The Complainant is Bridgestone Corporation, Japan, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Natalja Bezuglaja, Ukraine. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Internet Invest, Ltd. dba I (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2019. On June 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 4, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 6, 2019 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 June 10, 2019. The following day, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. On June 12, 2019, the Complainant requested English to be the language of the proceedings. The Respondent did not file any comments regarding the language of the proceedings.
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 in both Russian and English language, and the proceedings commenced on June 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default in both Russian and English language, on July 11, 2019.
The Center appointed Olga Zalomiy as the sole panelist in this matter on July 17, 2019. 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 contends that it is a multinational auto and truck parts manufacturer. The Complainant owns multiple registrations for the BRIDGESTONE mark across the world, such as:
- International Registration No. 1105946, registered on July 27, 2011;
- United States Trademark Registration No. 2886688, registered on Sep. 21, 2004; and
- Japanese Trademark No. 1877890, registered on July 30, 1986.
The Domain Name was registered on March 1, 2013. The Domain Name resolves to an Internet store offering for sale purported Bridgestone tires. The website associated with the Domain Name displays the Complainant’s logo, the Complainant website’s color scheme and purports to be the website of “an official dealer”. 5. Parties’ Contentions A. Complainant
The Complainant contends that it is a multinational auto and truck parts manufacturer. The Complainant claims that the Domain Name is identical or confusingly similar to the Complainant’s trademark. The Complainant states that it is the owner of BRIDGESTONE trademark registrations in various jurisdictions. The Complainant argues that it is a standard practice to disregard applicable generic Top-Level Domain (“gTLD”) from comparison between a disputed domain name and a trademark. The Complainant claims that the Domain Name incorporates the Complainant’s BRIDGESTONE trademark in its entirety. The Complainant argues that the addition of the geographically descriptive term “ua”, which is a country code for Ukraine, does not negate confusing similarity between the Complainant’s trademark and the Domain Name. The Complainant contends that addition of hyphen to the Complainant’s trademark in the Domain Name, does not diminish confusing similarity between the Domain Name and the Complainant’s BRIDGESTONE trademark. The Complainant argues that the Respondent’s use of the Domain Name contributes to the confusing similarity between the Domain Name and the BRIDGESTONE trademark, because the Respondent is using the Domain Name to resolve to a website which impersonates the Complainant’s official dealer and offers for sale potentially counterfeit goods.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that the Respondent is not sponsored by or affiliated with the Complainant. The Complainant claims that the Complainant has not licensed, authorized or permitted the Respondent to register domain names incorporating the Complainant’s trademark, so the Respondent’s use of the Domain Name is not bona fide or legitimate. The Complainant submits that the Respondent Natalja Bezuglaja is not commonly known by the Domain Name, which confirms that she has not rights or legitimate interests in the Domain Name. The Complainant argues that the Domain Name’s use to direct to an online store, which allegedly selling tires of the Complainant, creates an impression of an affiliation with the Complainant, confirms the Respondent’s lack of rights or legitimate interests in the Domain Name. The Complainant claims that the Respondent is not an authorized dealer and that the Respondent’s website contains no disclosure of the relationship or lack thereof, between the Respondent and the Complainant. The Complainant submits that the Respondent’s website offers for sale potentially counterfeit version of the Complainant’s goods, which does not amount to bona fide offering of foods, or a legitimate noncommercial, or fair use.
