The Complainant is Wolf Oil Corporation N.V., Belgium, represented by Thomsen Trampedach, A NovumIP Company, Denmark.
The Respondent is Smirnov Vyacheslav, 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 August 12, 2021. On August 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 12, 2021, 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.
On August 17, 2021, the Center transmitted an email communication in English and Ukrainian regarding the language of the proceeding to the Parties, indicating that the registration agreement for the Disputed Domain Name is Ukrainian, and invited the Parties to submit their preference as to the language of the proceeding. On August 17, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that 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 in English and in Ukrainian the Respondent of the Complaint, and the proceedings commenced on August 31, 2021. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was September 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 29, 2021.
The Center appointed Mariya Koval as the sole panelist in this matter on October 12, 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 is a globally recognized producer of motor lubricants. The Complainant produces a variety of lubricants for passenger cars, heavy duty motors, agricultural and marine vehicles, motorcycles, and for industrial use, as well as transmission fluids, winter fluids, greases, and other maintenance products. The Complainant has strong international presence, with export to over 95 countries.
The Complainant owns numerous WOLF trademark registrations around the world (the “WOLF Trademark”), including Ukraine, among which are:
- International Trademark Registration No. 1053199, registered on September 13, 2010, in respect of goods in classes 1, 3, 4;
- International Trademark Registration No. 817321, registered on December 9, 2003, in respect of goods in classes 1, 3, 4;
- International Trademark Registration No. 1088896, registered on July 7, 2011, in respect of goods in classes 1, 3, 4;
- Ukrainian Trademark Registration No. 130259, registered on October 25, 2010, in respect of goods in classes 1, 3, 4;
- International Trademark “WOLF OIL CORPORATION Registration” No. 1110435, registered on January 4, 2012, in respect of goods and services in classes 4, 39, 40, 42;
The Complainant operates a domain name, incorporating the WOLF Trademark, for sale and promotion of its goods
The Disputed Domain Name was registered on October 20, 2016. At the date of this Decision, the website under the Disputed Domain Name is inactive. However, according to the evidence presented by the Complainant (Annex 4 to the Complaint) the Disputed Domain Name previously resolved to a website in Russian offering various products of the Complainant for sale.
5. Parties’ Contentions A. ComplainantThe Complainant contends that it owns over 250 active registrations for the WOLF and WOLF OIL CORPORATION Trademarks in more than 100 countries, including Ukraine. The Complainant has been using its Trademarks continuously and extensively in connection with the promotion of its products across the world, both online and offline.
The Complainant asserts that on January 4, 2018, it requested the transfer of the Disputed Domain Name from the Respondent by sending a cease and desist letter via email, however, no answer has been provided. On February 27, 2018, a hard copy of the aforementioned letter was sent to the Respondent’s physical address, but couldn’t be delivered. On May 5, 2018, the Complainant’s local agent sent the same letter again via email to the Respondent, but no response was received.
The Complainant claims that the Disputed Domain Name is confusingly similar to the Complainant’s well-known WOLF Trademark.
The Complainant further contends that the Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Name. The Complainant’s registration of the WOLF Trademark in Ukraine long precedes the Respondent’s acquisition of the Disputed Domain Name. The Complainant never licensed or otherwise authorized the Respondent to use its Trademark in the Disputed Domain Name or otherwise. The Respondent cannot assert that, prior to having notice of this dispute, he was using, or had made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Complainant claims that the Respondent was posing the website under the Disputed Domain Name as the official store of the Complainant in Ukraine, which is not, thus diverting traffic from the Complainant’s official website. The Respondent is not a direct distributor of the Complainant, nor he is sponsored or connected to the Complainant in any other way. The Respondent cannot conceivably claim to be commonly known by the Disputed Domain Name, given the notoriety of the Complainant’s well-known WOLF Trademark and the fact that the Respondent does not provide any services under the name “wolf”.
