Complainant is SolidX Partners Inc. of New York, New York, United States of America (“United States”), internally represented.
Respondent is Darya Grygoryeva / Viktor Cherkasov, of Kharkov, Ukraine, represented by Steven Rinehart, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2015. On April 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 April 8, 2015 providing the registrant and contact information disclosed by the Registrar. Complainant filed an amended Complaint on April 9, 2015.
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 April 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2015. The Response was filed with the Center on April 24, 2015.
The Center appointed Roberto Bianchi as the sole panelist in this matter on May 7, 2015. 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 record for the registration of the disputed domain name was created on September 18, 2007.
On October 25, 2013 the Registrar issued a receipt to Mr. Viktor Cherkasov for the purchase of the domain name in an auction and for a one-year renewal for said domain name.
On June 25, 2014, Mr. Viktor Viktorovych Cherkasov and Ms. Darya Mykhaylivna Grygoryeva contracted marriage in Kharkov, Ukraine.
According to the WhoIs database, the current registrant of the disputed domain name is Darya Grygoryeva.
Complainant owns the following United States trademark registration:
SOLIDX, Reg. No. 4,705,385, Reg. Date March 17, 2015, filed on June 11, 2014, covering financial services, namely, the institutional trading of options, futures, foreign currency, swaps and other derivative products; financial consulting and advising in the fields of investment banking, mergers and acquisitions; providing an on-line computer database in the field of institutional investment and digital finance, in International Class 36; first use/first use in commerce June 16, 2014.
As of May 19, 2015, the only content of the website at the disputed domain name consisted of one page displaying the following text: “X Solidx - Xcode Outsourcing” together with a link entitled “Request” pointing to the email address of Respondent. 5. Parties’ Contentions A. Complainant
In its Complaint Complainant contends as follows:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The registered trademark is SOLIDX, owned by Complainant. Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The disputed domain name is identical to the trademark SOLIDX when the generic Top-Level Domain (gTLD) “.com” is disregarded.
Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name. Complainant has not authorized Respondent to use the term “solidx” in any way. Respondent is not commonly known by the trademark SOLIDX. “SolidX” is not a generic or common term. Respondent does not have a legitimate interest in the disputed domain name, since Respondent did not use the “www.” website for years, and Respondent modified the “www.” website only after being contacted by Complainant.
As of the time the Complaint was filed, the webpage was redirected to a parking site for presumably commercial, pay-per-click advertising. Respondent’s use of the disputed domain name is not a bona fide offering of goods and services, and Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. When “www.” is entered into a browser, the user is automatically redirected to the “www.fi” website which appears to be a parking site with sponsored advertisements. This presumed pay-per-click scheme, while legal, has not been considered a bona fide use by numerous panels when the domain registrant is diverting Internet users from a trademarked or identifiable entity. In this case Respondent is using the SOLIDX trademark to divert users away from Complainant, a well-known entity in the financial services industry. Respondent’s use of the disputed domain name to redirect Internet users to a commercial, pay-per-click website unrelated to Complainant and presumably with the purpose of earning a commission or pay-per-click referral fees does not evidence rights or legitimate interests in the disputed domain name. In fact even though Respondent is in possession of the disputed domain name, Respondent is not using it at all. Rather, Respondent is passively holding the disputed domain name with no intent to create a “www.” website.
There is also the suggestion that Respondent merely seeks to sell the disputed domain name. The parking site “www.fi” has a link to make offers to buy the website from Respondent. Even though Complainant made multiple good faith attempts through domain-brokers to purchase the disputed domain name, Respondent has repeatedly stalled or failed to negotiate. Finally, as succinctly stated in 4chan, LLC v. Oversee Domain Management, LLC,WIPO Case No. D2014-0484, “unless it is associated with a generic or commonly descriptive term, a pay-per-click page does not ordinarily suffice to establish rights or legitimate interests in a disputed domain name.”
