The Complainant is Maxym Polyakov of Menlo Park, California, United States of America, represented by Mapa Trademarks SL, Spain.
The Respondent is zhuhaiyingxunkejiyouxiangongsi of Zhuhai, Guangdng, China / Nechiporenko Bogdan, Bogdan Nechiporenko of Kiev, Ukraine, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Eranet International Limited (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 24, 2018. On January 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 26, 2018, 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 the Complainant on February 8, 2018 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 February 9, 2018. On February 12, 2018, the Respondent filed an informal response by email.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2018. The Respondent did not submit any formal response. Accordingly, on March 7, 2018, the Center informed the Parties the commencement of the panel appointment process. On March 7, 2018, the Complainant submitted a supplementary filing by email with the Center.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on March 13, 2018. 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 is Dr. Maxym Polyakov, also known as Max Polyakov. He is the managing partner, CEO and founder of Noosphere Ventures USA Inc. The Complainant states that he has been trading for many years under the business name Max Polyakov, adding that he has founded many successful companies including EOS Data Analytics Inc., Maxymiser Ltd. and Cupid Plc. The Complainant is the owner of European Union Trade Mark No. 17135187 for the word mark MAX POLYAKOV filed on August 22, 2017 and registered on December 18, 2017 in international classes 35 and 42.
The Respondent appears to be an individual based in Kiev, Ukraine. The disputed domain name was created on March 26, 2017, approximately five months before the Complainant filed his application for the registered trademark noted above and nine months before such trademark was registered. The Respondent has used the disputed domain name to resolve to a website at which it appears to offer direct criticism of the Complainant and his business activities.
The website associated with the disputed domain name states prominently at the top "THE UNOFFICIAL MAXIM POLYAKOV FAN SITE". As far as the Panel can discern, in the absence of any commentary or discussion from either of the Parties, the content of the website appears to relate exclusively to the Complainant and his business activities and features strongly worded criticism and allegations in a variety of articles in both the English and Russian languages. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the disputed domain name was registered and is being used in bad faith.
The Complainant narrates the terms of his registered trademark and explains that under the business name Max Polyakov he has founded many successful companies, is a well-known and respected businessman and philanthropist of international repute whose contributions have been recognized worldwide. The Complainant notes that the disputed domain name reproduces the Complainant's registered trademark in its entirety with only the addition of the generic Top-Level Domain ("gTLD") ".xyz". The Complainant notes that the gTLD generally does not affect a domain name for the purpose of determining whether it is identical or confusingly similar to the complainant's mark.
The Complainant asserts that there is no evidence that the Respondent has been commonly known by or associated with the name Max Polyakov and asserts that the Respondent has appropriated the Complainant's name and trademark without permission. The Complainant notes that the Respondent is not affiliated with the Complainant and that the disputed domain name is not derived from the Respondent's name. The Complainant adds that, from the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. The Complainant states that the Respondent cannot rely upon any of the factors listed in paragraph 4(c) of the Policy whereby it may demonstrate that it has rights or legitimate interests in the disputed domain name.
The Complainant states that the evidence strongly suggests that the Respondent has been using the disputed domain name to defame the Complainant, linking him with the pornography industry and accusing him of bribery and corruption, and other allegations designed to damage the Complainant in the eyes of his customers and potential buyers as well as in the eyes of the public. The Complainant asserts that such use cannot be considered an expression of lawful criticism, noting that "the free speech defense" is subject to exceptions and qualifications because of the trenchant and extreme nature of the criticism in a given case. The Complainant adds that a noncommercial use will not be a fair use if its purpose is to tarnish the trademark by extreme criticism. The Complainant submits that in order to fully exercise freedom of speech "it is not indispensable to use someone else's identical or confusingly similar trademark".
