1.1 The Complainant is Hromadske Telebachennya of Kiev, Ukraine, represented by Borovyk & Partners, Ukraine.
1.2 The Respondent is Roman Skrypin S.R.O. of Prague, Czech Republic, represented by Dmytro Gadomsky, Ukraine. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2016. On June 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 6, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 29, 2016. The Response was filed with the Center on June 29, 2016.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on July 5, 2016. 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
4.1 The Complainant is an independent Ukrainian Internet TV Channel that operates under the names Hromadske Telebachennya” and “Hromadske TV”. The Complainant was formally established as a “Non-Government Organization” in the Ukraine on April 21, 2013. It appears to have its origins in discussions that took place at an earlier date, but the exact details of those discussions are disputed.
4.2 The Complainant prior to May 2016 conducted its activities from the Domain Name. Since that date it has operated instead from a web site that uses the domain name . It claims to currently benefit from over 10 million views on that website a month. The word “Hromadske” in the Domain Name and the Complainant’s name is a transliteration into Roman text of the Ukrainian word for “Public”.
4.3 The Complainant is the holder of a trade mark that was registered in the Ukrainian register of trade marks on December 16, 2013 for goods and services in class 38 and which takes the following form:
4.4 The Respondent appears to be a Czech corporation that is (as its name would suggest) controlled by by one Roman Skrypin. The Domain Name was registered by Mr. Skrypin or his corporation on September 14, 2012.
4.5 Mr. Skrypin is a Ukrainian journalist who was one of the founders and the original CEO of the Complainant.
4.6 The fact that the Respondent is the registrant of the Domain Name appears to have been a matter of contention between the Respondent, Mr. Skrypin and the Complainant for some time. For example, in October 2013 Mr. Skrypin sent an email to a number of his fellow founders in the following terms:
“Guys, friends, colleagues!
I don’t know why you raised yesterday the domain issue again.
I regret for the emotions and words like ‘you don’t trust us’.
I would ask you not to through charges like this and would ask to be more careful in your statements.
I’ve studied this issue half of night.
And I don’t think you will like the result.
:)
I have a suggestion to talk out this matter calmly without fanaticism, considering all ‘for’ and ‘against’.
And more, there is no sense in disclosing the owner of the domain, no matter who is the owner.
It is like to point our ‘well-wishers’ on whom they are to hunt.”
4.7 However, in another email dated October 22, 2013 he claimed that “De-facto [the Domain Name] belongs to [the] Non-Government Organization”.
4.8 In May 2015, Mr. Skrypin was dismissed as CEO of the Complainant but continued to participate in its activities.
4.9 In January 2016, Mr. Skrypin posted text on Facebook that included the following statement:
“ … And the situation with the domain is quite strange. What is the justification for its assignment for the use of organization, if all over the world such issues are resolved by signing of the sale purchase or lease agreements.
Now I definitely do not want to make any gifts to anybody. The details may be discussed. …”
4.10 In February 2016, Mr. Skrypin ceased to be involved in the activities of the Complainant. However, he then created a webpage that operates from the sub domain . That webpage appears to have been used to solicit PayPal donations but any monies collected have not been paid to the Complainant.
4.11 In May 2016, the Domain Name was also redirected to the website of another organization named “Hromadske_Zhaporizhia”. Zhaporizhia would appear to be name of a city in Ukraine. 5. Parties’ Contentions A. Complainant
5.1 The Complainant at some length addresses the steps surrounding the launch of public radio and TV broadcasting in the Ukraine. Although the Complainant only came into existence in April 21, 2013, the Complainant claims that the founders of the Complainant came together in the summer of 2010.
5.2 The Complainant refers is this respect to an email dated January 25, 2012 from one of the subsequent founders of the Complainant seeking financing. The name “H” does appear to be used in that email, but the subject matter of the email is “Internet TV in Ukraine” and there are references throughout to a possible Internet channel.
5.3 The Complainant contends that Mr. Skrypin became involved in this “project” at this time. It is then claimed that in September 2012, Mr. Skrypin informed the “Founder’s group” that he had registered the Domain Name. It is claimed that the “registration was performed without any synergy with Founders’ group or any authorization from it.”
5.4 Reference is also made to Mr. Skrypin’s email of October 22, 2013 in which Mr. Skrypin subsequently declared that the Domain Name “de-facto belong[ed] to the Complainant and that he would transfer the [D]omain [N]ame to the Complainant free of charge”.
5.5 The Complainant contends that the Domain Name is identical or confusingly similar to its Ukrainian trade mark. It claims that the Respondent has no legitimate right and no interest in the Domain Name. It also contends that the Domain Name was registered in bad faith, the Respondent being “clearly aware of the Founders’ group plans on launching of public Internet broadcasting under the name “Hromadske tv”. The Complainant also claims that:
“It could also be possible that the aim of acquiring the [D]omain [N]ame by the Respondent at the first stage was to ensure influence over the Complainant’s activity and assets by means of obtainment of the leading position in the management body of the Complainant by Respondent’s CEO in return for transferring the domain name to the Complainant.”
