the Center. On September 23, 2010 the Respondent wrote to the Complainant and to the Center stating that he was “not going to use the domain name any longer”, however there was nothing amounting to consent-to-transfer of the domain name.
That same day and in consequence of that communication, the Center invited the parties to seek suspension of the proceedings in order to pursue settlement negotiations.
There is some evidence of inconclusive negotiations between the parties, but once more nothing that might be construed by the Panel as an offer by the Respondent to transfer the domain name to the Complainant.
Moreover, the Panel makes it clear that nothing submitted by the Respondent constitutes a formal Response as required by the Rules and nothing sent to the Center informally by the Respondent addresses the Policy in any meaningful manner.
Notwithstanding the lack of a Response, the Panel moves to paragraph 4(a) of the Policy which requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry. First, a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the trade mark and domain name are identical or confusingly similar.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is accepted that a trademark registered with a national authority is prima facie evidence of trade mark rights for the purposes of the Policy. On the evidence, the Complainant has trademark rights in MISS RUSSIA acquired through registration2.
The remaining question is whether the disputed domain name is confusingly similar to the Complainant’s trademark. The Panel accepts the consensus view of former panels that for the purposes of testing confusing similarity, the generic top-level domain, “.com,” is to be ignored3. The domain name wholly incorporates the Complainant’s trademark, adding only the possessive pronoun “my” which is non-distinctive when set alongside the trademark4.
The Panel finds the disputed domain name confusingly similar to the Complainant’s trademark and so finds that the Complainant has satisfied the first limb of the Policy. B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to demonstrate rights or legitimate interests5.
Notwithstanding the lack of a response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The “WhoIs” data does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has trademark rights in the name, registered or not. The Complainant has stated there to be no relationship between it and the Respondent.
The Respondent has not provided any evidence that it used the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute ( given that a letter of demand was sent to it in July 2010 ), nor that its use might be noncommercial.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not discharged the onus which fell to it as a result.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
(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 trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(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 on-line 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.
What is noteworthy about paragraphs 4(b)(i) – (iv) is that they are cases of both registration and use in bad faith. Paragraph 4(b) is not exhaustive and other instances of bad faith might be in evidence but, in those instances, the Panel must be able to find both bad faith registration and bad faith use. It is therefore logical to first test the facts against the Policy itself.
The Complainant alleges that the Respondent’s actions fall squarely within paragraph 4(b)(iv).
Paragraph 4(b)(iv) requires use of the domain name creating a likelihood of confusion with the Complainant’s mark as to the source of the online location to which Internet users are attracted. The Panel has already found the domain name to be confusingly similar to the trademark. The Panel finds that the likelihood of confusion as to source is therefore inevitable.
Paragraph 4(b)(iv) also requires an intention on the part of the Respondent to create that confusion. Panels applying the Policy have differed in their opinions as to whether a subjective or objective test of intention should apply. The consensus opinion, which this Panel endorses, is that an objective test should be used.
In this case there is no indication when the trade mark was first used or even when the Complainant was incorporated. There are bald assertions of international reputation in the trademark acquired through use but no support whatsoever for those claims. Moreover, it might be said that the words “My Miss Russia” are ones which a person establishing an online dating service with Russian women might reasonably want to use without any knowledge of the Complainant’s rights.
On the other hand, the earliest trademark registration dates from 2003, five years earlier than registration of the domain name. Moreover, in the absence of a Response, the Panel is entitled to accept reasonable allegations and inferences set forth in the Complaint as true unless the evidence is contradictory6.
On balance, the Panel finds it more likely than not that the Respondent knew of, and targeted, the Complainant’s trademark and so the Panel finds that the Respondent’s use of the disputed domain name falls under Paragraph 4(b)(iv) and was therefore used and registered in bad faith. Accordingly, the Panel finds that the Complainant has satisfied the third and final limb of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, , be transferred to the Complainant.
Debrett G. Lyons
Sole Panelist
Dated: October 27, 2010
1 For example, Russian Federation trade mark registration no. 245705 dated May 12, 2003.
2 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. FA705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark STATE FARM establishes its rights in the STATE FARM mark pursuant to Policy paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. FA174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
3 See Gardline Surveys Ltd. v. Domain Fin. Ltd., NAF Claim No. FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name”).
4 See, by analogy, Chanel, Inc. v. Cologne Zone,WIPO Case No. D2000-1809 (finding that “CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, ‘perfumes’ is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”)
5 See, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. FA741828; AOL LLC v. Jordan Gerberg, NAF Claim No. 780200.
6 See Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. 95095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Full & Egal Universal Law Academy