The Complainant contends that the Respondent has acted in bad faith with regard to both registration and use of the disputed domain name. The Complainant states that the Respondent has adopted the Complainant's name and trademark and has "taken aim at the Complainant with the apparent intention of mounting as strong a case as possible against it". The Complainant asserts that it is pivotal that the Respondent must have desired to get the attention of Internet users who may be initially confused or assume that the disputed domain name leads to an official site of the Complainant. The Complainant adds that the Respondent clearly knew of the Complainant's name and trademark at the time of registration of the disputed domain name and that this is itself evidence of registration in bad faith.
The Complainant submits that while the Respondent has the right to promote its lawful views about the Complainant it may not do so via a website which carries the Complainant's name and does so against his will. The Complainant notes that the privacy shield used by the Respondent might be legitimate in some cases, such as protecting the identity of a critic against reprisal, but that it is difficult to see "why a PPC advertiser needs to protect its identity except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademarks against infringement, dilution and cybersquatting". (The Panel notes in passing that no evidence has been produced of such alleged use of pay-per-click advertising).
The Complainant adds that a privacy shield may allow registrants to transfer domain name registrations without any public record of such transfer and allowing them to mask the registrant's actual date of registration and/or evade the enforcement of legitimate third party rights. The Complainant concludes that such use defies the Policy's overriding objective to preserve accountability for unlawful acts on the Internet and to curb the abusive registration of domain names and cybersquatting. B. Respondent
The Respondent did not reply to the Complainant's contentions by way of a formal Response. However, in an email to the Center of February 12, 2018, the Respondent's representative provided an informal response to the terms of the Complaint which is summarized below. Throughout this email the Respondent refers interchangeably to the Complainant's copyright and trademark, for example "[the Complainant is] holding copyright (eutm) on the name Max Polyakov". It is clear from the wording however that in most aspects of the email the Respondent is intending to address the terms of the Complainant's claim to hold a trademark rather than copyright per se and the Panel will treat the Respondent's remarks accordingly.
The Respondent states that the Complainant has no rights in the disputed domain name and opposes the request for transfer. The Respondent quotes the filing and registration dates of the Complainant's MAX POLYAKOV registered trademark, noting that the disputed domain name was registered nine months before such mark was registered. The Respondent asserts that the disputed domain name is therefore exempt from proceedings based upon such mark. The Respondent submits that the trademark was presumably registered for the purpose of bringing the Complaint against the Respondent.
The Respondent asserts that the reprinting of the name of a public person in the media or noncommercial Internet pages is not a violation of the Complainant's rights and that the registration of the name of a businessman as a trademark should not be a pretext for restricting freedom of speech or prohibiting media or private individuals from mentioning such name in any context without permission.
The Respondent points out that the title of the webpage associated with the disputed domain name indicates that it is an "UNOFFICIAL FAN PAGE" in the most prominent place and states that the same information is contained in the name of the site for search engines such that the user would see this before visiting the page. The Respondent describes this as "a conscientious and proper warning" that the site is not an official page and asserts that it is not misleading.
The Respondent asserts that the disputed domain name uses the Complainant's name in good faith "solely for the purpose of informing the public about the facts", that the site is not positioned as official and that the purpose of informing society is conscientious. The Respondent submits that the associated website does not have any commercial objectives, has only informational purposes and is not designed to receive any benefit.
The Respondent notes that the Complaint is not specific as to any illegal material on the associated website and asserts that if the Complainant's name is used in good faith with a proper disclaimer then on this basis the Complaint is exhausted. The Respondent concludes that the Panel should not create "a dangerous precedent" by prohibiting the use of the name of a public figure in the media or blogs and that "a positive decision" would be used by the Complainant and other businessmen to remove unwanted publications without relying on court decisions but solely on the basis of a registered trademark. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 Issues: the Respondent's informal Response and the Complainant's supplemental filing
The Respondent has not filed a formal Response but it has addressed the substantive issues in the Complaint by way of its representative's email of February 12, 2018 which was received by the Center before formal notification of the commencement of the administrative proceeding and accordingly before the deadline expired for the filing of a formal Response. While the informal Response responds specifically to the statements and allegations contained in the Complaint in accordance with paragraph 5(c)(i) of the Rules, it does not comply with the remaining sub-paragraphs of paragraph 5(c) of the Rules. Notably, the Response lacks any certification as to the completeness and accuracy of the information contained therein and does not state that its assertions are warranted under the Rules and under applicable law, all in terms of paragraph 5(c)(viii) of the Rules. The absence of the certification required by paragraph 5(c)(viii) of the Rules means that the Panel would be required to assess any statements of fact in the Response with a degree of caution. Nevertheless, in the circumstances, the Panel is prepared to treat the Respondent's representative's email as a partial response.
