The Complainant is Systemgates Limited, Saint Vincent and the Grenadines, represented by Eugenia Bachysh, Ukraine.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2020. On April 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 14, 2020, the Registrar transmitted by email to the Center its verification response disclosing further contact information for the registrant of the Domain Name which differed from the contact information in the Complaint. The Center sent an email communication to the Complainant on April 17, 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 April 21, 2020. 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, and the proceedings commenced on April 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2020. The Center appointed Olga Zalomiy as the sole panelist in this matter on May 21, 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 offers online financial services, such as currency exchange operations on the Forex market. The Complainant owns the Ukrainian trademark registration No. 163039 for the WELTRADE trademark issued on October 25, 2012. The Domain Name was registered on August 13, 2017. The Domain Name used to resolve to a website in Russian criticizing the Complainant and its services. Currently, the Domain Name redirects users to the domain name ˂weltreide.com˃ that was created on April 19, 2020. The Domain Name resolves to a website in Russian displaying negative reviews of the Complainant and its services. The home page of the website features the following statements in Russian: “write to this email address [...]@weltreide.com about return of money from the forex-scammer. Lawyers for chargeback are needed. All questions direct here: [...]weltreide.com.” 5. Parties’ Contentions A. Complainant The Complainant contends that it is a well-known company operating worldwide. The Complainant contends that the Domain Name is identical to its WELTRADE trademark because the Domain Name incorporates the Complainant’s trademark in its entirety. The Complainant alleges that the only difference between the Domain Name and the Complainant’s trademark is the generic Top-Level Domain (“gTLD”) “.pro”, which should be disregarded under the confusing similarity test as a standard registration element. The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name because the Respondent has no permission or authorization from the Complainant to use its trademark in domain names. The Complainant alleges that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services because the Respondent is using the Domain Name to capitalize and trade on the goodwill associated with the WELTRADE trademark in order to attract potential clients for the Respondent’s services. Further, the Complainant contends that the Respondent did not register the Domain Name for the purpose of criticizing the mark owner. Instead, according to the Complainant, the Respondent registered the Domain Name to advertise the Respondent’s own services. The Complainant alleges that while the Respondent’s website associated with the Domain Name makes it immediately apparent to Internet users that the website does not belong to the Complainant, it is not sufficient to give the Respondent any rights to use the Domain Name and the Complainant’s trademark. The Complainant contends that the Respondent does not need to use the Complainant’s trademark and the Domain Name, which is identical to the Complainant’s trademark to provide public with critical information displayed on the website. The Complainant alleges that there is no evidence that the Respondent is commonly known by the Domain Name. The Complainant contends that the Respondent registered and is using the Domain Name in bad faith because the Respondent registered the Domain Name for the purpose of disrupting the business of a competitor and to attract, for commercial gain, Internet users to its website, by creating likelihood of confusion with the Complainant’s WELTRADE mark as to the source, affiliation, or endorsement of the Respondent’s website. The Complainant alleges that it is inconceivable that the Respondent was not aware of the Complainant’s well-known mark in 2017 when it registered the Domain Name or that it was infringing on Complainant’s rights because the Respondent references the Complainant’s website at the bottom of its website. The Complainant contends that the Respondent is intentionally targeting the WELTRADE trademark to siphon away Internet users and disrupt business of the Complainant. The Complainant argues that the Respondent tarnishes the Complainant’s trademark by associating the WELTRADE mark with Respondent’s misleading activities. The Complainant contends that the Complainant contacted the Respondent in the end of 2017 about untruthful reviews published on the website at the Domain Name. The Respondent suggested that the parties enter into an agreement to promote services of the Complainant on the Internet. After the parties signed the agreement, the Complainant paid the Respondent. According to the Complainant, the Respondent did not fulfill its obligations under the agreement, so the Complainant terminated its agreement with the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to 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 is being used in bad faith. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights. The submitted evidence shows that the Complainant owns a trademark registration for the WELTRADE trademark. Pursuant to section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), this satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. The Domain Name consists of the Complainant’s WELTRADE trademark, and the gTLD “.pro”. 