The Complainant is Rubik’s Brand Limited, United Kingdom, represented by Demys Limited, United Kingdom.
The Respondent is Domain Admin, Whois protection, this company does not own this domain name s.r.o., Czech Republic / Hulmiho Ukolen, Poste restante, Finland. 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 24, 2020. On April 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 29, 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 April 29, 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 amended Complaint on April 30, 2020. 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 May 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2020. The Center appointed Dr. Beatrice Onica Jarka as the sole panelist in this matter on May 26, 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 toy and game manufacturer incorporated in London, United Kingdom. While the Complainant has over twenty products, the best known is the “Rubik’s Cube”. The Rubik’s Cube was invented in 1974 by Ernő Rubik, a Hungarian sculptor and professor of Architecture, who applied for a patent for the Rubik’s Cube in Hungary on January 30, 1975, branding the product the Rubik’s Cube for its commercial launch in 1980. The Rubik’s Cube is famous as it has continued to sell globally with more than 450 million units having been sold around the world since its creation and has been a part of the permanent exhibition at Museum of Modern Art in New York City, United States of America (“United States”), since 1982. The Rubik’s Cube has been referenced numerous times in a number of third party articles. The Complainant is the proprietor of a large number of registered trademarks related to the term RUBIK’S and RUBIK’S CUBE (e.g., United States Reg. No. 1242974, for the word mark RUBIK’S CUBE, with a first use date of March 18, 1980) and the owner of many related domain names, such as The Respondent is Hulmiho Ukolen. The Respondent has caused or allowed its details to be redacted from the public WhoIs, as the Respondent’s details have been revealed during the administrative procedure. The Respondent has been party to at least 43 disputes under the UDRP before. In 42 of those disputes the panels held that the Respondent had registered and used the related domain names in bad faith. The disputed domain name was created on March 26, 2002. The website associated with the disputed domain name has always resolved to pay-per-click (“PPC”) advertising. 5. Parties’ Contentions A. Complainant The Complainant contends that: - the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1)), which in regards of the filing date for some of its older marks, pre-dates the registration of the disputed domain name by more than 21 years. - the disputed domain name is visually similar and aurally identical or at least highly similar to its marks, as “rubik’s cube” and “rubix cube” are pronounced in the same manner. - the disputed domain name differs from the Complainant’s marks only in letters “ks” being replaced by phonetically identical letter “x”. For technical reasons, an apostrophe cannot be represented in the domain space, - the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, para. 4(a)(ii)) - the Complainant has found no evidence that the Respondent has been commonly known as “rubik’s cube” or “rubix cube” prior to or after the registration of the disputed domain name. The Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use its registered trademarks. - the Complainant has found no evidence that the Respondent owns any trademarks incorporating the term “rubik’s cube” or “rubix cube”. Equally, the Complainant has found no evidence that the Respondent has ever traded as “rubik’s cube” or “rubix cube”. - the Complainant further asserts that the disputed domain name has not been used in connection with any legitimate noncommercial or fair use, without intent for commercial gain, in terms of Policy paragraph 4(c)(iii), as the Complainant observes that the website associated with the disputed domain name has always resolved to PPC advertising. - the Respondent did not reply to the Complainant’s letter dated February 07, 2020, setting out any alleged rights or legitimate interests in the disputed domain name despite being invited to provide an explanation, - the disputed domain name displays PPC advertising and, on this point, the Complainant contends that the PPC advertising links on the website associated with the disputed domain name capitalize on the value of the Complainant’s marks. - the disputed domain name uses the attractive force the Complainant’s well-known marks in order to misdirect users to third party advertising, as exhibited. Such “bait and switch” use will be to the clear detriment of the Complainant’s rights. Therefore, the related advertising does not and cannot confer any legitimate interest on the Respondent. - even if the PPC advertising was placed “automatically” on the website associated with the disputed domain name by the registrar of record or other third party then the Respondent is still responsible and accountable for the website and the advertising thereon. As noted above, the disputed domain name appears to be listed for sale on a third-party website. - where a domain name is a phonetical variant of a well-known mark, as in the present matter, the offering of a domain name for sale cannot, in and of itself, confer a legitimate interest on the registrant of said domain name. - the disputed domain name was registered and is being used in bad faith (Policy, paragraph 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3)). - given that the Complainant and its marks are well-known, as outlined above, and as the disputed domain name is phonetically similar to the Complainant’s RUBIK’S CUBE marks, the Complainant asserts that it is inconceivable that the Respondent did not have the Complainant firmly in mind when it registered the disputed domain name. - the disputed domain name is listed for sale for USD 28,574, which presumably is in excess of Respondent’s out-of-pocket costs related to the disputed domain name; such circumstances as well qualify as bad faith registration and use of the disputed domain name within the specific meaning of paragraph 4(b)(i) of the Policy. - as the