The Panel turns to consider the Complainant's unsolicited supplemental filing which requests in its introduction that it should be admitted in view of the Response, noting that the Respondent has claimed that MAX POLYAKOV was not a trademark, that consumers have not been misled and that the webpage operated under the disputed domain name was allowed by free speech. The Panel notes in passing that contrary to what the Complainant says, the Respondent did not argue that MAX POLYAKOV was not a trademark but rather that such trademark post-dated the registration date of the disputed domain name.
The Rules do not expressly allow for the submission of unsolicited filings. Paragraph 12 of the Rules states that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case. Paragraph 10(c) of the Rules inter alia requires the Panel to ensure that the administrative proceeding takes place with due expedition.
Section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") states inter alia "Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel…. [P]anels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response. Depending on the content of any admitted supplemental filing, the panel may issue further instructions to the parties, including a rebuttal/reply opportunity to the non-initiating party."
In the present case, the Panel cannot see how the Complainant could not have anticipated all of the arguments contained in the informal Response and to have dealt with these in whatever manner it wished, and to whatever extent it was advised, within the Complaint itself. The Complainant was aware that its registered trademark post-dated the registration of the disputed domain name. The Complainant was aware of the content of the website associated with the disputed domain name. In light of such content, the Complainant could reasonably have anticipated that the Respondent would claim that the disputed domain name was registered for the purpose of noncommercial criticism and represented an exercise of the Respondent's right of freedom of speech.
The Complainant makes a new argument in the supplemental filing regarding the applicability of the Criminal Code of Ukraine. However, this argument could also have been made in the Complaint because the Complainant was already aware of the fact that the Respondent appeared to be based in Ukraine following the Center's email communication to the Complainant dated February 8, 2018 providing the registrant and contact information disclosed by the Registrar. No explanation has been provided by the Complainant as to why it was unable to provide the information now contained in the supplemental filing in the amended Complaint. The Complainant merely requests that it should be admitted in view of the Response and that "the circumstances of this case" will allow it to be admitted.
In all of these circumstances, and in particular bearing in mind the need to ensure that the administrative proceeding takes place with due expedition, the Panel declines to admit the Complainant's supplemental filing. B. Identical or Confusingly Similar
There are two parts to the inquiry under this element of the Policy. The Complainant must first demonstrate that it has rights in a trademark and secondly that the disputed domain name is identical or confusingly similar to such trademark.
The Panel is satisfied that the Complainant has rights in his MAX POLYAKOV trademark as demonstrated by the registered trademark cited by the Complainant and noted in the factual background section above. The Panel notes that the Respondent points out that the registration of the mark post-dates the registration date of the disputed domain name by around nine months. This issue may be relevant to the second or third elements under the Policy but is not relevant to the first element. As section 1.1.3 of the WIPO Overview 3.0 notes, the fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant's standing to file a UDRP case nor a panel's finding of identity or confusing similarity under the first element.
(The Panel notes in passing that a personal name which has been registered as a trademark would provide standing for a complainant to file a UDRP case (see section 1.5.2 of the WIPO Overview 3.0 on this topic)).
Turning to the second part of the inquiry, the Panel notes that the alphanumeric string in the second level of the disputed domain name matches exactly the Complainant's trademark with the substitution of a dash or hyphen in the disputed domain name where there is a space in the trademark. This dash or hypen may be considered to have no particular significance for the purposes of comparison on the basis that spaces are not permitted in domain names for technical reasons and it is therefore common practice to substitute a space with a dash or hyphen character. The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark bearing in mind the fact that the applicable gTLD in a domain name, in this case ".xyz", is typically disregarded in the comparison process (see sections 1.7 and 1.11.1 of the WIPO Overview 3.0).