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 It is well-established, that the applicable gTLD should be disregarded under the confusingly similarity test as a standard registration requirement2 . Because the Domain Name consists of the entirety of the Complainant’s trademark and the gTLD should be disregarded from the assessment of confusing similarity, it is identical to the Complainant’s WELTRADE trademark. The Complainant has satisfied the first element of the UDRP. B. Rights or Legitimate Interests To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under UDRP paragraph 4(c) include the following: (i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. To prove the second UDRP element, the Complainant must make out a prima facie case in respect of the lack of rights or legitimate interests of the Respondent. The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interest in the Domain Name. The evidence on file shows that the Respondent has not been commonly known by the Domain Name. The Respondent has not had a permission or authorization from the Complainant to use the Complainant’s trademark in domain names. Nor has the Respondent used the Domain Name in connection with a bona fide offering of goods or services. The Respondent has been using the Domain Name to direct to a website criticizing the Complainant’s services and to advertise its services helping customers with return of funds purportedly lost by the Complainant. Pursuant to section 2.6.1 of the WIPO Overview 3.0., “to support fair use under UDRP paragraph 4(c)(iii), the respondent’s criticism must be genuine and noncommercial”. The evidence on file shows that while the Domain Name purports to resolve to a criticism website, the website is only a pretext for commercial gain, which weighs against finding of fair use3 . In this case, the Respondent’s use of the Domain Name cannot be justified as fair use, taking into account the following: (1) the Respondent’s website, which purports to be a criticism website, in fact, was created to force the Complainant to pay the Respondent for posting positive reviews. Based on the evidence provided by the Complainant as well as on publicly available sources consulted by the Panel4 , including the Internet Archive5 , the Respondent’s website contained negative reviews of the Complainant and its services, which were substituted for glowing reviews, after the parties entered into a promotional agreement and the Complainant paid the Respondent. After the Complainant terminated its agreement with the Respondent, the Respondent’s website reinstated only negative reviews of the Complainant and its business; (2) the website at the Domain Name advertises the Respondent’s own services offering Internet users to return their money lost by the Complainant. Presumably, the Respondent derives financial gain from such services; (3) and the Respondent failed to file any response to the complaint and to rebut the Complainant’s allegations. Furthermore, even if the Respondent’s website had been a legitimate criticism website, the Respondent’s use of the Domain Name would not be fair. Pursuant to section 2.6.2 of the WIPO Overview 3.0, “Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e., The Panel finds that the Complainant has made out the prima facie case. As a result, the burden of producing evidence demonstrating it has rights or legitimate interests in the Domain Name has shifted to the Respondent. The Respondent has failed to present any rebutting evidence. The Panel concludes that the Complainant is deemed to have satisfied the second element of the UDRP. C. Registered and Used in Bad Faith Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name was registered and is being used in bad faith. In this case, the Respondent registered and is using the Domain Name in bad faith because the Respondent registered a criticism website targeting the Complainant for commercial gain. As clearly shown by the Complainant and the publicly available evidence, namely pages from the website at the address of the Domain Name captured in the Internet Archive, correspondence between the parties and evidence of payment submitted by the Complaint, the said website was set up to directly target the Complainant and it is being used with only one motivation in mind, which is to force the Complainant to pay the Respondent to remove the negative reviews from its website. After the Complainant contacted the Respondent about untruthful reviews posted on its website, the Respondent offered the Complainant to enter into a promotion agreement whereby the Respondent was supposed to protect the Complainant’s brand on its website. When the Complainant terminated its agreement with the Complainant, reviews published on the Respondent’s website changed from positive to negative. Further, at some point after the filing of the Complaint, the Respondent redirected the Domain Name to another domain name, ˂weltreide.com˃, which looks identical to the previous Respondent’s website at the Domain Name and displays highly negative reviews about the Complainant and its services. In view of the above, the Panels finds that the Domain Name was registered and is being used in bad faith. The Complainant satisfied the third element of the UDRP. 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 Domain Name, Olga Zalomiy 1 Section 1.7, WIPO Overview 3.0. 2 Section 1.11.1, WIPO Overview 3.0. 3 See, also section 2.5.3, WIPO Overview 3.0. 4 The Panel can consult such sources and to conduct independent research at its discretion. See, section 4.8, WIPO Overview 3.0. 5 “www.archive.org”
Sole Panelist
Date: May 31, 2020
Full & Egal Universal Law Academy