The Complainant is Instant UPC Codes, LLC of Clearwater, Florida, United States of America (“United States”), represented by Phil Nicolosi Law, P.C., United States.
The Respondent is Dmitry Ratushnyak of Moscow, Russian Federation. 2. The Domain Names and Registrar
The disputed domain names and (the “Disputed Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2018. On October 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 16, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2018.
The Center appointed John Swinson as the sole panelist in this matter on November 27, 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 Instant UPC Codes, LLC, of the United States. According to the Complaint, the Complainant is one of the largest global resellers of UPC barcodes. The Complainant has been offering its services via the domain name since 2012. The Complainant states that it has clients in over 150 countries worldwide, and has over 250,000 customers.
The Complainant offers its UPC and EAN code resale services under the name INSTANT UPC CODES (the “Trade Mark”). The Complainant claims common law trade mark rights in this name.
The Respondent is Dmitry Ratushnyak, an individual who resides in the Russian Federation. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Respondent registered the Disputed Domain Name on March 10, 2018. The Respondent registered the Disputed Domain Name on August 7, 2018.
The Disputed Domain Names show different websites which each purport to offer for sale UPC codes and EAN codes. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions. Identical or Confusingly Similar
By virtue of the Complainant’s longstanding use and promotion of the Trade Mark, the Trade Mark has become well known as the source of the Complainant’s UPC and EAN barcode resale services. The Complainant has offered its services under the Trade Mark since July 2012.
It is not necessary to register a trade mark with a government authority to establish rights in a trade mark under the Policy. The Complainant has established common law rights in the Trade Mark by virtue of its continuous and exclusive use of the Trade Mark in commerce for more than six years.
It is well established that a de minimis difference between a domain name and a trade mark is insufficient to overcome a finding of confusing similarity. Here, the Disputed Domain Name differs from the Trade Mark by omitting the word “codes” and adding a hyphen. The Disputed Domain Name differs from the Trade Mark by replacing the words “upc codes” with the word “barcode”, and adding a hyphen. A UPC code is a type of barcode. The average Internet user attempting to purchase a barcode online, whether it is a UPC barcode or otherwise, would be confused as to the source of any barcode products sold through the Disputed Domain Name . Rights or Legitimate Interests
The Respondent is not commonly known by the Disputed Domain Names or the Trade Mark or any similar derivation thereof, and does not have any trade mark rights in the Disputed Domain Names. As such, the Respondent has no rights or legitimate interests in the Disputed Domain Name under paragraph 4(c)(ii) of the Policy.
The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain. In contrast, the services offered by the Respondent at the websites associated with the Disputed Domain Names directly compete with those offered by the Complainant. This use is not bona fide for the purpose of the Policy. Registered and Used in Bad Faith
The Complainant began operating its website at the Disputed Domain Name long before the Respondent registered the Disputed Domain Names.
The Respondent registered the Disputed Domain Names primarily for the purpose of disrupting the Complainant’s business. This is evidence of bad faith registration and use under paragraph 4(b)(iii) of the Policy. The Respondent registered the Disputed Domain Names to launch websites which are not associated with the Complainant, but which offer products and services which compete directly with those offered by the Complainant.
Further, the Respondent is using the Disputed Domain Names to intentionally attempt to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, as set out under paragraph 4(b)(iv) of the Policy. It is well-settled that the use of a complainant’s trade mark to redirect Internet users to a website unaffiliated with the complainant for the respondent’s commercial benefit is evidence of bad faith under paragraph 4(b)(iv) of the Policy.
It is clear that the Respondent had actual knowledge of the Complainant and the Trade Mark before he registered the Disputed Domain Names. By 2018, the Complainant’s business was widely used online to purchase UPC codes. The likelihood that the Respondent randomly chose the Disputed Domain Names without knowing about the Complainant or the Trade Mark is minimal. It is unreasonable to believe that a direct competitor would not have been aware of the Complainant prior to registration of the Disputed Domain Domains. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark 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 Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights.
The Complainant claims unregistered or common law rights in the Trade Mark. In order to successfully assert common law or unregistered trade mark rights, the Complainant must show that the Trade Mark has become a distinctive identifier associated with the Complainant or its goods or services (i.e., that the Trade Mark has acquired a “secondary meaning”) (see section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel accepts the Complainant’s submission that it has developed a significant reputation in the Trade Mark since it first began operating the website at the domain name in July 2012, and that the Complainant has common law rights in the Trade Mark.
The Panel considers that each of the Disputed Domain Names is confusingly similar to the Trade Mark. The Disputed Domain Name differs from the Trade Mark by adding a hyphen and omitting the word “codes”. The Disputed Domain Name differs from the Trade Mark by adding a hyphen and substituting the term “upc” for the term “bar”. In each case, the Trade Mark is still recognizable within the Disputed Domain Name (see section 1.7, WIPO Overview 3.0) and the relevant addition, omission or substitution is insufficient to avoid a finding of confusing similarity.
The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:
- The Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods or services. Given the Complainant has been operating under the Trade Mark for a number of years, the Panel considers that the Respondent is using the Disputed Domain Names to create confusion among users of the Complainant’s services in order to divert traffic to the Respondent’s websites (where the Respondent offers services which compete directly with the services offered by the Complainant). Such use is not bona fide.
- There is no evidence that the Respondent is commonly known by the Disputed Domain Names, or has any registered or common law rights in the Disputed Domain Names.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain. The websites at the Disputed Domain Names purport to offer UPC codes for sale, so presumably the Respondent intends to derive revenue from the Disputed Domain Names.
The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.
The Respondent registered the Disputed Domain Names in 2018. By this time, the Complainant had already been operating under the Trade Mark for over five years.
In these circumstances, where the Respondent appears to be offering services in direct competition to the Complainant using domain names which are confusingly similar to the Trade Mark, it is likely the Respondent knew (or should have known) of the Trade Mark at the time he registered the Disputed Domain Names. As submitted by the Complainant, in this case, it is unlikely the Respondent chose the Disputed Domain Names at random. The Panel considers that the Respondent registered the Disputed Domain Name in bad faith.
Here, the Panel can reasonably infer that the Respondent sought to take advantage of the Complainant’s reputation in the Trade Mark, and is using the Disputed Domain Names because of this reputation. This is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
In light of the above, and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on the third element 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.
John Swinson
Sole Panelist
Date: December 11, 2018
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