While the above analysis demonstrates that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy, it is convenient at this point to consider the Complainant's submissions regarding the existence of other rights in his personal name. On this topic, the Complainant asserts that he "has been trading as MAX POLYAKOV for many years", as demonstrated by the Complainant's Annex 4, and under such name has founded many successful companies, is a well-known and respected businessman and philanthropist of international repute. The Complainant's Annex 4 consists of a range of screenshots of profiles of the Complainant taken from various websites.
As section 1.5.2 of the WIPO Overview 3.0 states;
Merely having a famous name (such as a businessperson or cultural leader who has not demonstrated use of their personal name in a trademark/source-identifying sense), or making broad unsupported assertions regarding the use of such name in trade or commerce, would not likely demonstrate unregistered or common law rights for purposes of standing to file a UDRP complaint.
The evidence before the Panel in the Complainant's Annex 4, restricted as it is to a series of personal profiles, is insufficient in the Panel's view to establish common law rights in the Complainant's personal name. For example, it does not show on a preponderance of the evidence that the Complainant uses his personal name for the purpose of merchandising or other commercial promotion of goods or services, or that he intended to do so (see Israel Harold Asper v. Communication X Inc., WIPO CaseNo. D2001-0540). Nor does it show, for example the extent to which the commercial community identifies the Complainant with his companies, the extent to which the Complainant is seen by relevant media and sections of the public as the alter ego and driving force behind his companies, the extent of the personal ownership of the companies by the Complainant, the degree of personal control that the Complainant exercises over the enterprises, the extent to which the Complainant is identified with any major achievements of the enterprises nor whether it can be said that the Complainant has a demonstrable interest in protecting his name for commercial use (see Chung, Mong Koo and Hyundai Motor Company v. Individual,WIPO Case No. D2005-1068).
The Panel is mindful that section 1.3 of the WIPO Overview 3.0 notes that where a respondent is shown to have been targeting the complainant's mark (e.g., based on the manner in which the related website is used) this may support the complainant's assertion that such mark has achieved significance as a source identifier. As noted in the factual background section above, the related website in the present case is used to criticize the Complainant by name. However, in the Panel's opinion, the screenshot of the Respondent's website produced by the Complainant is insufficient to demonstrate that the Complainant's personal name has become, in and of itself, a source identifier of goods or services. In other words, the nature of the website use as demonstrated by the Complainant does not lead to a finding in this case that the Respondent is targeting a trademark of the Complainant, as opposed to making use of the Complainant's personal name to identify him.
The failure of the Complainant to establish common law rights in his personal name in no way affects his standing under the Policy in light of his registered trademark as discussed above. However, as will become apparent when the third element is discussed, in the Panel's view it is fatal to the Complainant's case on registration and use in bad faith.
In these circumstances, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. C. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel's finding in connection with registration and use in bad faith, it is unnecessary for the Panel to address the issue of the Respondent's rights or legitimate interests in the disputed domain name. D. Registered and Used in Bad Faith
On this topic, the focus of the Complaint is upon the registration and use of the disputed domain name in connection with alleged tarnishment of the Complainant's trademark. Using a domain name to tarnish a complainant's mark, for example, by posting false or defamatory content including for commercial purposes, may constitute evidence of a respondent's bad faith (see section 3.12 of the WIPO Overview 3.0). The fundamental flaw in the Complainant's case however is the fact that it has failed to show the existence of any trademark relative to the Complainant's personal name which the Respondent might have had the intent to tarnish at the point at which the disputed domain name was registered. The essence of the Response, which is accepted by the Panel, is that the Respondent registered the disputed domain name to engage in criticism of the Complainant as "a public person".
Whether they be a public figure or not, the Policy does not strike against the targeting of a complainant's reputation through the registration of a domain name which is identical or confusingly similar to a personal name, unless such personal name is also a trademark. The Policy concerns itself with trademark rights and not with other rights which may be possessed by an individual in connection with their personal name, such as the right to privacy or the right to bring an action for defamation.
