The Complainant is Proton Technologies AG, Switzerland, internally represented.
The Respondent is Mihail Remezov, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2020. On February 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 20, 2020, 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 21, 2020, 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 amendment to the Complaint on March 4, 2020. On February 21, 2020, the Center transmitted an email in English and Russian regarding the language of the proceeding to the parties. On March 4, 2020, the Center received the Complainant’s request that English be the language of the proceeding. The Center verified that the Complaint together with the amendment to 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 in English and Russian, and the proceedings commenced on March 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 2, 2020. The Center appointed Mariya Koval as the sole panelist in this matter on April 7, 2020. 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 Swiss company, which provides a virtual private network service of global reach under the name ProtonVPN. The Complainant’s product ProtonVPN in particular, has been widely known since 2017 (Annex 4). With over 20 million users, the Proton line of security products, developed and marketed by the Complainant, is one of the world’s best known line of consumer encryption products and is the subject of frequent news and articles (Annex 5). The Complainant is the owner of numerous PROTONVPN trademark registrations (the “PROTONVPN Trademark”), including the following relevant ones: Trademark Jurisdiction Registration No. Registration Date International Class PROTONVPN United States of America 86889303 May 30, 2017 38 PROTONVPN European Union 017886422 July 25, 2018 38, 42 PROTONVPN Switzerland 666396 November 20, 2014 38, 42 Since 2016, the Complainant operates the domain name The Disputed Domain Name was registered on November 26, 2019. At the date of this decision, the Disputed Domain Name redirects to the Complainant’s website. However, according to the evidence presented by the Complainant (Annex 6 to the Complaint), the Disputed Domain Name previously resolved to a website cloning the content of the Complainant’s website. The Respondent appeared to be engaged in distribution of malicious code. 5. Parties’ Contentions A. Complainant The Complainant contends that that the Disputed Domain Name is identical to the Complainant’s PROTONVPN Trademark in view of the Disputed Domain Name completely reproduces the distinctive Complainant’s Trademark. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name in view of the following facts: - the Respondent has never been commonly known by the Disputed Domain Name; - the Respondent has not acquired trademark or service rights; - the Respondent has never used the Disputed Domain Name in connection with a bona fide offering of goods or services, as the website under the Disputed Domain Name never offered a functioning service; - the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. There is no evidence of legitimate fair use since the registration of the Disputed Domain Name. The Disputed Domain Name and associated website falsely impersonate the Complainant. The Complainant also alleges that that the Respondent has registered and is using the Disputed Domain Name in bad faith in view of the Respondent intentionally attempted to attract, for illicit commercial gain, Internet users to his website, by creating a high likelihood of confusion with the Complainant’s Trademark, trying to pass as the Complainant in the eyes of Internet users. Moreover, according to the evidences presented in Annex 8 to the Complaint the Disputed Domain Name distributed malicious code through an executable passing as the installer of the ProtonVPN software that is a strong evidence of the Respondent’s bad faith. The Complainant further argues that the fact that the Respondent used the Complainant’s Trademark on the website under the Disputed Domain Name also demonstrates that he could not have ignored the existence of the Complainant’s rights at the time of the registration and has knowingly registered the Disputed Domain Name with full awareness of the Complainant’s Trademark as well as the goodwill associated with it. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the complainant to succeed must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which 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 was registered and is being used in bad faith. 6.1. Language of Proceedings In accordance with paragraph 11 of the Rules 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 Registrar confirmed that the language of the registration agreement for the Disputed Domain Name is Russian. The Complainant submitted the Complaint in English and requested that English be the language of the administrative proceedings on the grounds that: 1) the Respondent is familiar with the English language, because the Disputed Domain Name resolves to a website containing English language content only; 2) it would be unfair to require the Complainant to translate into Russian because it would result in additional expenses for the Complainant and cause unnecessary delay of the proceeding; 3) given that the English language is the sole language used by the Respondent regarding the Disputed Domain Name, proceeding in English comports with “the spirit of fairness and justice” of the process. The Complainant, being a Swiss company, is not obviously able to understand and to communicate in Russian. Forcing the Complainant to translate the Complaint and annexes thereto, would result in unfair additional expenses for the Complainant and would delay this UDRP proceeding. The