The Complainant is Rustam Gilfanov of Riga, Latvia, represented by Cobalt Legal, Latvia.
The Respondent is Brow Davi of Kiev, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2018. On October 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 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 October 26, 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 October 31, 2018.
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 November 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2018.
The Center appointed Assen Alexiev as the sole panelist in this matter on December 4, 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 a citizen of the Russian Federation, resident in Latvia and engaged in the provision of IT services, primarily gaming software.
The Complainant has not registered its personal name as a trademark, and submits that it has unregistered trademark rights in his name. The Complainant contends that it uses its personal name as a trademark, which has become a distinctive identifier associated with the Complainant and the marketing and sales of its IT services, such as thorough the brand LUCKY LABS established and maintained by the Complainant for IT services related to international software developing services in marketing, game and financial sphere.
The disputed domain name was registered on March 1, 2018. It is associated to a website that contains highly critical materials against the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s name, because it incorporates it entirely.
In relation to its contention for having unregistered trademark rights in its personal name, the Complainant points out that it has used its personal name in connection to his business for over six years not only in the regional, but also in the global context, and refers to the scale of its business, which employs about 1,000 employees working under the LUCKY LABS brand. The Complainant also refers to the nature and extent of the advertising and media recognition, which according to it show that its personal name is used as a trademark and is closely related to its business activity.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not given its consent to the Respondent for the use of its trademark and for the registration of the disputed domain name, and the Respondent has not used it in connection with a bona fide offering of goods or services, but has engaged in cybersquatting. The Respondent has used the disputed domain name to publish untrue and defamatory information about the Complainant and its business. The website at the disputed domain name contains accusations against the Complainant for illegal activities such as software pirating, operation of illegal gambling business, financing of terrorism and statements that the Complainant holds money in offshore jurisdictions and is on the sanctions list of the Ukrainian President. This website is accessible to the public in the English, Russian, and Ukrainian languages and negatively influences the business reputation of the Complainant and prevents it from developing its commercial activity. According to the Complainant, the Respondent intends to divert consumers and to tarnish the Complainant’s trademark by publishing incorrect, misleading, defamatory information on the Complainant without providing any references to sources of the information and true facts.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. It was registered primarily for disrupting the business of the Complainant. The Respondent has published defamatory information, including false allegations that the Complainant has been sanctioned by the government of Ukraine, on the website at the disputed domain name without any references to sources of the information and without providing any factual background. Thus, the Respondent tarnishes the Complainant’s trademark. The Complainant has reasons to believe that the Respondent might be one of his competitors, especially taking into consideration that the competitors of the Complainant have already taken actions against it before. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(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 Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a Response addressing the contentions of the Complainant and the evidence submitted by it. A. Identical or Confusingly Similar
As stated in section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), to establish unregistered or common law trademark rights for the purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. As further stated in section 1.5.2 of the WIPO Overview 3.0, the UDRP does not explicitly provide standing for personal names which are not registered or otherwise protected as trademarks. In situations where a personal name is being used as a trademark-like identifier in trade or commerce, the complainant may be able to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services. Merely having a famous name such as a businessperson who has not demonstrated use of its 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 Complainant has based its Complaint on the contention that it has unregistered trademark rights in its personal name. To support this contention, the Complainant has submitted a printout of its personal LinkedIn profile and of the title page of the website of the IT company Lucky Labs, several articles in the media that describe this company and mention that the Complainant is one of its owners, and an interview with the Complainant as an owner of Lucky Labs. However, these documents do not represent evidence that the Complainant has offered IT services under its personal name and that there is public recognition of its personal name as a trademark for IT services. Even if one accepts that the Complainant has become popular as a business personality, this is not sufficient for it to acquire unregistered trademark rights in its personal name. The essential analysis is whether the Complainant has used his personal name as a trademark for certain services, and whether as a result of such use its personal name has acquired a secondary meaning referring to the IT services provided by the Complainant. This has not been established in the present proceeding, and the Panel is not satisfied that the Complainant has shown sufficient evidence that it has used its personal name (rather than the company name Lucky Labs) for offering or promoting IT services and sees no basis for a conclusion that the Complainant has established that it has unregistered trademark rights in its personal name.
Therefore, the Panel finds that the Complainant has failed to establish the first element of the Policy. B. and C. Rights or Legitimate Interests and Registered and Used in Bad Faith
As the Complainant has failed under paragraph 4(a)(i) of the Policy, it is not necessary for the Panel to consider the other elements of the Policy.
This however does not preclude the possibilities that the Complainant may seek relief in a court of competent jurisdiction. 7. Decision
For the foregoing reasons, the Complaint is denied.
Assen Alexiev
Sole Panelist
Date: December 17, 2018
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