The disputed domain name was registered and is being used in bad faith. Respondent should be referred to as a “domain camper”. Respondent is in possession of about 2,453 other domain names and is passively holding . Moreover, there are currently over 1,000 domain names hosted on the same web server. In M.F.H. Fejlesztõ Korlátolt Felelõsségû v. Giovanni Laporta, Yoyo.Email,WIPO Case No. D2014-1743, the respondent registered thousands of domain names reflecting third party trademarks. The panelist found that the respondent had engaged in a pattern of conduct which prevents the owners of those trademarks from reflecting their own trademarks in a corresponding domain name in bad faith. Further, the panel in Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273 stated that a trademark’s use in a domain name by a “registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith.” SOLIDX is a well-known trademark within the financial industry and is a top result when searched on Google. Respondent has no direct or indirect relation to Complainant and is not appropriately in possession of the disputed domain name. Moreover, Respondent is using the disputed domain name simply to post links to other sites, thereby receiving click-through revenue by diverting users from the trademark holder, Complainant. Such use of the SOLIDX trademark for Respondent’s own commercial gain is evidence of bad faith registration.
Respondent also listed a direct link entitled “Inquire about this domain” on the “www.fi” website for making an offer. This is yet another factor to be considered when making a case of bad faith. Finally the publicly available registration information provided that Viktor Cherkasov was the registrant of as of March 31, 2015. The information provided was apparently incorrect, and — to the best of Complainant’s knowledge — was registered under an inaccurate name and address in violation of Internet Corporation for Assigned Names and Numbers (lCANN) regulations and the Registrar’s Registration Agreement. Moreover, this is not the only time Respondent Cherkasov has been a respondent in a UDRP complaint. See Saludcoop Entidad Promotira De Salud Organismo Cooperativo “SALUDCOOP” v. Prosa Ltda c/o Zafra Alirio and Viktor Cherkasov,WIPO Case No. D2010-0593. B. Respondent
In its Response, Respondent makes the following contentions:
The disputed domain name is jointly owned by both Darya Grygoryeva and her husband Viktor Cherkasov, who have both been listed in the past on the registration of the disputed domain name, but who have always managed their business ventures jointly. A marriage certificate, both in Russian and English, evidencing that Darya Grygoryeva and Viktor Cherkasov are married is annexed to the Response. Complainant’s assertion that the disputed domain name was registered in 2015 “under an inaccurate name and address” is false. The disputed domain name is, and has been, owned by both Darya Grygoryeva and Victor Cherkasov jointly.
Respondent is a good faith registrant of the disputed domain name. Respondent first registered the disputed domain name on October 25, 2013 as evidenced by the receipt from the Registrar annexed to the Response. The current WhoIs registration record for the disputed domain name is also annexed.
Since 2014, Respondent has been offering programming services offered through the disputed domain name. Respondent does not offer, and has never offered, financial services of any kind which would compete with Complainant in the class of Complainant’s registered United States service mark. Complainant and Respondent are in different industries, and Complainant has a registered service mark in only one class.
Complainant’s trademark for SOLIDX did not issue by the United States Patent and Trademark Office (USPTO) until March 17, 2015, only days before the present dispute was commenced. The SOLIDX trademark alleges a first use in commerce date of June 16, 2014, which was almost a year after Respondent registered the disputed domain name in 2013. It is impossible for Complainant to establish common law trademark rights before 2014 because Complainant has affirmed under oath with its trademark filings that it did not begin using the SOLIDX mark until mid-2014, and that these rights did not accrue until March 17, 2015.
Respondent has never used the disputed domain name to attract Complainant’s customers, and has never even derived pay-per-click revenue from the disputed domain name. Although Respondent did redirect to “www.fi” briefly in 2014 before Complainant had a trademark, the sale of domain names is a large part of how Respondent Grygoryeva and her husband make their living and selling domains is not itself bad faith as Complainant asserts. That the sale of domain names is legitimate use has been found in countless UDRP cases.
Complainant had no registered trademark when Respondent began using the “Solidx” expression. Complainant makes no reference to trademark rights of any kind in 2013, much less has Complainant established secondary meaning or common law rights, which it cannot establish having acknowledged a first use in commerce date of 2014. This UDRP Complaint is a bad faith attempt to try and strip the disputed domain name from Respondent simply because Complainant wants it.
It is not enough for Complainant to simply allege that it has a trademark under paragraph 4(a) of the Policy. Complainant must also prove that the disputed domain name is confusingly similar to the mark as well as that Respondent has no rights or legitimate interest in the disputed domain name, which Complainant has not, and cannot, prove, because Respondent began making use of the mark before Complainant accrued rights.
