The Complainant is Absolute Developments Corporation Limited of Hong Kong, China, represented by Howard Kennedy LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Irina Zaripova / Domains By Proxy, LLC, of Ekaterinburg, Russian Federation, and Scottsdale, Arizona, United States of America, respectively. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2012. On October 31, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 2, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 5, 2012 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 amended Complaint on November 9, 2012.
The Center verified that the Complaint together with the amended 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 November 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2012.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on December 13, 2012. 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 Complainant, Absolute Developments Corporation Limited is part of the Absolute World Group of companies ("the Group"), founded in 1998. Since then, it has been in the business of the development and provision of lifestyle vacation and property ownership in Asia. That business was developed and is still traded under the unregistered trademark CLUB ABSOLUTE. The Group continues to serve existing members and, in particular, the Russian market through the Club Absolute brand. The Group is in the process of applying for international trademark registrations of its brand names, including CLUB ABSOLUTE. On February 24, 2004, the domain name was acquired and registered by the Group. It has been renewed annually since that date.
In about early 2012, the Group's Russian sales team became aware of the registration of the Domain Name . 5. Parties’ Contentions A. Complainant
The Group has grown and developed, over the past 10 years, to the point at which some 25,000 families around the world currently enjoy ownership and vacations through the Group. The Group has established sales teams across the world. The Group's core business used to be the sale of timeshare vacation ownership and ancillary services, often in partnership with hotel and resort owners and operators.
The Complainant asses that the Domain Name is identical or confusingly similar to its unregistered trademark CLUB ABSOLUTE under which it operates on the Russian market and in which only the Complainant has rights. From a simple visual comparison of and , it can be seen that the two domain names are identical or confusingly similar. The Complainant underlines that the potential customers of the Complainant may not realize that they are visiting a site critical of the Complainant until they arrive at the site to which the Domain Name resolves. These customers, once arrived at the site, are likely to view the content and to be deterred from doing business with the Complainant because of the negative content of the site.
The Complainant submits that the website operated under the Domain Name is not being used to promote any business or services of the Complainant and its sole purpose is to obtain commercial gain from the website at the Domain Name. The allegations and statements contained on the website are prejudicial and defamatory. The comments present on the blog are factually incorrect and false. Therefore, the use of a domain name with the sole or principal objective of damaging a business is not a legitimate interest.
Finally, it is the Complainant’s position that the Domain Name was registered and is being used in bad faith, which is demonstrated inter alia:
(a) By the lack of the Complainant’s permission for the Respondent’s use of the Complainant’s unregistered trademark CLUB ABSOLUTE;
(b) By using a private registration, the Respondent is preventing the Complainant from exercising its rights to challenge the statements contained on “www.” website, by taking action against the true owner of the Domain Name e.g. for defamation and/or passing off.
(c) Group's success in improving the constituent parts of its business in achieving a number of prestigious, international awards, including the Thailand Property Awards Best Boutique Developer, three awards from the American Resort Development Association, Euromoney, Best Thailand Developer, Best Fractional Resort for the its Beach Samui resort from the Bloomberg International Property Awards and a Silver Developer of the Year Award from the Overseas Property Professional Awards for Excellence. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(a) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in the Domain Name; and
(c) the Domain Name has been registered and is being used by the Respondent in bad faith.
A Complaint may only be granted if the above criteria are met simultaneously. A. Identical or Confusingly Similar
The Complainant has proved to the Panel’s satisfaction that the Domain Name is confusingly similar to the name and unregistered trademark of the Complainant.
The confusing similarity of the Domain Name to the Complainant’s trademark and service mark is apparent from a simple visual comparison. Unquestionably the Complainant enjoys an unregistered trademark under which it successfully operates since 1998. The Complainant is a highly recognized, within its region, provider of lifestyle vacation and property ownership in Asia. Especially, in the Russian market it is famous under its trademark CLUB ABSOLUTE.
The Domain Name is a replica of the Complainant’s known trademark CLUB ABSOLUTE with no suffix or prefix added thereto. This may be sufficient to satisfy the requirement that the Domain Name in question is identical or confusingly similar to a mark in which the Complainant has rights (see also Oki Data Americas Im v. ASD Inc,WIPO Case No. D2001-0903, wherein the panel found that when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words).
The Panel therefore finds that the Domain Name is identical or confusingly similar to the Complainant’s trademark CLUB ABSOLUTE and as a consequence, the Complaint brought by the Complainant meets the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
From the evidence submitted before the Panel it is clear that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Panel, given the notoriety in Asia of the trademark CLUB ABSOLUTE belonging to the Complainant, is well persuaded that it is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name “Club Absolute” at the time of the registration. The Respondent is not the Complainant’s licensee in any respect, nor is the Respondent authorized to use the Complainant’s mark. There is no evidence of the Respondent’s 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 or services. The name of company identified on the Respondent’s website does not create any reasonable link with the trademark CLUB ABSOLUTE used in the Domain Name. The Respondent is not known by the Domain Name (paragraph 4(c)(ii) of the Policy). Neither can it be accepted that the Respondent is 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 at issue (paragraph 4(c)(iii) of the Policy). By making false statement on the website conducted under the Domain Name, the Respondent is clearly tarnishing the Complainant’s trademark.