The Complainant states the Domain Name was registered and is being used in bad faith. The Complainant claims that by registering the Domain Name that incorporates the Complainant’s well-known trademark, a hyphen and a geographically descriptive term, the Respondent demonstrated knowledge of and familiarity with the Complainant’s business. The Complainant argues that it is inconceivable that the Respondent was not aware of the Complainant’s trademark at the time when she registered the Domain Name, because the Respondent used the Complainant’s logo and the Complainant website’s color scheme on her website and the home page of the Respondent’s website includes a brief summary of the Complainant’s profile and history. The Complainant claims that the Respondent is using the Domain Name in bad faith because by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating likelihood of confusion between the Complainant’s BRIDGESTONE mark and the Respondent’s website. The Complainant further argues that the Respondent’s use of the Domain Name also constitutes a disruption of the Complainant’s business because the Respondent’s Domain Name, which is confusingly similar to the Complainant’s mark, directs to the website offering the Complainant’s goods without Complainant’s authorization or approval. The Complainant states that the goods offered on the Respondent’s website are potentially counterfeit. The Complainant claims that the Respondent is engaging in a pattern of cybersquatting, which is evidence of bad faith. The Complainant submits that the Respondent’s use of a privacy service to hide her identity, is another evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the proceeding
Under paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement, unless the parties agree to use a different language, or the registration agreement provides otherwise. The Panel has the right to determine language of the administrative proceeding based on the circumstances of the case.
Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding would be Russian. The Complainant requested that English be the language of the administrative proceeding because the Complainant is unable to communicate in Russian. It would put the Complainant in an unfairly disadvantaged position if it is required to translate the Complaint into Russian. In addition, it would cause unnecessary delay of the proceeding.
Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. “Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, …(vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint.”
The Panel finds that it is likely that the Respondent understands English. First, the Respondent registered the Domain Name in Latin characters. Second, names of some products that are offered for sale on the Respondent’s website, are also in English.
It will be unfair to cause the Complainant to translate the Complaint and accompanying documents into Russian because it will put an undue financial burden on the Complainant and delay resolution of the dispute. At the same time, it will not be unfair to the Respondent if the proceeding is conducted in English because the Respondent appears to understand English and because the Respondent did not object to use of English as the language of this proceeding despite being informed about his right to do so.
Considering the facts and law stated above, the Panel grants the Complainant’s request that English be the language of this proceeding. 6.2. Discussion and Findings
Under paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of these elements regarding the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and are being used in bad faith. A. Identical or Confusingly Similar
Under the first UDRP element, the Complainant must prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Under section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition “WIPO Overview 3.0”), “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”. The Complainant satisfied the standing requirement in this case by submitting evidence of ownership of the BRIDGESTONE trademark.
The Domain Name consists of the Complainant’s BRIDGESTONE trademark, hyphen, the abbreviation “ua”, which is the geographic country code of Ukraine, and the gTLD “.com”. “Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”1 Because the BRIDGESTONE trademark is recognizable within the Domain Name, neither the addition of the geographically descriptive term “ua”, nor the addition of hyphen would prevent a finding of confusing similarity under the first element.2 “The applicable gTLD in a domain name … is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”3 For these reasons, the Panel finds that the Domain Name is confusingly similar to the Complainant’s BRIDGESTONE trademark.
Thus, the Complainant has satisfied the first element of the UDRP. B. Rights or Legitimate Interests
First, the Complainant alleges, and the Respondent does not contradict, that the Respondent has not been commonly known by the Domain Name. The Respondent provided no evidence that the Respondent owns trademark registrations or registered a business under the Domain Name. The WhoIs information on file shows that the Respondent identified herself as Natalja Bezuglaja, which is different from the Domain Name.
Second, the Respondent has not been using the Domain Name in connection with a bona fide offering of goods or services. The Complainant contends that it did not authorize the Respondent to use the Complainant’s BRIDGESTONE trademark in any manner.