Complainant has no enforceable trademark rights against Respondent in the SOLIDX mark. Complainant tries to rely on a mark which is clearly generic in that it is comprised only of the word “solid” and the generic value “x” which can stand for anything in mathematics. When a trademark is composed of generic terms, or common words or phrases, and the disputed domain name is being used because of its attraction as a dictionary word, and not because of its value as a trade mark, the respondent has legitimate rights in the domain name. Respondent is using the term not because of its value as a trademark but because of its attraction as a dictionary word or common term.
Even a registered trademark provides no rights under the Policy, if it is deemed to be descriptive or generic by a panel.
The use of a common word domain name related to the descriptive meaning of the domain name and its services constitutes use in connection with a bona fide offering of goods or services, pursuant to paragraph 4(c)(i) of the UDRP.
The fact that the disputed domain name is generic and was used by Respondent before Complainant filed for a trademark further establishes Respondent’s legitimate interest in the disputed domain name.
As several UDRP panels have observed: where the domain name and trademark in question are generic -—and in particular where they comprise no more than a single, short, common term— the rights/interests inquiry is more likely to favor the domain name owner. The ICANN Policy is very narrow in scope; it covers only clear cases of “cybersquatting” and “cyberpiracy,” not every dispute that might arise over a domain name.
Even if Complainant had submitted evidence of common law rights, Complainant has not demonstrated the requisite secondary meaning needed for protection over the expression before it registered the mark in March of 2015. Secondary meaning is determined by weighing many factors, among them exclusivity of use, which cannot possibly be established by Complainant where so many other parties are using the same brand, including Respondent.
Even assuming arguendo that Complainant has some kind of trademark right, Respondent has been the registrant of the disputed domain name incorporating the mark, and acorporation, since 2013. It is Respondent who owns any rights existing in the “solidx”mark; and, in the absence of those rights, it is Respondent who registered the disputeddomain name in good faith before Complainant began use.
This Panel should find that Complainant has failed to meet the burden of proof of bad faith registration and use under Policy paragraph 4(a)(iii).
In the recent UDRP case of Cheri Lane Bowes v. ,WIPO Case No. D2010-0742, the panel explained the applicable standard in the present case: “Complainant has failed to show that Respondent has registered the disputed domain name in bad faith. Respondent registered the disputed domain name on June 19, 1998, whereas Complainant did not apply for its mark until March 15, 2000. Numerous decisions have held that this fact alone renders the registration incapable of being in bad faith, unless the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights.”
This Panel should find that the Complainant failed to meet the burden of proof of bad-faith registration and use under Policy paragraph 4(a)(iii). In this case, as in Cheri Lane Bowes, supra, the domain registration predates the Complainant’s accrual trademark rights. The Complainant’s evidence must establish both that the Respondent in this case was clearly aware of the Complainant’s product, and that the clear aim of the Respondent’s registration was to take advantage of the confusion between the disputed domain name and the Complainant’s rights.
Complainant had no bona fide basis for commencing this proceeding under the UDRP, and is culpable for Reverse Domain Name Hijacking (RDNH) under paragraph 15(e) of the Rules. This is an attempt by Complainant to seize its competitor’s domain name with no right to do so. RDNH occurs where, as here, a complainant knows there is no plausible basis for a complaint. RDNH is an appropriate finding in this case. 6. Discussion and Findings
Under the Policy, paragraph 4(a), a complainant must make out its case that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Preliminary issue: Identity of Respondent
For the reasons explained at “D” below, the Respondent is both Viktor Cherkasov and Darya Grygoryeva, who the Panel will treat as a single entity for the purposes of this proceeding. B. Identical or Confusingly Similar
The Panel is satisfied that Complainant has trademark rights in the SOLIDX mark. See trademark registration details at section 4 supra.
The Panel notes that the disputed domain name incorporates the SOLIDX mark in its entirety, to which the gTLD “.com” is added. Disregarding the gTLD for the purposes of the first element test, the Panel concludes that the disputed domain name is identical to Complainant’s mark. Thus, the first requirement of the Policy is met. The consensus view of UDRP panels is that this finding is not altered because the complainant’s application for the trademark was submitted after the domain name in question was registered, although this fact may have – as in the present case – relevance when analyzing bad faith registration. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.4. C. Rights or Legitimate Interests
Given the Panel’s finding on bad faith below, the Panel need not consider the issue of rights or legitimate interests in the disputed domain name. See Tufco Technologies, Inc., Tufco LP, Hamco Manufacturing and Distributing LLC v. Hamco Alabama, LLC,WIPO Case No. D2011-1451 (“The [p]anel declines to rule on this element of the Policy, since the [p]anel finds (below) that the [d]omain [n]ame was not registered and is not being used in bad faith”). D. Registered and Used in Bad Faith
It is well-established that the registration of a domain name in bad faith requires that the complainant’s trademark be contemplated, i.e., be known and targeted, by the registrant at the moment of the registration. The consensus view of WIPO UDRP panels is that when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right. See WIPO Overview 2.0, paragraph 3.1.
