Complainant is Archies Limited of Gurgaon, Haryana, India, represented by Quest IP Attorneys, India.
Respondent is I-Firma Ltd. transf. co-op of Saint Petersburg, Russian Federation, represented internally. 2. The Domain Name and Registrar
The disputed domain name is registered with DomReg Ltd. d/b/a LIBRIS.com (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2013. On July 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 2013, 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 and contact information in the Complaint. The Center sent an email communication to Complainant on August 8, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 13, 2013.
On August 8, 2013, the Center transmitted a communication regarding the language of the proceedings to the parties in both English and Russian. In its original and amended Complaint, Complainant requested that English be recognized as the language of the proceedings. On August 12, 2013, the Respondent requested that Russian be recognized as the language of the proceeding. On August 15, 2013, the Center informed the parties that, given the provided submissions and circumstances of the case, it had decided to: 1) accept the Complaint as filed in English; 2) accept a Response in either English or Russian; 3) appoint a Panel familiar with both languages mentioned above, if available.
On August 15, 2013, the Center sent an email communication to Complainant inviting it to submit the Complaint and Annexes to the Complaint in the appropriate electronic format as required by paragraph 3(b) of the Rules and Annex E of the Supplemental Rules. Complainant complied with this request on August 15, 2013.
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 Respondent of the Complaint, and the proceedings commenced on August 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2013. The Response was filed with the Center on September 6, 2013.
On September 11, 2013, the Center received a Supplemental Filing from Complainant. The Center acknowledged receipt of the Supplemental Filing on September 12, 2013. In response, on September 23, 2013, the Center received a Supplemental Filing from Respondent. The Center acknowledged receipt of the Supplemental Filing on September 23, 2013. These filings are considered in this decision.
The Center appointed Clark W. Lackert as the sole panelist in this matter on September 27, 2013. 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
Complainant is an entity based in India which sells greeting cards and gifts under various trademarks incorporating ARCHIES. Complainant owns trademark rights in marks incorporating ARCHIES in India for goods including stationery, cosmetics, clothing, and other consumer goods. The materials submitted with the Complaint establish that Complainant’s trademark registration for ARCHIES in India date to at least as early as 1983. Complainant owns domain names incorporating the ARCHIES trademark including , , , , , and .
The disputed domain name is registered to Respondent. Respondent is based in the Russian Federation. The disputed domain name has featured content promoting the domain name. 5. Parties’ Contentions A. Complainant
Complainant claims that its ARCHIES trademark is renowned internationally and is one of the most prominent marks associated with the greeting card and social expression industry based upon its use of the mark since 1979. Complainant notes that the disputed domain name is identical to its ARCHIES trademark and states that there is no authorization or affiliation which justifies the registration of the disputed domain name by Respondent. Complainant alleges that the term “Archies” is not common in the Russian Federation and as such would not warrant legitimate registration and use of the disputed domain name by Respondent, and alleges that Respondent has acted in bad faith by hiding its identity and activities. Complainant further alleges that Respondent has been involved in prior UDRP matters involving domain names registered and used in bad faith. B. Respondent
Respondent claims that it acquired the disputed domain name for use in connection with a legitimate restaurant and amenities business to be provided in the area of Saint Petersburg, Russian Federation. Respondent has provided background regarding its selection of the disputed domain name including explanation of a connection between the disputed domain name and Арчибальд Арчибальдович (“Archibald Archibaldovich”), a character from Russian literature who is associated with civility and hospitality. Respondent states that “Archie” in the disputed domain name is a nickname for the literary character. Respondent notes that it disclosed its identity in response to the Complaint and maintains that the content of the disputed domain name has been hidden due to Respondent’s development of its website for a legitimate business activity. Respondent maintains that it has not used the disputed domain name to cause confusion with Complainant’s mark or in any other manner indicative of bad faith. 6. Discussion and Findings A. Language of Proceeding
The Complaint was submitted in the English language. The language of the registration agreement is Russian. The Center acknowledged this discrepancy and advised Respondent that a response could be submitted in either language and that it would appoint a Panel familiar with both languages.
Complainant has argued that English should be recognized as the language of the proceeding, noting that Respondent had communicated with the Center and Complainant in the English language. Respondent has argued that Russian should be recognized as the language of the Complaint, noting that translation of its supporting materials from Russian into English would be unduly burdensome.
The Panel is familiar with both languages and has reviewed the Complaint, the Response, and all supporting materials, the latter of which have been presented by the parties in English or Russian. The Panel notes that the Response was submitted by Respondent in the English language, and that the Response and the communications from Respondent in the case file demonstrate Respondent is capable of communicating in the English language. Since the Complaint and Response were both submitted in the English language and the Panel is familiar with both languages and is able to comprehend all materials in the case file, the Panel has decided to continue with this proceeding in the English language. Translation of the materials into the Russian language would create an unnecessary delay. B. Identical or Confusingly Similar
Complainant has presented evidence of trademark rights in ARCHIES which precede the acquisition of the disputed domain name by Respondent, which the case file indicates was April 12, 2000. Specifically, Complainant owns registrations in India for the word mark ARCHIES for stationery and printed matter in Class 16 dated 1988 and 1996 (Nos. 4058828 519457B), for goods including domestic utensils, glassware, combs, sponges, brushes, and cleaning instruments in Class 21 dated February 2005 (No. 322675), for oils and candles in Class 4 dated April 2005 (No. 357050), for textiles, tissues, and bed and table covers in Class 24 dated April 2005 (No. 359498), and for watches and clock parts and fittings in Class 14 dated February 2005 (No. 317355). The literal element of the disputed domain name is identical to the word mark in which Complainant has prior rights.
