The Complainant is British American Tobacco (Brands) Limited, United Kingdom, represented by Demys Limited, United Kingdom.
The Respondent is Aleksandr Danil’cev, Glo-expert, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2020. On June 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 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 June 11, 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 June 11, 2020. The Center verified that the Complaint together with 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 June 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2020. The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on August 6, 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 British multinational cigarette and tobacco manufacturing company founded in 1902 and headquartered in London, United Kingdom. The Complainant manufactures, distributes and markets a wide range of products under different brands and in particular tobacco heating products under the name “GLO”. The products sold under the GLO trademark are advertised and sold in many countries including Ukraine, where the Respondent is located according to the information provided by the Registrar. The Complainant operates a website at “www.myglow.com.ua”, which is intended for the Ukrainian market. The Complainant is the owner of various registrations for the GLO trademark, including: - European Union trademark registration number 015179922 registered on July 6, 2016, in classes 9, 11 and 34; - Ukrainian trademark registration number 230855 registered on August 28, 2017, in classes 9, 11 and 34 The Respondent registered the disputed domain name on June 27, 2019. The disputed domain name used to resolve to a commercial website offering for sale GLO products in the Ukrainian language. On April 30, 2020, the Complainant sent an email to the Respondent requesting a written explanation outlining the motivation of the Respondent for registering the disputed domain name. The Complainant received no reply. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to its prior GLO trademark as it reproduces it in full together with the descriptive word “expert”. The Complainant has not licensed or otherwise permitted the Respondent to use the GLO mark or any variation thereof. The Complainant also contends that the Respondent is not commonly known by the disputed domain name, does not own any trademark incorporating GLO or GLO EXPERT and has never traded under this name. The Complainant alleges that the Respondent was aware of the GLO trademark before registering the disputed domain name all the more so since it sells the Complainant’s products on the website associated with the disputed domain name. The Complainant further contends that on its website, the Respondent did not accurately disclose its relationship, or rather lack thereof, with the Complainant. There were no visible disclaimers on the website linked to the disputed domain name and the website under the disputed domain name Finally, the Complainant asserts that the lack of disclaimer, the use of the Complainant’s product images and the prominent use of the Complainant’s trademark in the disputed domain name are such that the disputed domain name has been registered and used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following: (i) the domain name registered by the respondent 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 registered by the respondent has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant owns various trademark registrations for the trademark GLO. The disputed domain name As a rule, UDRP panels consider that the addition of a descriptive term does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0“) and Deutsche Lufthansa AG v. Transure Enterprise Ltd / Above.com Domain Privacy,WIPO Case No. D2012-1742). In the present case, the trademark GLO is clearly recognizable in the disputed domain name. The mere addition of the descriptive word “expert” does not change the overall impression produced by the disputed domain name and is not sufficient to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark (See for example DEKRA e.V.v. Andrzej Potrac,WIPO Case No. D2015-1223). UDRP panels also accept that a generic Top-Level Domain (“gTLD”), such as “.com”, should be disregarded when assessing whether a domain name is identical or confusing similar to a trademark (see section 1.11 of the WIPO Overview 3.0). The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Based on the information submitted by the Complainant, the Respondent does not appear to have rights or legitimate interests in respect of the disputed domain name, nor has the Complainant granted to the Respondent an authorization to use the disputed domain name. Moreover, there is no evidence indicating that the Respondent is commonly known by the disputed domain name, owns any trademark incorporating GLO or GLO EXPERT or has ever traded under this name. The disputed domain name was used in connection with a commercial website offering for sale GLO branded products. As mentioned in section 2.8 of the WIPO Overview 3.0, panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test” (Oki Data Americas Inc. v. ASD, Inc.,WIPO Case No. D2001-0903), the following cumulative requirements will be applied in the specific conditions of a UDRP case: (i) the respondent must actually be offering the goods or services at issue; In the present case, the Panel does not have enough elements to decide whether the first and second conditions of the “Oki Data test” were satisfied. The Complainant states that to the best of its knowledge, the website associated with the disputed domain name has always resolved to a website selling what appear to be the Complainant’s products. Accordingly, the two first conditions of the Oki Data test may be satisfied. However, the screenshots of the landing page of the website to which the disputed domain name used to resolve did not feature any disclaimer concerning the relationship between the Respondent and the Complainant. In addition, the trademark GLO of the Complainant, with its specific font, was displayed in the top left corner of the page of each page of the Respondent’s website, thus creating the impression of an official website, operated or at least endorsed by the Complainant. By failing to accurately disclose the relationship, or rather lack thereof with the Complainant, the Respondent conveyed the false impression that it was authorized to use the Complainant’s trademark. The Panels finds accordingly that the requirements of the “Oki Data test” are not met. Finally, the Respondent did not file a response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent’s silence does nothing to rebut such prima facie case. Accordingly, the Panel finds that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Given that the registration and use of the Complainant’s trademark predates the registration of the disputed domain name and given the sale of the Complainant’s products on the website associated to the disputed domain name, the Panel accepts that the Respondent most probably knew of the Complainant’s trademark when it registered the disputed domain name. Considering that the Respondent used the stylized trademark of the Complainant on its website, as well as images of the Complainant’s products without disclosing that it was not an authorized reseller of Complainant, and was not sponsored or endorsed by Complainant, the Panel finds it likely that the Respondent intentionally created a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website for commercial gain. This is a circumstance of use of a domain name in bad faith according to paragraph 4(b)(iv) of the Policy. For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith, and that the Complainant has satisfied the condition set forth in paragraph 4(a)(iii) of the Policy. 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 Anne-Virginie La Spada
(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.
Sole Panelist
Date: August 20, 2020
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