The Complainant further alleges that the Respondent has registered and was using the Disputed Domain Name in bad faith in view of the following:
- the Respondent registered the Disputed Domain Name with full knowledge of the Complainant’s Trademark, as unequivocally demonstrated by the false affiliation claim “official Wolf Oil Store in Ukraine,” presented on several pages on the website under the Disputed Domain Name, and by use of the Complainant’s name and logo on the website under the Disputed Domain Name;
- the Respondent was using the WOLF Trademark in connection with the Disputed Domain Name for the purpose of illicitly attracting Internet users for commercial gains, and diverting them to the Respondent’s website;
- the website under the Disputed Domain Name did not disclose the Respondent’s relationship with the Complainant. The design of website copied some of the Complainant’s official websites, so it might have given users the false impression that the Disputed Domain Name is licensed, sponsored, or otherwise approved by the Complainant;
- the Disputed Domain Name was registered and was used for the purpose of creating a likelihood of confusion among the public with the Complainant’s Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the .UA Policy binds the Complainant to prove each of the following three elements to succeed:
(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 or is being used in bad faith.
Taking into consideration many similarities between the .UA Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and, where appropriate, will decide consistent with the consensus views captured therein.
6.1. Preliminary Issue: Language of ProceedingsIn accordance with paragraph 11 of the .UA Rules, 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 Registrar confirmed that the language of the registration agreement for the Disputed Domain Name is Ukrainian.
The Complainant filed a request for the English language proceeding, stating that the Complainant is a Belgian company, with no knowledge of the Ukrainian language. Thus, it would be in fairness to both parties for the proceedings to be held in English rather than in Ukrainian.
Neither the Complainant, nor its representative are not obviously able to understand and to communicate in Ukrainian. Forcing the Complainant to translate the Complaint and annexes thereto, would result in unfair additional expenses for the Complainant and would delay this proceeding.
The Disputed Domain Name and country code Top-Level Domain (“ccTLD”) comprise Latin script. Furthermore, the Respondent, having received the Center’s communication regarding the language of the proceeding, also in both English and Ukrainian, did not make any submissions regarding the language of the proceeding.
Paragraph 10(c) of the .UA Rules sets out that the Panel shall ensure that the administrative proceeding takes place with due expedition.
Having considered all circumstances of this case, the Panel concludes under paragraph 11(a) of the .UA Rules that English shall be the language of the proceeding.
6.2. Substantive Issues A. Identical or Confusingly SimilarIn accordance with paragraph 4(a)(i) of the .UA Policy it should be established that the Disputed Domain Name is identical or confusingly similar to a mark in which the complainant has rights.
The Panel accepts that the Complainant demonstrated that it has the rights in the WOLF Trademark in view of a large number of registrations in different jurisdictions, including Ukraine, and long use of its WOLF Trademark.
The Disputed Domain Name incorporates the WOLF Trademark in its entirety, combined with the dictionary word “oil” and ccTLD “.com.ua”. In accordance with prior decisions under the .UA Policy, the applicable ccTLD in a domain name is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test. See AB Electrolux v. Захаров Евгений,WIPO Case No. DUA2020-0006. The Panel considers it is appropriate to apply the same rules in this proceeding regarding ccTLD “.com.ua”. Therefore, the addition of the ccTLD “com.ua” to the Disputed Domain Name in this case does not prevent a finding of identity or confusing similarity between the Complainant’s Trademark and the Disputed Domain Name.
According to the section 1.8 of the WIPO Overview 3.0 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. In this case, the addition of the term “oil”, which is the part of the Complainant’s company name, to the WOLF Trademark does not prevent a finding of confusing similarity, but even intensifies it.
Previous UDRP panels have recognized that incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark; see bridport & cie S.A v. Privatewhois.net, Private Whois bridportadvisory.com,WIPO Case No. D2011-2262.
In view of the above, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s Trademark and therefore, the Complainant has satisfied the first element of the .UA Policy.
B. Rights or Legitimate InterestsIn accordance with paragraph 4(a)(ii) of the .UA Policy the complainant has to establish that the respondent has no rights or legitimate interests in the disputed domain name.