There is some indication in the record that a question has arisen as to whether Complainant has rights in its ARCHIES trademark in the Russian Federation due to spillover fame and reputation and whether Respondent has rights in ARCHIES due to use in this jurisdiction. It has been well established that trademark disputes of this nature are not appropriate for a cybersquatting procedure and should be reviewed by an appropriate court or other tribunal (see, e.g., Mubadala Trade Marks Holding Company, LLC, Al Yah Satellite Communications Company PrJSC, and Al Maisan Satellite Communications Company, LLC v. Emedia Development Ltd. and Whois Privacy Services Pty Ltd.,WIPO Case No. D2013-0570 noting that “The UDRP was designed as a fast, efficient mechanism for the resolution of clear-cut cases of cybersquatting…UDRP panels, are, therefore, not capable of deciding disputes which involve a ‘weighing’ of respective trademark rights”).
Given that the literal element of the disputed domain name is identical to the word mark in which Complainant has prior rights in India, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied in favor of Complainant. C. Rights or Legitimate Interests
There is no evidence in the record showing that Respondent is associated with or affiliated with Complainant. However, there are some materials in the record which raise legitimate questions as to whether Respondent has rights or legitimate interests in the disputed domain name. Some documents in the record show that Respondent had established plans to use “Archies” for a legitimate business purpose unassociated with and distinguishable from Complainant’s ARCHIES trademark, and the name Арчибальд Арчибальдович (“Archibald Archibaldovich”) could conceivably be nicknamed “Арчи” (“Archie”).
In light of the evidence presented and the Panel’s finding on paragraph 4(a)(iii) of the Policy below, the Panel need not address the second element of the Policy directly. D. Registered and Used in Bad Faith
Complainant alleges that the disputed domain name has been registered and used by Respondent in bad faith based upon (i) Respondent’s use of privacy services to hide its identity, (ii) Respondent’s engagement in cyber flight, (iii) Respondent’s use of the Robots Exclusion Standard (robots.txt) to prevent the disclosure of archival records associated with the disputed domain name, (iv) Respondent’s misrepresentation of the disputed domain name as “Archies Cards” so that the disputed domain name would be included in Internet users’ search results for Complainant, and (v) a connection between Respondent and other third parties, contact information, and content displayed on other domain names which have been subject of past UDRP proceedings.
Respondent has addressed these allegations with the following defenses:
- That it disclosed its identity through its removal of the privacy service after the Complaint was filed;
- That the Robots Exclusion Standard was used because the disputed domain name was under development;
- That it should not be responsible for the search engine results cited by Complainant;
- That it has no connection to the other third parties/elements from the prior UDRP proceedings cited by Complainant.
The record indicates that Respondent’s identity was properly disclosed; there is no evidence of cyber flight as alleged by Complainant. Further, the Panel notes that the correspondence in the record between Respondent and search engines includes correspondence from representatives of search engines confirming that the search engines were defaulting to other sources (outside of information received from Respondent’s website) “including but not limited to links pointing to the page” (Annex 32 to the Response). The Panel sees nothing in the record which establishes that any of Respondent’s activities were the source of the search results cited by Complainant.
Complainant has cited decisions involving the use of similar web content by other third parties and has alleged that these third parties are connected with Respondent. Complainant cites the finding of bad faith in these decisions as a basis for a finding of bad faith in the present case. Complainant has provided no evidence which directly links Respondent in this case with the other third parties cited. While the address for Respondent in WhoIs records may be similar to addresses of other parties involved in past complaints, this does not support a finding that the parties are identical. Further, it should be noted that the other cases cited involved other elements indicative of bad faith such as the use of a domain name to display links to third party websites offering goods/services which compete with those of a complainant (e.g., Fifth Third Bankcorp v. Secure Whois Information Service,WIPO Case No. D2006-0696). That situation is not applicable here.
Based on the above and upon the lack of sufficient evidence provided by Complainant, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have not been satisfied. E. Reverse Domain Name Hijacking
In one of its supplemental submissions, Respondent alleged Reverse Domain Name Hijacking on the part of Complainant. In view of the circumstances of this case, particularly the fact that the Panel is not making a finding expressly in favour of the Respondent, the Panel decides not to make a finding on this issue. 7. Decision
Due to Complainant’s failure to satisfy paragraph 4(a)(iii) of the Policy, the Complaint is denied. The disputed domain name should not be transferred.
Clark W. Lackert
Sole Panelist
Date: October 14, 2013
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