5.6 Finally the Complainant makes reference to the Respondent’s creation of a subdomain seeking PayPal payments, which is said to involve use of the Domain Name in bad faith. B. Respondent
5.7 The Respondent claims that there have been many different projects and discussions involving public broadcasting in the Ukraine.
5.8 It also claims that (contrary to the Complainant’s allegations) it was Mr. Skrypin who was the driving force behind setting up of the Complainant. In this respect it is claimed that Mr. Skrypin did not bring together the journalists who took part in the project that resulted in the creation of the Complainant until 2013; i.e., not until sometime after the Domain Name had been registered. In support of that contention the Respondent points to a transcript of a video in which one of the founders, Yulia Bankova describes how she was approached by Mr. Skrypin in relation to “Hromadske Telebachennya” in early 2013.
5.9 The Respondent characterises the process that led to the creation of the Complainant as follows:
“One of the main distinctions of the Respondent’s project was the concept of its launching on Internet, while the public discussion was orientated on the development of the public broadcasting provider as one of the television channels.”
5.10 Referring to the email dated January 25, 2012 in which one of the founders of the Complainant sought financing for an Internet TV channel, the Respondent points out that this does not make reference to “Hromadske.TV”. The Respondent therefore appears to be contending that this was a separate project asserting that:
“the Respondent made preparations for the launching of the project ‘Hromadske.TV’ by registration of domain name long before the time he began to gather journalists to take part in the project in 2013”.
5.11 The Respondent claims that so far as the Complainant’s trade mark is concerned, the textual elements are descriptive and therefore do not have any distinctive character. Reference is also made to other regional NGO’s in Ukraine that incorporate the term Hromadske in domain names used for broadcasting purposes and which are not associated with the Complainant. The most famous of these is said to be the service provided from the domain name .
5.12 The Respondent also claims that it has a right or legitimate interest in the Domain Name on the basis that Mr. Skrypin was the initiator of the project.
5.13 So far as the Pay Pal page is concerned, the Respondent appears to contend that he is raising funds for an alternate public TV project under the name “Hromadske telebachennya Kyiv” (“Public Television Kyiv”). It also claims that other active sub-domains have been created from the Domain Name that redirect to the websites of independent regional organisations “that have successfully run the corresponding news platforms for more than one year”.
5.14 The Respondent denies that the Domain Name was registered in bad faith in light of its claims as to when and in what circumstances it was registered. It also denies that the recent use made by the Respondent of the Domain Name is use in bad faith. 6. Discussion and Findings
6.1 To succeed in these proceedings the Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these requirements in turn. A. Identical or Confusingly Similar
6.3 The only trade mark relied upon by the Complainant is a device mark that contains the text “”. There appears to be no dispute that this text would be understood as the equivalent to “” in English. In other words this textual element is likely to be read as a reference to a domain name, but where that domain name is to at least in part descriptive of the services offered from that domain.
6.4 This is, therefore, one of those cases where a panel has to consider whether a complainant can claim rights in the textual element of a device mark, when there is a question as to whether the complainant could have obtained trade mark rights in the textual element alone.
6.5 This is an issue that was addressed at some length by the panel in Jobs on the Net Limited, Andrew Middleton v. International New Media Limited,WIPO Case No. D2011-1531. Having considered various previous decisions on this issue, the panel suggested that so far as the Policy is concerned the correct approach is only to disregard such a mark if the textual element relied upon was so “completely devoid of distinctive character that it is incapable of distinguishing the Complainant’s goods and services”.
6.6 The panel in S FZ LLC v. Benny Bertelsen, Advanced Digital Solutions,WIPO Case No. D2015-2261, faced a similar question where the text in the mark relied upon was “S”. It reasoned (at paragraph 6.7 of that decision) as follows:
“The Panel does not think that in applying this test the Complainant’s mark should be disregarded in this case. The reason for this (even if one ignores the technical point that the Complainant’s Community Trade Mark appears to extend beyond services for which the word ‘souq’ might be said to be descriptive) is that the textual element of the relevant marks is not ‘Souq’ alone but ‘S’. The Panel is aware that many trade mark registries are wary of concluding that a mark is distinctive where it comprises a descriptive term combined with a Top-Level Domain such as ‘.com’. Nevertheless, the Panel does not consider ‘S’ to have been completely devoid of distinctive character at the time that these proceedings were commenced.”
6.7 It is also to be noted that paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states as follows:
“Where a trademark includes a word plus design element in which the design element is found to be the sole source of distinctiveness, such registration alone may be insufficient to enable the complainant to establish relevant rights for standing purposes under the UDRP, absent a showing of acquired distinctiveness through use of the relevant mark”.
6.8 In the present case, as was the case in the S case supra, the text relied upon takes the form of a domain name. However, the evidence that this text had actually come to be recognised as associated with the Complainant, is somewhat more equivocal. It seems to be undisputed that the Complainant’s website when it was operating from the Domain Name benefited from a very large number of visitors but (in contrast to the position in the S case) there is little or no evidence before the Panel that the Complainant had become known by the Ukrainian public, or a significant part of that public, as “H”.