While prior UDRP panels recognized that unauthorized sellers might have legitimate interests in a domain name containing complainant’s trademark, their activities should comply with the following cumulative requirements (the “Oki Data Test”):
“(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.” 4
Here, the Respondent failed to comply with the Oki Data test. The evidence on file shows that the website connected to the Domain Name is used as an online store offering for sale BRIDGESTONE tires. The Respondent website’s design exacerbates a misleading impression of an affiliation between the Complainant and the Respondent. The uncontroverted evidence shows that the website prominently displays the Complainant’s BRIDGESTONE logo alongside the words in Russian “монобрендовый магазин шин компании Bridgestone” that translates to English as “mono brand store of ‘Bridgestone’ company’s tires”. The Respondent’s website contains no disclosure of lack of any relationship between the Respondent and the Complainant. Instead, the footer of the Respondent’s website contains the following text in Russian: “купить шины Bridgestone в Киеве и Украине по лучшей цене от официального диллера”, which translates to English as “shop Bridgestone tires in Kiev and Ukraine at the best price from the official dealer”. Finally, the Respondent tries to “corner the market” in domain names for the Complainant by denying it an opportunity to register the domain name for Complainant’s official dealers in Ukraine. Because the Respondent’s use of the Domain Name did not comply with the requirements of the Oki Data Test, its use of the Domain Name did not create rights or legitimate interests in the Domain Name.
Third, the Respondent’s use of the Domain Name is not fair, because “it falsely suggests affiliation with the trademark owner”.5 The nature of the Domain Name itself suggests affiliation between the Complainant and the Respondent because the Domain Name, which contains the Complainant’s well-known trademark and the geographic indication “ua”, directs to the website that offers for sale purported BRIDGESTONE tires in Ukraine. The Respondent’s website displays the Complainant’s logo and uses the same color scheme as the Complainant’s official website. In addition, the website purports to be a website of the Complainant’s official dealer.
The Panel, therefore, finds that the Complainant has made out a prima facie case in respect to the Respondent’s lack of rights or legitimate interests in the Domain Name. Once a complainant has made out the prima facie case, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name.6 Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. 7 Because the Respondent failed to rebut the Complainant’s prima facie case, the Complainant has satisfied the second element of the UDRP. C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
The Panel finds that the Respondent registered the Domain Name in bad faith. The evidence on file shows that the Complainant’s trademark is well-known. It is well-established that mere registration of a domain name that is confusingly similar to a well-known mark by an unaffiliated entity is evidence of bad faith 8. Bad faith registration also may be found where, like here, a domain name, incorporates the complainant’s mark and the geographic indication9.
The Panel also finds that the Respondent is using the Domain Name in bad faith. The Respondent is trying to capitalize on the goodwill of the Complainant’s trademark by using the Domain Name to attract, for commercial gain, Internet users to the Respondent’s website by creating likelihood of confusion with the Complainant’s marks as to the affiliation or endorsement of either the Respondent or its websites. By using the Domain Name in connection with the website that employs the Complainant’s logo, the Complainant website’s colors and the words “official dealer”, the Respondent is profiting from the impression of affiliation between the Domain Name and the Complainant.
Finally, the Panel finds that Respondent registered and is using the Domain Name in bad faith because the Respondent, who has engaged in a pattern of trademark-abusive domain name registration, registered the Domain Name to prevent the Complainant from reflecting the mark in a corresponding domain name. In the past, the Respondent registered a domain name comprised of a well-known trademark of another tire-maker and of the “ua” country code to direct to a website that also displayed a complainant’s logo and claimed to be the complainant’s official dealer in Ukraine. See, Compagnie Générale des Etablissements Michelin v. Natal’ja Bezuglaja / Internet Invest, Ltd. dba I, Whois privacy protection service,WIPO Case No. D2014-0416.
Therefore, the Panel finds that the Domain Name were registered and is being used in bad faith. The third element of the UDRP has been proved. 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 name, be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: July 31, 2019
1Section 1.7, WIPO Overview 3.0.
2 Section 1.8, WIPO Overview 3.0.
3 Section 1.11.1, WIPO Overview 3.0.
4 Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903
5 See section 2.5.1, WIPO Overview 3.0.
6 Section 2.1, WIPO Overview 3.0.
7 Id.
8 Section 3.1.4, WIPO Overview 3.0.
9 Section 3.2.1, WIPO Overview 3.0.
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