The Panel notes that according to the receipt issued by the Registrar, the disputed domain name was registered by Mr. Viktor Cherkasov on October 25, 2013. See section 4 supra. Thus, the registration of the disputed domain name predated not only the application date for Complainant’s SOLIDX trademark, June 11, 2014, but also the first use and first use in commerce of the trademark as stated by Complainant: June 16, 2014. Although the current registrant of the disputed domain name appears to be Ms. Darya Grygoryeva, Respondent evidenced that Mr. Cherkasov married Ms. Grygoryeva on June 25, 2014, and alleged that she and her husband in the past have appeared as registrants for the disputed domain name, and that they have always managed their business ventures jointly. In this regard, the Panel notes that previous panels “have tended to the view that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WhoIs registrant data is not being made to conceal an underlying owner's identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain name.” See WIPO overview 2.0, paragraph 3.7.
Complainant asserts that “[…] the publicly available registration information provided that Viktor Cherkasov was the registrant of as of [March 31, 2015]. The information provided was apparently incorrect, and — to the best of Complainant’s knowledge — was registered under an inaccurate name and address in violation of lCANN's regulations and GoDaddy's Registration Agreement.” However, Complainant fails to provide any details or specific evidence for this assertion. Since Respondent presented the Panel with a copy of a certificate of marriage issued in Ukraine and its translation into English, the Panel is ready to accept that Ms. Grygoryeva and her husband Mr. Cherkasov act as one in their domain name activities. In other words, they appear to be owners of a “single entity” (see above). In any case, the Panel does not see any reason on the existing record to believe that the change in the name of the registrant from Mr. Cherkasov to Ms. Grygoryeva has been made to conceal anybody’s identity, or generally for any improper purpose.
Accordingly, the Panel does not consider that the registration by Ms. Grygoryeva was a new registration, and believes that the most likely registration date of the disputed domain name, for the purposes of this proceeding, as shown on the receipt issued by the Registrar to Mr. Cherkasov, was October 25, 2013. Even considering that Ms. Grygoryeva and Mr. Cherkasov were married on June 25, 2014, and that the “entity marriage” did not appear until then, the Panel notes that this date is only nine days after the first use of the trademark as stated by Complainant before the USTPO, and only 14 days after the submission of the trademark application by Complainant. See section 4 above. In this regard, the Panel notes that Complainant fails to submit evidence of any real use of the trademark during this 11/14 day period in June 2014, or of any awareness or recognition of the trademark by the public.
On a balance of probabilities and considering the available evidence, the Panel does not believe that Mr. Cherkasov and Ms. Grygoryeva were or should have been aware of the SOLIDX trademark, or, in other words, that they contemplated the SOLIDX trademark or Complainant when they registered the disputed domain name in 2013. In particular, on the existing record there is no evidence of any advertising made by Complainant, media recognition of the mark, press articles, amount of sales made under the mark, Internet presence, or any other elements indicating a public and substantive use of the mark before October 25, 2013 or even before June 2014.
Since Complainant has failed to establish registration in bad faith, there is no need to examine use in bad faith. Accordingly, the third requirement of the Policy is not met.
In the Panel’s opinion, the evidence on record does not support a finding of RDNH. Respondent does not submit evidence to support its contention that Complainant attempted to seize its competitor’s domain name with no right to do so. In fact, Respondent does not contend, or appear, to be a competitor of Complainant. Also, prior to the submission of the Response there was no information available to Complainant suggesting that the registration of the disputed domain name by Ms. Grygoryeva was a continuation of Mr. Cherkasov’s registration. 7. Decision
For the foregoing reasons, the Complaint is denied.
Roberto Bianchi
Sole Panelist
Date: May 21, 2015
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