6.9 Had this issue been determinative of the outcome of these proceedings, the Panel may have asked for further submissions on this question from the parties. Further, as paragraph 4(a)(i) of the Policy is generally understood to constitute a “threshold” or “standing” requirement (see for example, paragraph 1.2 of the WIPO Overview 2.0) there is perhaps an argument that the wording quoted from paragraph 1.1. of the WIPO Overview 2.0 above, set the test too high. If the correct test is instead that proposed by the Jobs on the Net Limited case supra (i.e.,the text not be “incapable of distinguishing the Complainant’s goods”) then will this test nearly always be satisfied where the relevant text is likely to be read as a reference to a specific domain name? Alternatively, is all that is required that the relevant text in the mark has arguably become distinctive to some degree?
6.10 Nevertheless, for reasons that the Panel set out later in this decision this issue is not determinative of the outcome of these proceedings and therefore it is unnecessary for the Panel to consider these questions further. B. Rights or Legitimate Interests
6.11 Given the Panel’s findings when it comes to registration in bad faith, it is not necessary to address the question of rights or legitimate interests. C. Registered and Used in Bad Faith
6.12 This is a case where the Domain Name was registered before the rights relied upon were registered or the Complainant even came into existence. However, neither fact is necessarily fatal to the Complainant’s case. As is recorded in paragraph 3.1 of the WIPO Overview 2.0:
“In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take a0dvantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant’s enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant’s likely rights in that mark. (In all such cases, in order to have a chance to succeed in any filed UDRP complaint, the complainant must actually demonstrate relevant trademark rights, as these are a precondition for satisfying the standing requirement under the first element of the UDRP for rights in a mark.)”
6.13 Therefore, where a respondent is aware that an entity is about to be established and intends to adopt a specific name that it knows that entity intends to use as a trade mark and registers a domain name in order to take unfair advantage of that prospective mark, then that registration can still be in bad faith.
6.14 However, the complication in the present case is that there is a fundamental dispute between the parties in this case as to in what circumstances the Complainant came into existence. The Complainant claims that it had its origins when a number of the subsequent founders of the Complainant came together in the summer of 2010. The Respondent claims that it was its Mr. Skrypin who brought together the founders of the Complainant in early 2013.
6.15 Who is or was the driving force behind a potential complainant may in many cases not be that significant. Take a hypothetical scenario in which an individual brings a number of other individuals together with a view to setting up a corporate entity with a view to pursuing a particular joint enterprise. Let us also assume that as part of those discussions, and before the corporate entity is set up, those individuals choose a trading name for that enterprise but that the individual who was instrumental in setting up this business then registers a domain name that corresponds to that trading name.
6.16 In such a case if the domain name was registered without the knowledge, consent or authority of the other persons who are intended to have an interest in that corporate entity when it is created, the Panel sees no reason why a panel could not find in subsequent proceedings brought by that corporate entity, that the registration was in bad faith. It does not matter that were it not for the actions of the registrant the complainant would not have come into existence.
6.17 But according to the Respondent, this is not what happened here. Instead, it claims that the Domain Name was chosen and registered long before Mr. Skrypin became involved in the Complainant and before the founders of the Complainant decided to adopt the name “Hromadske.TV”. If this is correct, it is hard to see how that registration could have been in bad faith.
6.18 With this in mind, the Panel notes that no contemporaneous evidence has been put before it which demonstrates that the name “Hromadske.TV” had been chosen by those setting up of the Complainant before the Domain Name was registered. If such evidence were to exist, one would expect the Complainant to have been able to provide it. Further the nature of the Domain Name is such that it is not inherently improbable that the Domain Name was chosen by the Respondent before that name was chosen for the Complainant.
6.19 In the circumstances, the Panel finds that the Complainant has failed to demonstrate that the Domain Name was registered in bad faith.
6.20 That is not to say that the Panel finds the Respondent and/or Mr. Skrypin actions in this case after the Domain Name was registered particularly attractive. The evidence before the Panel suggest that the Complainant is correct when it claims that Mr. Skrypin agreed that the Domain Name was the property of and/or should be transferred into the name of the Complainant. Further, the Facebook comments of Mr. Skrypin regarding possible “sale purchase or lease agreements” for the Domain Name, suggests that Mr. Skrypin and/or the Respondent have acted opportunistically to say the least.
6.21 Therefore, this is arguably the sort of case that demonstrates why many consider the UDRP requirement that a complainant must show (in contrast to the requirements of a number of other domain name dispute resolution policies) that a domain name has been both registered and used in bad faith, to be unjustified and unfair. Nevertheless, it is not for the Panel to seek to rewrite the UDRP in this respect (as to which see the comments of the panel in Camon S.p.A. v. Intelli-Pet, LLC,WIPO Case No. D2009-1716).
6.22 In the circumstances, the Panel finds that the Complainant has failed to make out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
7.1 For the foregoing reasons, the Complaint is denied.
Matthew S. Harris
Sole Panelist
Date: July 19, 2016
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