The Complainant is A Medium Corporation of San Francisco, California, United States of America, represented by Crowell & Moring, LLP, United States of America.
The Respondent is Protection of Private Person of Moscow, Russian Federation / Yurii Selivanov of Russian Federation. 2. The Domain Names and Registrar
The disputed domain names and are registered with Registrar of Domain Names REG.RU LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2018. On August 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 9, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 11, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date the Center sent an email in regard to the language of the proceedings. The Complainant filed an amended Complaint on October 16, 2018 and requested English to be the language of the proceeding. The Respondent did not reply on the language of the proceedings.
The Center verified that the Complaint together with 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 October 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2018.
The Center appointed Taras Kyslyy as the sole panelist in this matter on November 12, 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 an online publishing platform, which has been developed by Twitter co-founder Evan Williams, and was launched in 2012. The Complainant is an online resource which contains professional and amateur stories, news, commentaries, essays, art and other media content in the fields of culture, science, design, politics, entrepreneurship and others. Since its founding the Complainant has spent significant amounts for promotion and advertising its MEDIUM trademark.
The Complainant owns United States Registration of MEDIUM trademark No. 5015382 in respect of classes 9, 35, 38, 41, 42, and 45, registered on August 9, 2016.
The Complainant operates the domain name containing its MEDIUM trademark for promotion of its services.
The disputed domain name was registered on July 26, 2018 and currently resolves to a webpage blocked due to security concerns. The disputed domain name was registered on July 10, 2018 and currently resolves to inactive webpage. Before the Complaint was filed, the disputed domain names were resolving to webpages using the Complainant’s trademark and offering an “airdrop” or exchange of cryptocurrency with a high rate of return. 5. Parties’ Contentions A. Complainant
The disputed domain names are confusingly similar to the Complainant’s registered trademark. The disputed domain names are virtually identical to the Complainant’s trademark. The Complainant’s trademark was famous and distinctive at the time of the disputed domain names registrations. The addition of the “airdrop” and “news” extensions does not alleviate any similarity between the disputed domain names and the Complainant’s trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not commonly known by the name Medium and is not using the disputed domain names in connection with a bona fide goods or services. The Respondent is clearly relying on consumers’ recognition of the Complainant’s trademark to attract consumers to its own websites and trading off of the Complainant’s goodwill and reputation, in order to defraud Internet users. The Respondent is intentionally trying to lure users that are interested in the Complainant’s technology, and respect its brand, in order to entice them to hand over cryptocurrency that they incorrectly believe they are exchanging for a high rate of return. The Complainant has not licensed or otherwise authorized the Respondent’s use of its MEDIUM trademark in any manner, including use in the disputed domain names.
The disputed domain names were registered and are being used in bad faith. The disputed domain names were registered solely for the purpose of intentionally attempting to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites and the fake products and services offered on the Respondent’s websites. The Respondent knew about the Complainant’s trademark while registering the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of Proceedings
The language of the Registration Agreement for the disputed domain names is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all the relevant circumstances.
The Complainant has submitted in its Complaint that the language of the proceedings be English as the disputed domain names contain Roman (ASCII) characters, as well as the Respondent has published English language content on the disputed domain names. The Respondent did not reply on the language of the proceedings.
The Panel notes that no objection was made by the Respondent to the Complaint being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English. The Respondent had the opportunity to raise objections or make known its preference but did not do so.
The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.
Taking all these circumstances into account, this Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English. B. Identical or Confusingly Similar
The generic Top-Level Domain (“gTLD”) “.com” in the disputed domain names is viewed as a standard registration requirement and is disregarded for the purposes of the confusing similarity test (see, e.g., Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275).
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
The disputed domain names include the Complainant’s trademark MEDIUM, adding descriptive “news” associated with the Complainant’s business, “airdrop” associated with the Respondent’s services, and the gTLD “.com”, which does not preclude a finding of confusing similarity between the disputed domain names and the Complainant’s trademark.
Considering the above the Panel believes the disputed domain names are confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain names.
Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain names.
The Respondent is not commonly known by the disputed domains names, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642).
The Complainant did not license or otherwise agree for use of its registered trademark by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain names could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).
The disputed domain names used to redirect Internet users to a website with a logo similar to the Complainant’s to make the Internet users believe that they actually accessed the Complainant’s website. Past UDRP panels confirmed that such actions prove that a registrant has no rights or legitimate interests in a disputed domain name (see Daniel C. Marino, Jr. v. Video Images Productions, et al.,WIPO Case No. D2000-0598, Houghton Mifflin Co. v. Weatherman, Inc.,WIPO Case No. D2001-0211).
Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
At the time of the registration of the disputed domain names the Respondent knew, or at least should have known about the existence of the Complainant’s prior registered and known trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113).
According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online 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. In this case, the disputed domain names were resolving to a websites using the Complainant’s trademark and designed to intentionally attract, for commercial gain, Internet users by creating likelihood of confusion with the Complainant’s trademark as to the source of the website and its service. The Panel finds the above confirms the disputed domain names were registered and used in bad faith.
Moreover, the Respondent used a privacy service to register the disputed domain names. According to section 3.6 of the WIPO Overview 3.0, the use of a privacy or proxy service merely to avoid being notified of a UDRP proceeding, may support an inference of bad faith; a respondent filing a response may refute such inference. However, no such response was provided by the Respondent. The Panel finds that such use of the privacy service in this particular case confirms registration of the disputed domain names in bad faith.
Considering the above the Panel believes the disputed domain names were registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy. 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 disputed domain names, and be transferred to the Complainant.
Taras Kyslyy
Sole Panelist
Date: November 23, 2018
Full & Egal Universal Law Academy