The Complainant is Steinberg Media Technologies GmbH, Germany, represented by Raffay & Fleck Patentanwälte, Germany.
The Respondent is Alexander Stamenkovic, Serbia.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2021. On August 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 2021, 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 September 8, 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 September 9, 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 September 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2021.
The Center appointed Assen Alexiev as the sole panelist in this matter on October 27, 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 BackgroundThe Complainant develops audio software. One of its products is VST (an acronym for Virtual Studio Technology), an audio plug-in software interface, developed by the Complainant in 1996.
The Complainant is the owner of the following trademark registrations for the sign “VST” (the “VST trademark”):
− the European Union trademark VST with registration No. 000763367, registered on March 16, 1999 for goods and services in International Classes 9 and 42; and
− the United States trademark VST with registration No. 2499337, registered on October 23, 2001 for services in International Classes 35 and 42.
The disputed domain name was registered on November 16, 2006. According to the evidence filed with the Complaint, it resolved to a website featuring various plugins for the Complainant’s VST product and other audio software, as well as advertisements.
5. Parties’ Contentions A. ComplainantThe Complainant submits that the disputed domain name is confusingly similar to its VST trademark, because it incorporates the trademark together with the dictionary word “planet”, which does not eliminate the likelihood of confusion.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because it is not commonly known by it, and has not used it in connection with a bona fide offering of goods or services and has not made a legitimate noncommercial or fair use of the disputed domain name without the intent to tarnish the Complainant’s trademark. The Complainant points out that the website at the disputed domain name features the Complainant’s VST logo and contains the statement that “VST is a Technology and Trademark by Steinberg.”
The Complainant contends that the disputed domain name was registered and is being used in bad faith. It notes that the disputed domain name was registered after the VST trademark, which is well-known by the users of music software as the Complainant’s brand for the most widespread audio plugin architecture. According to the Complainant, the Respondent reveals its knowledge of the VST trademark on the website at disputed domain name by the statements on it and the citation of the Wikipedia article about the VST product.
The Complainant points out that the website at the disputed domain name features freeware plugins and advertising in the form of Google Adds. Thus, the Respondent generates monetary gains through advertisements on the website at the disputed domain name, which exploits the reputation of the Complainant’s VST trademark to attract visitors to the Respondent’s website and disrupts the Complainant’s business.
The Complainant states that it tried to contact the Respondent but received no reply. The Respondent was thus put on notice of its action in bad faith, but did not change the content of the website at the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsPursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(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 respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […].”
The Respondent has, however, not submitted a formal Response or disputed the Complainant’s contentions and evidence in this proceeding.
A. Identical or Confusingly SimilarThe Complainant has provided evidence that it is the owner of the VST trademark. In view of this, the Panel accepts that the Complainant has established its rights in this trademark for the purposes of the present proceeding.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD of the disputed domain name.
The disputed domain name incorporates the VST trademark in its entirety together with the word “planet”. The VST trademark remains easily recognizable in the disputed domain name. As discussed in section 1.8 of the WIPO Overview 3.0, in cases where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the VST trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsWhile the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, because the Complainant VST trademark was registered earlier, and the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, and has not made a legitimate noncommercial or fair use of the disputed domain name without the intent to tarnish the Complainant’s trademark. According to the Complainant, the Respondent must have been aware of the Complainant’s trademark when registering the disputed domain name, which is evident from the content of the Respondent’s website which refers to the Complainant and its VST product. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not submitted a Response. It has not provided any arguments in support of the existence of any rights or legitimate interests in the disputed domain name, and has not denied the allegations of the Complainant or disputed the evidence that it has brought forward.
The disputed domain name incorporates the VST trademark, which was first registered 7 years earlier, and the evidence in the case file shows that the website at the disputed domain name mentions the Complainant, offers various software plugins for the Complainant’s VST product, and contains third party advertising links. There is however no disclaimer on the website for the lack of relationship between the Parties.
In view of the above, and in the lack of any arguments or evidence to the contrary, the Panel concludes that it is more likely than not that the Respondent has targeted the VST trademark with the registration of the disputed domain name in an attempt to improperly capitalize on the reputation and goodwill associated with this trademark by confusing and attracting to the disputed domain name Internet users looking for the Complainant’s products. In the Panel’s view, such conduct does not appear as legitimate and does not give rise to rights or legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The disputed domain name is confusingly similar to the VST trademark and was registered 7 years after the Complainant’s VST trademark. The disputed domain name resolves to a website that includes a reference to the Complainant and offers various software plugins for its VST product alongside third-party advertising. There is however no disclaimer for the lack of relationship between the Parties.
In view of the above and in the lack of a denial by the Respondent of the arguments and evidence brought forward by the Complainant, the Panel concludes that the Respondent must have been well aware of the goodwill of the Complainant’s VST trademark when it registered the disputed domain name, and that it is more likely that the Respondent registered and used it in an intentional attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s VST trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the software products featured on it.
In view of all the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
7. DecisionFor 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
Assen Alexiev
Sole Panelist
Date: November 12, 2021