The Panel accepts the Respondent's primary contention that at the time it registered the disputed domain name the Complainant's registered trademark could not have been in its contemplation as it did not exist. The Complainant has failed to establish the existence of any common law or unregistered trademark rights in his name which pre-date the registration date of the disputed domain name. Nor has the Complainant proved that the Respondent was more likely than not aware of any such rights when it registered the disputed domain name.
In short, the evidence does not show the existence of any trademark rights vested in the Complainant which the Respondent might have set out to tarnish in March 2017. The Complainant's European Union Trade Mark was registered sometime after the registration of the disputed domain name. Section 3.1 of the WIPO Overview 3.0 deals with the question of whether bad faith can be found if the disputed domain name was registered before the trademark was registered or unregistered rights were acquired. It explains that when a domain name is registered in these circumstances, generally speaking, 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. It goes on to apply a qualification to this general proposition that bad faith can be found in certain situations when the respondent is clearly aware of the complainant and the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights.
There is no doubt in the present case that the Respondent was aware of the Complainant at the point where it registered the disputed domain name. It did so with the intent to use the disputed domain name for a criticism site which is described in prominent letters at the top the page as both "unofficial" and a "fan site". There is no evidence, based for example on the kinds of scenarios described in section 3.8.2 of the WIPO Overview 3.0, that it did so in order to tarnish a nascent (typically as yet unregistered) mark which it could reasonably have contemplated coming into existence at a later date. More importantly, the Complainant has been unable to satisfy the Panel that it did so with intent to tarnish a then existent unregistered or common law mark. The Panel finds support in this context from the following observations of the panel in Susan Scheff v. Psyborgue,WIPO Case No. D2008-1177:.
"Moreover, the Policy is concerned with protecting trademarks, not personal names - unless the latter are used as trademarks to label goods or services in commerce. See, e.g., David Pecker v. Mr. Ferris,WIPO Case No. D2006-1514 (a business executive in the publishing industry did not demonstrate that his personal name was used as a mark); The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, P, and G,WIPO Case No. D2002-0184 ("The Complainant has failed to show that his name, well known as it is, has been used in a trademark sense as a label of particular goods or services"). While the Respondent was obviously aware of the Complainant and established a website specifically to criticize her, it is not at all clear that the Complainant's personal name served as a trademark at the time the Respondent registered the disputed domain name in August 2007."
While the Panel sympathizes with the Complainant's predicament, the absence of evidence of UDRP-relevant rights at the date the disputed domain name was registered precludes a remedy for it under the Policy. Even had such remedy been available the Panel would have required to consider whether the criticism on the associated website constituted genuine, noncommercial criticism of the Complainant rather than an attempt to tarnish its trademark. The outcome of that analysis would not necessarily have favored the Complainant given the clear expression of the website as "unofficial" and there being no evidence that the Respondent is trying to link an otherwise wholesome mark with inappropriate, unrelated and less than wholesome content. Furthermore, to quote again from Scheff v. Psyborgue, supra:
"To the extent that the Complaint may be read as suggesting that the Respondent registered and used the disputed domain name in bad faith because his purpose was to defame the Complainant, such a claim is essentially outside the scope of the Policy. See Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers,WIPO Case No. D2000-0190."
Although the Panel has found that the Complainant has failed to prove on the present record that the disputed domain name was registered and used in bad faith within the meaning of the Policy, such finding should in no way be considered as preventing either of the Parties from seeking to pursue this matter through the courts or to take other action if so advised or should they choose to do so. If the Complainant alleges that the Respondent is posting defamatory content or is in violation of a criminal code there are likely to be alternative remedies and/or actions available to it. In that context, it should be noted that this Decision is not addressed to any particular forum that may ultimately be seized of the matter.
The Complainant has failed to satisfy paragraph 4(a)(iii) of the Policy and in these circumstances the Complaint fails. 7. Decision
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Sole Panelist
Date: March 27, 2018.
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