The Complainant is Steinberg Media Technologies GmbH, Germany, represented by Raffay & Fleck Patentanwälte, Germany.
The Respondents are Domain Admin, Whois Privacy Corp., Bahamas and Filippova Maya, Russian Federation (collectively referred as the “Respondent”). 2. The Domain Names and Registrars
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2020. On October 20, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 21 and 22, 2020, the Registrars transmitted by email to the Center their verification responses confirming that Filippova Maya is listed as the registrant of the first disputed domain name and that Domain Admin, Whois Privacy Corp is listed as the registrant of the second disputed domain name and providing the contact details. On October 28, 2020, the Center noted that there appears to be at least prima facie grounds sufficient to warrant accepting the Complaint for the Panel’s final determination of the consolidation request on appointment. The Center verified that 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 October 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2020. The Center appointed Antony Gold as the sole panelist in this matter on December 15, 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 produces music editing software which processes digital signals in a manner which simulates traditional recording studio hardware. The Complainant describes software with this functionality as Virtual Studio Technology, and it uses the acronym of this term, VST, as a core element of its branding. The Complainant has produced VST-related software for over 20 years and also licenses its VST audio plug-in to third parties who produce audio software. The Complainant has registered a large number of trade marks to protect its VST brand. These include, by way of example only, European Union Trade Mark, registration number 000763367, for VST, registered on March 16, 1999 in classes 9 and 42. In addition, the Complainant has registered many trade marks for VST, when used in combination with other words, including VST CLOUD, VST CONNECT and VST TRANSIT. The first disputed domain name was registered on October 10, 2005. The second disputed domain name was registered on March 17, 2016. The first disputed domain name resolves to a website branded as “VST-Club.com” offering a wide variety of music editing software for sale. These include a number of the Complainant’s products such as Steinberg Cubase Pro and Nuendo. In addition, other product ranges, such as VST Instruments and VST Plug-ins, are offered for sale. The second disputed domain name resolves to a very similar website, save that it is branded “Shop-vst.com”. 5. Parties’ Contentions A. Complainant The Complainant says that the disputed domain names are identical or confusingly similar to a trade mark in which it has rights. It refers to its portfolio of VST marks, full details of one of these marks having been set out above, and says that its use of VST, particularly in conjunction with other words, means that Internet users are likely to assume that “Shop-VST” and “VST-Club” are part of the Complainant’s portfolio of VST trade marks. Furthermore, the use within the first and second disputed domain names respectively of the terms “club” and “shop” is likely to be perceived by Internet users as denoting a shop and a club which are dedicated to VST products, that is audio editing software which uses the Complainant’s VST technology. Accordingly, these additional words do not avoid confusion between the disputed domain names and the Complainant’s VST marks but, in fact, increase it. The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain names. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods and services. The current use of the disputed domain names does not indicate any legitimate interest in them on the part of the Respondent since it is providing unlicensed, illegally gained or “cracked” versions (that is modified software from which features such as copy protection have been disabled or removed) which cannot amount to a bona fide offering. In particular, the very low prices at which the Respondent’s products are offered for sale suggest that the software has been “cracked” or stolen. Furthermore, the Respondent has not been commonly known by the disputed domain names, nor is the Respondent making a legitimate non-commercial or fair use of them without intent to tarnish the Complainant’s trade marks. Lastly, the Complainant says that the disputed domain names were registered and used in bad faith. The Complainant’s VST brand was very well-known prior to the registration of the first disputed domain name in 2005. This is evident from, by way of example, the English language edition of Wikipedia in September 2005 which refers to the Complainant having developed the VST standard. The fact that the most or all of the products offered for sale at the websites to which the disputed domain names resolve are illegal and are most-likely “cracked” and unlicensed versions of software amounts to bad faith use. The Respondent is using the Complainant’s widely-known VST trade mark to lure potential customers, both of the Complainant and of other companies who use the Complainant’s VST technology under license, onto its websites in order to purchase illegal copies of the Complainant’s software. The inclusion on the Respondent’s websites of links to the Complainant’s own website where more information about specific products can be found is clearly intended to deceive prospective customers. The Respondent is infringing both the Complainant’s trade marks as well as the copyright in its software and the copyright of other companies. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary matter – consolidation of Respondents The information provided by the Registrars of the first and second disputed domain names to the Center on October 21 and 22 establishes that Filippova Maya is the underlying registrant of the first disputed domain name and the registrant of the second disputed domain name is Domain Admin, Whois Privacy Corp. Whilst proceedings under the Policy are normally brought against a single Respondent, paragraph 10(e) of the Rules provides that, in certain circumstances, a panel may consolidate multiple domain names dispute. Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains that; “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties”. It then lists a number of factors which are typically considered by UDRP panels in determining whether consolidation would be appropriate. The dates of registration of the disputed domain names were many years apart and this would normally point against them being controlled by a single entity. However, there are several other indications which suggest that they are under common control. First the content and layout of the websites, including the fonts and colour schemes as well as the range (and, in at least some instances, the prices) of products offered for sale, are virtually identical. On any analysis, the similarities are compelling. Second, the same mark, VST, is being targeted in each instance. Third, the naming pattern of both disputed domain names is similar; each couples the Complainant’s mark with another word, that is “club” or “shop”, which will suggest to the Internet user that the website to which each of the disputed domain names resolves is likely to feature collections of products relating to the Complainant’s VST technology. The evidence therefore strongly indicates that the disputed domain names are under common control and neither Respondent has sought to challenge the Complainant’s assertion that this is the case. Accordingly, the Panel considers that consolidation in these circumstances is fair and equitable to all Parties and that these proceedings have been properly brought by the Complainant as a single Complaint. 6.2 Substantive issues Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate. Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint: (i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar The Complainant has provided details of the many registered trade marks it owns for VST, including the mark in respect of which full details have been given above. These establish its rights in this mark. As a technical requirement of registration, the generic Top Level Domain (“gTLD”), that is “.com” in the case of the disputed domain names, is typically disregarded when assessing confusing similarity. The only difference between the Complainant’s VST mark and the first disputed domain name is that the mark is followed by a hyphen and the word “club”. The second disputed domain name differs from the Complainant’s mark in that the word “shop”, followed by a hyphen, precedes the mark. A hyphen is of negligible significance when applying the test for confusing similarity. Neither of the additional words “shop” or “club” prevents a finding that each of the disputed domain names is confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Complainant’s VST trade mark is recognizable within each of the disputed domain names and the Panel accordingly finds that each of them is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue. So far as paragraph 4(c)(i) of the Policy is concerned, section 2.2 of the WIPO Overview 3.0 provides examples of factors which might point to a bona fide offering of goods and services by a respondent. These include “other evidence generally pointing to a lack of indicia of cybersquatting intent”. The evidence in these proceedings points in the other direction; the Respondent’s use of the disputed domain names to resolve to websites offering the Complainant’s products, amongst others, for sale is clearly intended to deceive Internet users into believing that it is the Complainant’s website, or is operated with its authorization and demonstrates a cybersquatting intent. As the panel found in Philipp Plein v. Privacy Protection Service INC d/b/a PrivacyProtect.org / Norma Brandon, cheapphilippplein,WIPO Case No. D2015-1050; “The Respondent’s use of a domain name that is confusingly similar to the Complainant’s trade marks in order to attract Internet users looking for genuine products of the Complainant’s company and to offer them unauthorized copies instead is a “bait and switch” strategy that lacks bona fides and does not give rise to rights or a legitimate interests under the Policy”. A similar view was taken by the panel in Option One Mortgage Corporation v. Option One Lending,WIPO Case No. D2004-1052; “It is undisputed that Complainant and Respondent operate in the same field. Respondent’s use of a confusingly similar Domain Name on a website offering for sale overlapping products and services is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use pursuant to Policy”. Essentially the same considerations apply in these proceedings and, irrespective of whether the products offered for sale are “cracked” or stolen, as the Complainant has alleged, the Respondent’s use of the disputed domain names does not therefore amount to a bona fide offering of goods and services. The second and third circumstances under paragraph 4(c) of the Policy are inapplicable; there is no evidence that the Respondent is commonly known by either of the disputed domain names and the use to which the disputed domain names have been put is commercial in character and does not constitute fair use. The Complainant has made out a prima facie case under the second element and, in the absence of any response to it by the Respondent, the Panel finds that it has no rights or legitimate interests with respect to the disputed domain names. C. Registered and Used in Bad Faith The disputed domain names couple the Complainant’s mark, well-known within its field as at the date of their registration, with the descriptive words “club” and “shop”. These circumstances point clearly to bad faith registration. See, by way of example, Valentino S.p.A. v. Qiu Yufeng, Li Lianye,WIPO Case No. D2016-1747; “[b]y virtue of its extensive use and advertising since the 1960s, the Complainant and its trade mark VALENTINO enjoy a significant reputation worldwide and a strong online presence. There is no doubt that that the Respondents were aware of the Complainant and its trade mark when they registered the disputed domain names, given that they have reproduced the Complainant’s trade marks and have listed VALENTINO products for sale on their websites. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith”. Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out in paragraph 4(b)(iv) of the Policy are if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. The use to which the Respondent has put the disputed domain names falls precisely within these circumstances in that they resolve to websites which offer the Complainant’s products for sale. The belief of Internet users that the Respondent’s websites are operated by, or on with the authority of, the Complainant will be reinforced because of the confusing similarity between the disputed domain names and the Complainant’s VST trade marks. Moreover, there is no conceivable good faith use which the Respondent could make of the disputed domain names. Finally, the Respondent has not made any attempt to justify its conduct or to rebut the Complainant’s assertions. See, in similar circumstances; Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited,WIPO Case No. D2016-1607. The Panel accordingly finds that the disputed domain names were registered and 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 names Antony Gold
Sole Panelist
Date: December 29, 2020
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