The Complainant is reStore, Limited Liability Company, Russian Federation, represented by Brand Monitor Limited Liability Company, Russian Federation.
The Respondent is Xramova V Tatyana, 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 11, 2021. On February 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 12, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 12, 2021, 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 February 12, 2021. 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 February 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2021. The Center appointed Olga Zalomiy as the sole panelist in this matter on March 12, 2021. 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 an Apple Authorized Reseller and service provider in Russia. The Complainants owns the domain name ˂re-store.ru˃ and operates its business through the website “www.re-store.ru”. The Complainant owns two trademark registrations for the RE:STORE mark: - Russian trademark registration No. 548949 for the word mark, registered on July 24, 2015; with the priority date of June 4, 2013; and The Respondent registered the Domain Name on November 25, 2018. The Domain Name directs to a website that offers for sale IPHONE® smartphones in Russia. The website prominently displays the Complainant’s stylized RE:STORE trademark next to the word “discount”, the color scheme of the RE:STORE mark and the color scheme and layout of the Complainant’s website. 5. Parties’ Contentions A. Complainant The Complainant claims that it specializes in promotion and sales of third parties’ goods. The Complainant contends that it owns several registrations of the RE:STORE trademark in Russia. The Complainant submits that it is widely known on the Russian market under the names “RESTORE” and “RE:STORE”. The Complainant alleges that it is the holder of the ˂re-store.ru˃ domain name. The Complainant argues that the Domain Name is confusingly similar to its trademark because it consists of the word “re-store”, which is confusingly similar to the Complainant’s RE:STORE trademark and identical to the Complainant’s widely known domain name. The Complainant contends that a colon cannot technically be a part of a domain name, “re-store” with a dash is the most accurate way the Complainant’s marks can be represented in a domain name. The Complainant contends that the use of the “.discount” generic Top-Level Domain (“gTLD”) may mislead consumers into believing that the Domain Name belongs to a Complainant’s subdivision or a Complainant’s promotional program. The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Domain Name because of the following circumstances: 1) the Respondent has not used the Domain Name in connection with a bona fide offering of goods or services; 2) the Respondent has not been known by the Domain Name; 3) the Respondent is not making a legitimate noncommercial of fair use of the Domain Name; and 4) the Domain Name directs to a website that offers the same services as those of the Complainant. The Complainant submits that the Respondent registered and is using the Domain Name in bad faith because the Respondent is using the Domain Name, which is associated with the Complainant’s trademark, to offer the same services as those of the Complainant. The Complainant claims that the Respondent is using a designation identical to the Complainant’s trademarks in colors and placement on the website at the Domain Name to disrupt the Complainant’s business. The Complainant contends that the Respondent should have been aware of the Complainant’s trademarks at the time of the Domain Name registration because it registered the Domain Name almost five years after the Complainant’s trademark registration. 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 to which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect to the Domain Name; and (iii) the Respondent has registered and is using the Domain Name 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 to which the Complainant has rights. The submitted evidence shows that the Complainant owns two trademark registrations for the RE:STORE 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 test for confusing similarity “involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”.1 It is well-established, that the applicable gTLD should be disregarded under the confusingly similarity test as a standard registration requirement.2 The Domain Name consists of the Complainant’s RE:STORE trademark with a hyphen instead of a colon and the gTLD “.discount”. The colon “ : ” cannot be reflected in domain names, so the hyphen here serves as a functional equivalent of the colon symbol. Because the only difference between the Complainant’s mark and the “re-store” part of the Domain Name is replacement of the colon with its functional equivalent, it does not prevent the finding of confusing similarity between the Domain Name and the Complainant’s trademark. Since the “.discount” gTLD is disregarded under the confusing similarity test, the Domain Name is confusingly similar to the Complainant’s trademark. The Panel finds that the Complainant has satisfied the first element of the UDRP. B. Rights or Legitimate Interests To satisfy the second UDRP element, a complainant must make a prima facie case in respect to the lack of rights or legitimate interests of the respondent. 3 Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on the evidence, shall demonstrate a respondent’s rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the UDRP: (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. The evidence on file shows that the Complainant has not licensed or permitted the Respondent to use the Complainant’s RE:STORE trademark in domain names, or for any other purpose. Nor has the Respondent been commonly known by the Domain Name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name. The Respondent’s conduct is also inconsistent with a bona fide offering of goods and services given that the website at the Domain Name suggested affiliation between the Complainant and the Respondent, only identifying owner of the website as “Re :Store DISCOUNT”. By reproducing the Complainant’s trademark, the Complainant’s domain name and the Complainant website’s color scheme, the Respondent’s website attempts to pass off as the Complainant or its division and to profit from such passing off. For the reasons stated, the Panel finds that the Complainant has made a prima facie case in respect to the lack of rights or legitimate interests of the Respondent in the Domain Name. Once a complainant makes a prima facie case, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Domain Name. The Respondent has failed to do so. Thus, the Panel concludes that the Complainant has 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. The UDRP establishes that, for the purposes of paragraph 4(a)(iii), “bad faith” registration and use of a domain name can be established by a showing of circumstances indicating that the respondent is using the domain name to intentionally attempt 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.4 Prior UDRP panels have found “the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: […] (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name.” The Panel concludes, on the evidence submitted by the Complainant, that the Respondent has registered and is using the Domain Name in bad faith. Given the Respondent’s use of the Domain Name that is virtually identical to the Complainant’s ˂re-store.ru˃ domain name for the website in the same color scheme as the Complainant’s website that resells the same goods as the Complainant does under the Complainant’s RE:STORE trademarks, the Respondent could not plausibly assert that she did not register the Domain Name to trade on the goodwill of the Complainant’s trademark. Further, the evidence shows that the Respondent’s website at the Domain Name is designed to look like a website of the Complainant. While the website contains no information about its owner, it identifies only as “Re :Store DISCOUNT”. The Panel concludes that the Respondent registered and is using the Domain Name to intentionally attempt 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 because the Respondent is attempting to pass off for the Complainant to sell similar goods. Based on the evidence presented, the Panel finds that the Domain Name was registered and is being used in bad faith. Therefore, the Complainant has 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 Section 2.1, WIPO Overview 3.0. 4 See, Policy, paragraph 4(b)(iv).
- Russian trademark registration No. 548950 for the word mark in black and red colors registered on July 24, 2015; with the priority date of June 4, 2013.
Sole Panelist
Date: March 26, 2021
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