The present Panel takes a similar view to that outlined by the panel in Triodos Bank NV v. Ashley Dobbs,WIPO Case No. D2002-0776 on the question of rights and legitimate interests in domain names used for the purposes of criticism websites. In that case, the panel commented: “In the view of the Panel there is a world of difference between, on the one hand, a right to express (or a legitimate interest in expressing) critical views and, on the other hand, a right or legitimate interest in respect of a domain name. The two are completely different. The fact that use of the Domain Name enables the Respondent to transmit his views more effectively is neither here nor there. Depriving the Respondent of the ability to deceive Internet users by his use of the Domain Name does not in any way deprive him of his right to free speech. He could readily use a domain name which telegraphs to visitors precisely what his site contains and thereby obviate any risk of deception.”
The present case is based on a similar factual basis to the circumstances described in Triodos Bank NV v. Ashley Dobbs, supra, wherein the Respondent selected the Domain Name which was identical to the Complainant's trading name. Likewise, in the present case it is evident from the original content of the Respondent's website that it did so deliberately and with the Complainant's rights in mind. The Panel considers that the Respondent cannot demonstrate rights and legitimate interests in the Domain Name merely by virtue of the fact that the Respondent's intent was to use this to publish material that is or may be critical of the Complainant, given in addition that the website conducted at the Domain Name does not contain any disclaimer as to the accuracy or relationship of the Respondent and the Complainant.
The evidence put by the Complainant demonstrate that: (i) the Domain Name has been registered and is used for the purpose of criticizing the mark owner; (ii) it is not apparent to Internet users visiting the website at the Domain Name that it is not operated by the owner of the mark; (iii) the Respondent has not refrained from registering all or most of the obvious domain names reasonably suitable for the owner of the mark – to the contrary uses the Complainant’s trademark for this purpose; (iv) no link is provided to the relevant trademark owner's website.
The Respondent was also given the opportunity to challenge the case against it. However, the Respondent did not submit any evidence that would demonstrate that it has any rights to, or legitimate interests in the Domain Name.
The Panel therefore infers from the Respondent’s silence and the Complainant’s contentions, supported by a number of exhibits, that the Respondent has no serious arguments to prove its rights to, or legitimate interests in the Domain Name .
For the foregoing, the Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled. C. Registered and Used in Bad Faith
A domain name was registered and is being used in bad faith if it is primarily for the purpose of disrupting the business of a competitor (paragraph 4(b)(iii) of the Policy) or in order to intentionally attempt to attract, for commercial gain, Internet users to the 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 the Respondent’s website or location or of a product or service on the Respondent’s website (paragraph 4(b)(iv) of the Policy). It is worthwhile to mention that the above categories are not exclusive and other circumstances may exist that demonstrate the registration and use of a domain name in bad faith.
Based on the evidence submitted by the Complainant, the Panel finds that the Domain Name was registered and is being used in bad faith. The content of the website is incorrect and also it excludes important information about the Group. The website also presents only derogatory and incorrect information about the Complainant's timeshare ownership business. The website aims to create an extremely negative impression of the Group which is likely to disrupt and/or damage all of its business, including new business. There is nothing that supports the view the Domain Name has any relevance to the Respondent’s activity, while the Domain Name is a clear replica of the Complainant’s trademark.
In the absence of evidence to the contrary, the Panel is persuaded that the Respondent knew of, or should have known of the Complainant’s trademark and services at the time the Respondent registered the Domain Name. The evidence brought by the Complainant supports the view that the goal of the Respondent in creating and developing the website under the Domain Name was to disrupt the business of the Complainant by publishing untrue and harmful statements about the Complainant and its business activity. As rightly pointed out by the Complainant by the deceit of using the Domain Name identical to the Complainant’s trademark, the Respondent has been able to present false statements and incorrect information about the Complainant, which is not a legitimate interest (see Joseph Schlessinger Ph.D v PrivacyP/Harold O Connor, JS Players AssociationWIPO Case No. D2009–0695). Consequently, in this Panel’s view, there is no conceivable way in which the Respondent could use the Domain Name in good faith.
The bad faith is not excluded by the Respondent’s aim to criticize the activity and business of the Complainant. The Panel is persuaded that what the Respondent has done is to select for the Domain Name a name which is not its own, which it knew at the time of registration to be the name and trademark of the Complainant and which it proposed at the time of registration to use against the Complainant to cause the Complainant disruption and damage. The Domain Name would be particularly useful for that purpose because it would catch by surprise visitors intending to reach the Complainant’s website (see also Triodos Bank NV v. Ashley Dobbs, supra).
Had the Respondent been a competitor, there could have been no doubt that its behavior would have come within the terms of paragraph 4(b)(iii) of the Policy. Had the Respondent been acting "for commercial gain", there could have been no doubt that its behavior would have come within the terms of paragraph 4(b)(iv) of the Policy.
In this case, the Respondent is neither a "competitor" of the Complainant nor is it acting for "commercial gain" in the ordinary sense of those words. However, while the Panel recognizes the Respondent’s right to criticize the Complainant and its business it is not necessary to be done under the Domain Name. Moreover, registration of the Domain Name comprising the full name and trademark of the Complainant, and specifically with a view to cause damage and disruption to it – cannot constitute a right, or the Domain Name cannot be considered to be used in good faith, in particular where the use of the Domain Name will trick Internet users intending to visit the trademark owner’s site into visiting the Respondent’s site.
As a result, the Panel finds that the Domain Name was registered and is being used by the Respondent in bad faith and considers the requirements of paragraph 4(a)(iii) of the Policy to be fulfilled. 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 Domain Name be transferred to the Complainant.
Piotr Nowaczyk
Sole Panelist
Date: December 31, 2012
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