The Complainant is Joom, SIA, Latvia, represented by LLC PT AVOCATS, Ukraine.
The Respondent is Privacy Protection, Hosting Ukraine LLC, Ukraine LLC, Ukraine / Вороткина Катерина Михайловна/ Vorotkina Katerina Mihajlovna, Ukraine.
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 December 17, 2021. On December 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 20, 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 December 29, 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 amendment to the Complaint on December 30, 2021.
On December 29, 2021, the Center sent an email in both English and Russian to the Parties regarding the language of the proceeding (see section 7 below). The Complainant submitted its request and arguments that English be the language of the proceeding on December 30, 2021. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amendment to 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 in both English and Russian, and the proceedings commenced on January 11, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2022. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on February 10, 2022.
The Center appointed Olga Zalomiy as the sole panelist in this matter on February 23, 2022. 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. Further Procedural ConsiderationsUnder paragraph 10 of the Rules, the Panel is required to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, and also that the administrative proceeding takes place with due expedition.
The Respondent gave a Ukrainian mailing address to the Registrar when registering the Domain Name (whether this is indeed accurate is not clear; as noted below the website at the Domain Name lists an address in Berlin) which country is subject to an international conflict at the date of this Decision that may impact case notification; it is therefore appropriate for the Panel to consider, in accordance with its discretion under paragraph 10 of the Rules, whether the proceeding should continue.
Having considered all the circumstances of the case, the Panel is of the view that it should. The Panel has reached this conclusion in part because the Panel does not believe the Respondent’s purported mailing address in Ukraine to be genuine. The Panel notes that the courier was not able to deliver the written notice to the address which the Respondent had provided in Ukraine, which turns out to be the address of a healthcare provider. The Panel also considered that the Complaint together with the amendment to the Complaint were delivered to the Respondent’s email address provided by the Registrar. Moreover, the Domain Name first directed to an online marketplace titled “Joom Shop”, but on the date of the decision appears to be inactive – which may indicate the Respondent is aware of the case and taking action to hide its tracks.
It is furthermore noted that, for the reasons which are set out later in this Decision, the Panel has no doubt that the Respondent registered and has used the disputed domain name in bad faith and with the intention of unfairly targeting the Complainant’s goodwill in its trademark in an effort to confuse consumers (consumer protection being one of the principal intentions underlying the UDRP system).
The Panel concludes that the Parties have been given a fair opportunity to present their case, and so that the administrative proceeding takes place with due expedition the Panel will proceed to a Decision accordingly.
5. Factual BackgroundThe Complainant operates an online marketplace under the JOOM trademark. The Complainant owns the following trademark registrations that include the JOOM mark:
-International Trademark registration No. 1519889 for the word mark JOOM, registered on October 15, 2019; and
- International Trademark registration No 1522375 for the word mark JOOM.WORLD’S LOWEST PRICES, registered on October 15, 2019.
The Respondent registered the Domain Name on October 21, 2020. The Domain Name directed to an online marketplace titled “Joom Shop” not affiliated with the Complainant.
6. Parties’ Contentions A. ComplainantThe Complainant asserts that it owns international trademark registrations for the word mark JOOM and for the word mark JOOM.WORLD’S LOWEST PRICES. The Complainant argues that the Domain Name, which consists of the word JOOM and the generic Top-Level domain (the “gTLD”) “.website” is identical to the trademark in which the Complainant has rights.
The Complainant’s contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant alleges that the Respondent: (i) has no rights in the Complainants’ trademarks; (ii) has not been commonly known by the name JOOM; (iii) is not affiliated with the Complainant or with any of its subsidiaries in any manner; (iv) has not been authorized or licensed by the Complainant to use the JOOM trademark for the purposes of registering and using the Domain Name or for any other purpose.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant argues that because the Domain Name is identical to the Complainant’s trademark, there is a high risk of implied impersonation or affiliation with the Complainant, which is a strong indication of bad faith registration. The Complainant argues that because it had been trading under the trademark JOOM for approximately five years prior to the registration of the Domain Name and its trademark registration date predates registration of the Domain Name by approximately one year, there is no doubt that the Domain Name was registered with full knowledge of the Complainant’s JOOM mark. The Complainant asserts that its trademark is well-known, so the mere registration of the Domain Name creates presumption of bad faith registration and use of the Domain Name. The Complainant claims that the Respondent’s actual awareness of the JOOM trademark, is proved by her subsequent use of the Domain Name in connection with the competing marketplace website.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
7. 1. Language of the ProceedingSection 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the registration agreement, unless the parties agree to use a different language, or the registration agreement provides otherwise. Here, the language of the Registration Agreement for the Domain Name is Russian, so the default language of the administrative proceeding normally would be Russian. However, the Complainant requested that English be the language of the administrative proceeding because of the following reasons: (i) English is one of the three languages of international communication, one of the most spoken languages in the world and one of the main official working languages of the Center (ii) the Complainant is a Latvian company, which working language is English. The preparation and/or translation of the Complaint to Russian would unfairly burden the Complainant and delay the proceedings and prejudice the Complainant; and (iii) it is likely that the Respondent can understand English, because the Domain Name is written in Latin characters and content of the website associated with the Domain Name is in English.