Respondent, having received the Center’s communication regarding the language of the proceeding in both Russian and English, did not make any submissions regarding the language of the proceeding. The Disputed Domain Name and generic Top-Level-Domain (“gTLD”), both are in Latin characters and not Cyrillic characters. The Panel also considers that in view of the content of the website under the Disputed Domain Name being completely in English, it is clear that the Respondent is well familiar with the English language. Paragraph 10(c) of the Rules sets out that the Panel shall ensure that the administrative proceeding takes place with due expedition. Having considered all circumstances of this case, the Panel concludes under paragraph 11(a) of the Rules that English shall be the language of the proceeding. A. Identical or Confusingly Similar The Complainant has established its rights in the PROTONVPN Trademark according to the different registrations in different jurisdictions. The Complainant’s PROTONVPN Trademark is entirely reproduced in the Disputed Domain Name combining with the gTLD “.store”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1, “the applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. In accordance with section 1.11.2 of the WIPO Overview 3.0 “the practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to “new gTLDs”)”. Therefore, the addition of gTLD “.store” to the Disputed Domain Name in this case does not abolish identity or confusing similarity between the Complainant’s Trademark and the Disputed Domain Name. Accordingly the Panel holds that the Disputed Domain Name, disregarding the gTLD “.store”, is identical to the Complainant’s PROTONVPN Trademark in which the Complainant has rights. Therefore, the Panel finds that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests In accordance with section 2.1 of the WIPO Overview 3.0 while the overall burden of proof in UDRP proceedings is on the Complainant, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. If such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidences demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to come forward with such relevant evidence, the Complainant is generally deemed to have satisfied the second element. Taking into consideration the fact that the Disputed Domain Name had been previously used for redirecting Internet users to a website, which contains an image of the Complainant’s Trademark, the Panel finds that the Disputed Domain Name has been used to mislead Internet users seeking the Complainant. Moreover, according to the information, which was available on the website under the Disputed Domain Name the website contained the following text “GET PROTONVPN NOW”. Such use of the Disputed Domain Name creates strong impression of connection with the Complainant; however, at the same time the website under the Disputed Domain Name contained no information with respect to the relationship with the Complainant (or lack thereof). Therefore, the Panel cannot consider such use of the Disputed Domain Name as bona fide offering goods or services, or a legitimate noncommercial or fair use. Moreover, the Disputed Domain Name completely incorporates the Complainant’s Trademark. According to the WIPO Overview 3.0, section 2.5.1, “UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation”. There is no evidence that the Respondent appears to own any PROTONVPN trademark, nor is the Respondent commonly known by the Disputed Domain Name. Furthermore, the Panel concludes that in view of the reputation of the PROTONVPN Trademark it is highly unlikely that anybody, especially a natural person, could legitimately adopt the Disputed Domain Name for commercial use other than for an intent to create confusion with the Complainant. Futhermore, taking into consideration the reputation of the Complainant’s Trademark, it is impossible to assume that the Respondent was unaware of the Complainant’s brand and business at the time of registration of the Disputed Domain Name. In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Therefore, the second element in paragraph 4(a) of the Policy has been satisfied by the Complainant. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that indicate bad faith conduct on the part of the respondent, namely: “(i) circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or (ii) the respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location or of a product or service on the respondent’s website or location.” In the Panel’s view, the fact that the Respondent knew about the Complainant’s Trademark at the time of the registration of the Disputed Domain Name is undisputable in view of that the Disputed Domain Name completely reproduces the Complainant’s Trademark. Furthermore, the Respondent was using Disputed Domain Name to access a website, which contains the Complainant’s Trademark and almost completely copies the Complainant’s website under the domain name Also, in accordance with the evidence presented by the Complainant (Annex 8) the Disputed Domain Name distributed malicious code through an executable passing as the installer of the ProtonVPN software that is a strong evidence of the Respondent’s bad faith. Finally, the Respondent did not file any response and did not take any efforts for justification of its actions with respect to the Disputed Domain Name registration and use. In view of the foregoing, the Panel finds that the paragraph 4(a)(iii) of the Policy has been satisfied by the Complainant and accordingly, the Disputed Domain Name has been registered and is being used in bad faith. 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 Mariya Koval
Sole Panelist
Date: April 21, 2020
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