The Complainant is Abbott Diabetes Care Inc, of United States of America, represented by Baker & McKenzie, Ukraine.
The Respondent is Internet Invest Ltd / Максим Валерьевич Феденко (Maxim Fedenko), Ukraine.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2021. On July 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 2, 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 August 3, 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 August 5, 2021.
On August 3, 2021, the Center sent an email communication in English and Russian to the Parties indicating the registration agreement for the disputed domain name is in Russian and inviting the Parties to submit their preferences as to the language of the proceeding. On August 5, 2021, the Complainant submitted its request that English should be the language of the proceeding. The Respondent submitted no comments on the language of the proceeding.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of .UA Domain Name Dispute Resolution Policy (the “.UA Policy”), the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”).
In accordance with the .UA Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Russian and English, and the proceedings commenced on August 16, 2021. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was September 5, 2021. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on September 20, 2021.
The Center appointed Taras Kyslyy as the sole panelist in this matter on September 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 .UA Rules, paragraph 7.
4. Factual BackgroundThe Complainant designs, develops and manufactures diabetes management products, many of which are sold under FREESTYLE brand. In particular, FREESTYLE LIBRE products are sold in more than 50 countries with the total sales at over 3 billion dollars. The Complainant extensively uses and promotes its brand through advertising in various media.
The Complainant owns numerous registrations for FREESTYLE LIBRE, FREESTYLE and LIBRE trademarks around the world, including:
- FREESTYLE LIBRE, Russian Federation, registration No. 526789, registered on November 14, 2014;
- FREESTYLE, Ukraine, registration No.166054, registered on January 25, 2013;
- LIBRE, European Union, registration No.015200066, registered on July 19, 2016.
The disputed domain name was registered on October 6, 2016 and resolved to a website in Russian and English offering for sale the Complainant’s products, prominently featuring the Complainant’s trademarks and pretending to be an e-seller of the official Complainant’s products in Ukraine. At the time of this decision, the disputed domain name resolves to a website providing for information on the Complainant’s products in Russian.
5. Parties’ Contentions A. ComplainantThe disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed name incorporates the Complainant’s trademarks in its entirety. The addition of a hyphen and country code Top-Level Domain (the “ccTLD”) do not preclude finding the confusing similarity.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent was well aware of the Complainant’s well-known trademarks while registering the disputed domain name. While offering for sale the Complainant’s products the Respondent fails to meet the Oki Data Test requirements. The Respondent is not affiliated with nor authorized by the Complainant to use the Complainant’s trademarks, including in the disputed domain name, or to sell the Complainant’s genuine products, which indeed are not available in the Ukraine currently. The website at the disputed domain name uses trademark and copyright protected images owned by the Complainant. The Respondent has not been commonly known by the disputed domain name. The Respondent’s use of a WhoIs privacy service indicates that the Respondent specifically did not want to reveal the name by which it is commonly known and did not want to be known by any name, which is related to the disputed domain name. The Respondent is using the disputed domain name to confuse, defraud, and misleadingly divert consumers, and to tarnish the Complainant’s trademarks, and such use does not fit into any accepted category of noncommercial fair use such as comment, criticism, news reporting, education, and the like.
The disputed domain name was registered and is being used in bad faith. The Respondent intentionally registered and uses the disputed domain name, without consent from the Complainant, to confuse and mislead Internet visitors of its website. The Respondent was put on actual notice of the Complainant’s rights in its trademarks through the Complainant’s extensive prior use of the trademarks which long predate the registration of the disputed domain name. The Respondent is obtaining commercial gain from the sale of grey market products through the use of the website at the disputed domain name. The website at the disputed domain name is designed to look like an official website of the Complainant. The Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its trademarks in a corresponding domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Language of the proceedingThe language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the .UA Rules provides that “unless otherwise agreed by the Parties, the language of the administrative proceeding shall be the language of the Registration Agreement (which shall be in English, Russian or Ukrainian), 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.
However, while applying the provision on the language of the proceedings the Panel considers that it should be also ensured 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.
In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, or to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties.
The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondent must be familiar with the English language, since (i) the website at the disputed domain name provides for Russian translation of information in English about the Complainant’s products, and (ii) the Respondent used English word “freestyle” while registering the disputed domain name. The Respondent did not comment on the language issue.