According to prior decisions under the .UA Policy, while the overall burden of proof in .UA proceedings is on the Complainant, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. If such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to come forward with such relevant evidence, the Complainant is generally deemed to have satisfied the second element. See, e.g., Google LLC v. Aлександр Дмитрович Бутенко,WIPO Case No. DUA2020-0009
Noting the facts and arguments set out above, the Panel finds that the Complainant has made a prima facie case. The Respondent registered the Disputed Domain Name almost 20 years after the WOLF Trademark had been registered. Moreover, there is no evidence that the Respondent owns any WOLF Trademarks, nor is the Respondent commonly known by the Disputed Domain Name. The Complainant also contends that the Respondent has never received an authorization to use the Complainant’s Trademark or to register domain names containing the WOLF Trademark in any form. The Respondent has failed to come forward with any evidence to rebut such prima facie case.
Also, taking into consideration the reputation of the Complainant’s Trademark and that the Disputed Domain Name previously resolved to a website in Russian containing the Complainant’s logo and offering various Complainant's products for sale, it is obvious that the Respondent was well aware of the Complainant's brand and business at the time of registration of the Disputed Domain Name. Moreover, under these circumstances, the Panel finds that the Respondent is not involved in a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions:
(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.
As is seen from the circumstances of this case it is obvious that the website under the Disputed Domain Name was designed to create an impression of official or related Complainant’s website, without being the same. Furthermore, the Respondent was not selling only the Complainant’s products and there was no disclaimer which was disclosing the Respondent’s relationship with the Complainant. Thus, the Respondent does not match the conditions of the Oki Data test.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the .UA Policy.
C. Registered or Used in Bad FaithParagraph 4(b) of the .UA Policy sets out a non-exhaustive list of circumstances that indicate bad faith conduct on the part of the respondent, namely:
(i) circumstances indicating that the respondent has registered or has acquired the disputed 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 the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted 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 the 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.
The Complainant has used its WOLF Trademark in commerce for almost twenty years prior to the registration of the Disputed Domain Name, therefore, it is likely that the Respondent was well aware of the Complainant’s Trademark when he registered the Disputed Domain Name.
The Respondent has registered and was using the Disputed Domain Name for the purpose of attracting Internet users to its competing website by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and of the products sold on it, see, e.g., Normalu SA v. Privacyprotect.org,WIPOCase No. D2011-0444. Taking into consideration that the Complainant is actively engaged in selling its products under the WOLF Trademark on the Internet, Internet users could most likely consider that the Disputed Domain Name was referring to the one of the Complainant’s or its distributor’s official websites. Accessing the Disputed Domain Name, Internet users could suppose that the Disputed Domain Name was related to or associated with the Complainant and the Complainant’s products, and accordingly could suppose that the products were the original Complainant’s products.
In the Panel’s view, the fact that the Respondent knew about the Complainant’s Trademark at the time of the registration of the Disputed Domain Name is undisputable in view of that the Disputed Domain Name completely reproducing the Complainant’s Trademark and that the Respondent was using the Disputed Domain Name for a website, which contained the Complainant’s Trademark and various Complainant's products. It should also be noted that the website under the Disputed Domain Name contained no information about the Respondent’s relationship with the Complainant (or lack thereof). As a result, the Panel finds that the Respondent had the Complainant’s Trademark in mind and intentionally targeted the Complainant when he registered and used the Disputed Domain Name.
Moreover, the Respondent did not respond to the Complainant's cease and desist letter and did not provide any explanation for its actions, which also confirms its bad faith (see, e.g., Compagnie Generale des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022).
In view of the foregoing, the Panel finds that paragraph 4(a)(iii) of the .UA Policy has been satisfied by the Complainant and accordingly, 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 .UA Policy and 15 of the .UA Rules, the Panel orders that the Disputed Domain Name
Mariya Koval
Sole Panelist
Date: October 26, 2021