disputed domain name was created in 2002, that there is no evidence of the Respondent having made detrimental reliance upon any representations, acts or omissions of the Complainant, nor could any such reliance, if made, be regarded as reasonable in the face of the strength of the Complainant’s rights, the fame of its trademark and the intentional selection by the Respondent of a confusingly similar domain name to such mark for the purposes of confusing Internet users and benefitting unfairly from advertising revenue. - the Respondent has provided false or incomplete contact information, as it has not only made use of a privacy protection service in order to conceal its true identity, but also provided faulty or incomplete contact information. - the Respondent has been party to at least 43 disputes under the UDRP before. In 42 of those disputes the panels held that the Respondent had registered and used the related domain names in bad faith. From the full list of disputes involving the Respondent, it is evident that the Respondent has engaged in a pattern of abusive registrations. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar In order to establish the first element of the Policy, the Complainant should show that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant holds rights. Based on the assertions and evidence presented by the Complainant, this Panel finds undisputable that the Complainant holds rights in the RUBIK’S CUBE trademarks. This Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark RUBIK’S CUBE and represents a clear case of typo-squatting in the sense of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.9. The Panel agrees with the Complainant that there is a high visual similarity and aural identicalness between the disputed domain name and the Complainant’s marks. The disputed domain name differs from the Complainant’s marks only in letters “ks” being replaced by phonetically identical letter “x”. For technical reasons, an apostrophe cannot be represented in the domain space. This represents a classic example of typo-squatting – the registration of domain names with different letters with the intention to confuse users. For all the reasons above, this Panel finds that the disputed domain name is confusingly similar to the marks RUBIK’S CUBE and that the Complainant has established the first element of the paragraph 4(a) of the Policy. B. Rights or Legitimate Interests In order to establish the second element of the Policy, the Complainant has to show that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production shifts to the Respondent, according to WIPO Overview 3.0, section 2.1. In these proceedings, this Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and such showing has not been rebutted by the Respondent, as it did not reply to the Complainant’s contentions. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, as there is no evidence that the Respondent has been commonly known as “rubik’s cube” or “rubix cube”, the Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use its registered trademarks, and there is no evidence that the Respondent owns any trademarks incorporating the terms “rubik’s cube” or “rubix cube”, or that the Respondent has ever traded as “rubik’s cube” or “rubix cube”. Moreover, the Complainant further asserts (and the facts show) that the disputed domain name has not been used in connection with any legitimate noncommercial or fair use, without intent for commercial gain, in terms of Policy paragraph 4(c)(iii), as the Complainant observes that the website associated with the disputed domain name has always resolved to PPC advertising. The Panel agrees with the Complainant that according to WIPO Overview 3.0, section 2.9, there is a strong UDRP practice in the sense that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. Last, but not least, the offer for sale of the disputed domain name appearing on a third-party website cannot be considered as a bona fide offering. As noted, the contentions of the Complainant had not been rebutted by the Respondent, and the Panel agrees with the Complainant that the registration and use of a known trademark in a domain name cannot be considered as bona fide. Therefore, in the opinion of this Panel, the Complainant has fully demonstrated that the Respondent lacks any rights or legitimate interests in the disputed domain name and consequently, the second element of paragraph 4(a) of the Policy is therefore established. C. Registered and Used in Bad Faith The Complainant asserts several circumstances which the Panel considers relevant evidence for the bad faith of the Respondent in registering and using the disputed domain name. In this sense, the Panel agrees with the Complainant’s assertions that due to the well-known character of the RUBIK’S CUBE marks, it seems unlikely that the Respondent was unaware of the Respondent’s activities and of the existence of the trademarks and the Complainant’s domain names and the Respondent has undertaken a typo-squatting version of the RUBIK’S CUBE trademark at the time of registration of the disputed domain name. The Panel agrees also with the Complainant, that the listing of the disputed domain name sale for USD 28,574 USD, which presumably is in excess of the Respondent’s out-of-pocket costs related to the disputed domain name well qualifies as bad faith of the disputed domain name within the specific meaning of paragraph 4(b)(i) of the Policy. Lastly, the Panel finds that the fact that the Respondent has provided false or incomplete contact information, corroborated with the fact that the Respondent has been a party to at least 43 disputes under the UDRP before. In 42 of those disputes, the panels held that the Respondent had registered and used the related domain names in bad faith, is major evidence that the Respondent has engaged in a pattern of abusive registrations Accordingly, the Complainant has demonstrated that the Respondent registered and used in bad faith the disputed domain name and therefore, the third element of paragraph 4(a) of the Policy is established. 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 Dr. Beatrice Onica Jarka
Sole Panelist
Date: June 8, 2020
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