The Panel notes that the Center has sent all of its email communications to the Parties in both languages (i.e., English and Russian). In addition, the Panel notes that the website at the disputed domain name was in Russian and English, confirming the Respondent is familiar with the English language.
The Panel also finds that substantial additional expense and delay would likely be incurred if the Complainant is ordered to further translate its filings to Russian.
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 SimilarWhere the Complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UA-DRP complaint, which is also applicable to this case (see, e.g., Facebook Inc. v. Private Registration / Denis Khakimov,
WIPO Case No. DUA2019-0002).
The ccTLD in the disputed domain name is viewed as a standard registration requirement and may be disregarded for the purposes of the confusing similarity test (see, e.g., OPPO Pte. Ltd. v. Private Registration / Alexander Leonidovich Shirkov,
WIPO Case No. DUA2019-0001.
In cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UA-DRP standing (see, e.g., Facebook Inc. v. Private Registration / Denis Khakimov,
WIPO Case No. DUA2019-0002). The Panel finds that in the present case the disputed domain name incorporates the entirety of the Complainant’s trademarks.
In cases 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, e.g., AB Electrolux v.Товариство з обмеженою відповідальністю Трейдiнг МВК,
WIPO Case No. DUA2021-0012). The Panel finds that in the present case the addition of a hyphen in the disputed domain name does not prevent the finding of its confusing similarity with the Complainant’s trademarks.
Considering the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks in which the Complainant has rights, therefore, the Complainant has established its case under paragraph 4(a)(i) of the .UA Policy.
C. Rights or Legitimate InterestsThe Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with the Complainant (see, e.g., Facebook Inc. v. Private Registration / Denis Khakimov,
WIPO Case No. DUA2019-0002).
In its turn, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.
The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed here (see, e.g., OPPO Pte. Ltd. v. Private Registration / Alexander Leonidovich Shirkov,
WIPO Case No. DUA2019-0001).
The Respondent is not commonly known by the disputed domain name, which could demonstrate its rights or legitimate interests. (see, e.g., Facebook Inc. v. Private Registration / Denis Khakimov,
WIPO Case No. DUA2019-0002).
Resellers and distributors using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods may be making a bona fide offering of goods and thus have a legitimate interest in such domain name. As outlined in Harman International Industries, Inc. v. Александр Колегаев,
WIPO Case No. DUA2020-0005, the following cumulative requirements will be applied in the specific conditions of a UA-DRP case:
(i) the respondent must actually be offering the goods at issue;
(ii) the respondent must use the site to sell only the trademarked goods;
(iii) the site must accurately and prominently disclose the registrant’s relationship with trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names reflecting trademark.
The Panel finds that the Respondent failed to satisfy at least the third and the fourth of the above requirements by not disclosing its actual relationship with the Complainant and precluding the Complainant to reflect its trademarks in the disputed domain name for local Ukrainian market. The Respondent’s use of the disputed domain name misleads consumers into thinking that the website is affiliated with or authorized by the Complainant. As such, the Respondent’s use of the disputed domain name cannot be considered bona fide.
Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the .UA Policy.
D. Registered or Used in Bad FaithThe Respondent’s use of the disputed domain name to purport to sell the Complainant’s products shows that at the time of the registration of the disputed domain name the Respondent clearly knew and targeted the Complainant’s prior registered and famous trademark, which confirms the bad faith (see, e.g. Michael Kors (Switzerland) International GmbH v. Minakova Maria,
WIPO Case No. DUA2020-0002).
According to paragraph 4(b)(iv) of the UA. Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: 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. In this case, the disputed domain name was resolving to a website featuring the Complainant’s trademark and falsely pretending to be the sales place of official Complainant’s products to intentionally attract Internet users by creating likelihood of confusion with the Complainant’s trademark as to the source of the website and its products. The Panel finds the above confirms the disputed domain name was registered and used in bad faith.
The Respondent ignored its possibility to comment on the contrary and provide any good explanations to prove its good faith while registering and using the disputed domain name.
Considering the above, the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the .UA Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the disputed domain name
Taras Kyslyy
Sole Panelist
Date: October 11, 2021