The Complainant is FMC Corporation, United States of America, represented by Mamunya IP, Ukraine.
The Respondent is Петров Юрий Олегович (Petrov Yurij Olegovich), Russian Federation.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2021. On July 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 28, 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 July 30, 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 July 30, 2021.
On July 30, 2021, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. On July 30, 2021, the Complainant reconfirmed its request that English be the language of the proceedings referring to respective arguments in support of its request. The Respondent did not provide any comments regarding the language of the proceedings.
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 August 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2021.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on September 20, 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 BackgroundFMC Corporation, the Complainant in the present proceedings, is an agricultural sciences company which provides solutions to growers all over the world. Its products include insecticides, herbicides, and fungicides, including the product called “Coragen” used for insect control.
The Complainant is the owner of numerous CORAGEN trademark registrations, including:
- the International Registration CORAGEN No. 898744 registered on September 22, 2006;
- the Ukrainian Registration CORAGEN (in Cyrillic) No. 104846 registered on March 25, 2009.
The Respondent registered the Domain Name on June 5, 2021.
On July 13, 2021, the Complainant sent by email a cease-and-desist letter demanding the Respondent stop using and transfer the Domain Name to the Complainant. However, the contact email provided by the Respondent on the website under the Domain Name turned out to be invalid.
As of the date of this Decision, the Domain Name is inactive. However, according to the evidence submitted by the Complainant, as of June 2021, the Domain Name resolved to a website offering for sale the Complainant’s products (the “Website”).
5. Parties’ Contentions A. ComplainantThe Complainant requests that the Domain Name be transferred to the Complainant. According to the Complainant, each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case.
First, the Complainant submits that the Domain Name is identical or confusingly similar to the CORAGEN trademark registrations of the Complainant.
Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the Domain Name.
Third, the Complainant submits that the Domain Name was registered and is being used in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows:
(i) the disputed 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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A. Language of ProceedingsThe language of the Registration Agreement for the Domain Name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
As noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case, and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334).
The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that it is unable to communicate in Russian and translation of the Complaint would unfairly disadvantage and burden the Complainant, resulting in delaying the proceedings and adjudication of the matter. Moreover, the Complainant argues that the Respondent is familiar with English, given that the Domain Name is registered with the “.store” Top-Level Domain (the “TLD”) and contains numerous phrases in English. Moreover, the contact person is identified on the Website as “Coragen Ukraine LLC”, meaning that the Respondent is aware of the meaning of the term “LLC”.
The Panel accepts that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian. Moreover, it has been proven to the Panel’s satisfaction that the Respondent is likely to be familiar with the English language.
Thus, taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.
B. Identical or Confusingly SimilarThe first element that the Complainant must establish is that the Domain Name is identical or confusingly similar to the Complainant’s trademark rights.
The Complainant holds several valid CORAGEN trademark registrations, which precede the registration of the Domain Name.
The Domain Name incorporates the Complainant’s CORAGEN trademark in its entirety. As numerous UDRP panels have held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696).
This Panel finds that the addition of the term “ukraine” does not prevent confusing similarity between the Domain Name and the Complainant’s trademark. UDRP panels have consistently held that 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. See WIPO Overview 3.0, section 1.8.
The TLD “.store” in the Domain Name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1.
Given the above, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Thus, the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name.
The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made 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 prior to the dispute; or
(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(c) that it intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case.
On the contrary, it results from the evidence in the record that there are the Complainant’s CORAGEN trademark registrations, which predate the Respondent’s registration of the Domain Name. There is no evidence in the case that the Complainant has licensed or otherwise permitted the Respondent to use the CORAGEN trademark or to register the Domain Name incorporating this trademark. There is also no evidence to suggest that the Respondent has been commonly known by the Domain Name.
Moreover, it results from the evidence in the record that the Respondent does not make use of the Domain Name in connection with a bona fide offering of goods or services, as well as it does not make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain.
According to the evidence submitted by the Complainant, as far as in June 2021, the Domain Name resolved to the Website offering for sale the Complainant’s products, although the Respondent is not the Complainant’s official representative in Ukraine and/or is endorsed by the Complainant. In this regard, the Panel notes that the Complainant presented evidence showing that the legal entity (Coragen Ukraine LLC) indicated on the Website as a contact person does not exist under Ukrainian law.
Moreover, the Panel notes that the Complainant presented reasons to believe that the Respondent was offering for sale counterfeit or fake Coragen products. Also, the images provided on the Website picturing the Complainant’s products were used without the Complainant’s permission. Lastly, there was no statement anywhere on the Website as to the relationship, or lack thereof, to the Complainant.
In sum, such use of the Domain Name does not qualify as a legitimate noncommercial or fair use.
Furthermore, the Panel finds that the Domain Name suggests an affiliation with the Complainant and its CORAGEN trademark, as the Domain Name wholly reproduces the Complainant’s trademark in entirety with the additional term “ukraine”. Fundamentally, the Respondent’s use of the Domain Name will not be considered “fair” if it falsely suggests affiliation with the Complainant as a trademark owner. See WIPO Overview 3.0, section 2.5.
Given the above, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Name. Thus, there is no evidence in the case file that refutes the Complainant’s submissions. The Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad FaithThe third requirement the Complainant must prove is that the Domain Name has been registered and is being used in bad faith.
Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See WIPO Overview 3.0, section 3.1.
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
As indicated above, the Complainant’s rights in the CORAGEN trademark predate the registration of the Domain Name. This Panel finds that the Respondent was or should have been aware of the Complainant’s trademark at the time of registration of the Domain Name. This finding is supported by the type of products offered through the Domain Name. The Respondent in all likelihood registered the Domain Name with the expectation of taking advantage of the reputation of the Complainant’s trademark.
Moreover, the Domain Name was being used in bad faith by the Respondent to offer the Complainant’s products for sale without any authorization from the Complainant’s. The Panel accepts that the Respondent was using the Domain Name in an attempt to attract, for commercial gain, Internet users to the Website by creating a likelihood of confusion with the CORAGEN trademark as to the source, sponsorship, affiliation, or endorsement of the website or the products offered on this Website by the Respondent.
For the reasons discussed above, the Panel finds that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Piotr Nowaczyk
Sole Panelist
Date: September 28, 2021