Under the section 11(a) of the Rules, the Panel has the right to determine the language of the administrative proceeding based on the circumstances of the case. Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. “Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name […] (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint”. See section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Some of those scenarios are found in this case. For instance, it is likely that the Respondent can understand English, because content of the website associated with the Domain Name is in English. Further, the script of the Domain Name is Latin, which is the same as the script of the Complainant’s mark. In addition, the Complainant is a Latvian company, which working language is English. It would have to incur significant additional cost in the proceeding, if it were required to proceed in the Russian language. Finally, the decision to conduct the proceeding in English will not prejudice the Respondent, because the Respondent chose not to object to the Complainant’s request to conduct the proceeding in English even though the Center notified it about a possibility to object to the Complainant’s request regarding choice of the language of the proceeding in both Russian and English.
Therefore, the Panel determines English to be the language of the proceeding.
7.2. Discussion and FindingsPursuant 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 in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarPursuant 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 in which the Complainant has rights.
In determining if the Complainant has trademark rights for the purposes of standing to file a UDRP case, the first consideration is given to its holding of nationally or regionally registered trademarks1. The Complainant submitted its international trademark registration for the word mark JOOM. Based on the foregoing, the Panel finds that the Complainant satisfied the UDRP standing requirement.
The Complainant argues that the Domain Name, which consists of the word “joom” and the gTLD “.website” is identical to the trademark in which the Complainant has rights. It is well-established that that the test for identity of confusing similarity under the first UDRP element 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.”2 “[W]here a domain name incorporates the entirety of a trademark […] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”3 It is also well accepted that “the applicable gTLD should be disregarded under the confusingly similarity test as a standard registration requirement.4 Therefore, the Panel finds that the Domain Name is identical to the Complainant’s trademark.
Thus, the Complainant proved the first UDRP element.
B. Rights or Legitimate InterestsTo succeed under the second UDRP element, the Complainant must make out a prima facie case in respect of the lack of rights or legitimate interests of the Respondent.
The evidence submitted in this proceeding shows that the Respondent has used the Domain Name for a website with the title “Joom Shop” that purports to sell a variety of goods, such as clothing, shoes, accessories, baby products, sports equipment, and household goods. Previous UDRP panels have recognized that resellers or distributors using domain names containing the complainant’s trademark to undertake sales of the complainant’s goods may be making a bona fide offering of goods and thus have a right or legitimate interest in such domain names in some situations.5 Outlined in the Oki Data test,6 the following cumulative requirements must be satisfied for the respondent to make a bona fide offering of goods and services:
“(i) the respondent must actually be offering the goods or services at issue;
(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.”
In this case, the Respondent’s use of the Domain Name did not satisfy requirements of such bona fide offering of goods and services because it did not accurately and prominently disclose lack of relationship between the Respondent’s and the Complainant. The website at the Domain Name provides no information about its owner.
There is also no indication of existence of any other defenses available to the Respondent under the UDRP, paragraph 4(c). It is undisputed that the Complainant has not licensed or otherwise permitted the Respondent to use the JOOM mark in any manner, including as a domain name. The Respondent has not provided any evidence establishing it has been commonly known by the Domain Name. For example, the pertinent WhoIs information identifies the registrant of the Domain Name by a name, other than Joom. The only information about the Respondent that is displayed on the website connected to the Domain Name is gTLD, and an address in Berlin, Germany.
Based on the foregoing, the Panel finds that the Complainant has made out the prima facie case and the burden of producing evidence demonstrating it has rights or legitimate interests in the Domain Name has shifted to the Respondent. Because the Respondent failed to present any rebutting evidence, the Complainant is deemed to have satisfied the second element of the UDRP.
C. Registered and Used in Bad FaithPursuant 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 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 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. See Policy, paragraph 4(b)(iv).
The evidence shows that the Respondent registered the Domain Name a year after the Complainant obtained its trademark registration. The Domain Name incorporates the Complainant’s JOOM trademark in its entirety and includes the gTLD “.website”, which indicates awareness of the Complainant’s services. The website at the Domain Name displays the Complainant’s trademark and purports to offer for sale various goods just like the Complainant’s marketplace does; it is in effect an attempt at a copycat website. These indicate that the Respondent was aware of the Complainant and its JOOM trademark at the time of the Domain Name registration and deliberately chose to register the Domain Name in bad faith.
The Respondent uses the Domain Name, which is confusingly similar to the Complainant’s JOOM mark, in connection with the online marketplace similar to the Complainant’s online marketplace. Therefore, it is likely that the Respondent registered 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 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.
Thus, the Complainant proved the third UDRP element.
8. 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,
/Olga Zalomiy/
Olga Zalomiy
Sole Panelist
Date: July 25, 2022
1Section 1.2.1, WIPO Overview 3.0.
2Section 1.7., WIPO Overview 3.0.3Id.
4Section 1.11.1, WIPO Overview 3.0.
5Section 2.8.1, WIPO Overview 3.0.
6Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903