The Complainants are Zvērināta advokāta Romualda Vonsoviča birojs (the “First Complainant”) and Romualds Vonsovičs (the “Second Complainant”), Latvia, represented by Malouf & Nockels LLP, United States of America (“United States”).
The Respondent is Roberts Sulcs, Czech Republic, self-represented 1.
The disputed domain name <vonsovics.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2020. On August 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 2020, 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 Complainants on August 26, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on August 30, 2020.
In response to a notification by the Center that the amended Complaint exceeded the word count specified in paragraph 11(a) of the WIPO Supplemental Rules for Uniform Domain Name Resolution Policy (the “Supplemental Rules”), the Complainants filed a second amended Complaint on September 2, 2020. On September 4, 2020, the Center informed the Complainants that the second amended Complaint also exceeded the word count specified in the Supplemental Rules, paragraph 11(a). The Complainants filed a third amended Complaint on September 9, 2020.
The Center verified that the Complaint, together with the third 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 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 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2020. The Response was filed with the Center on September 28, 2020.
The Center appointed Adam Taylor as the sole panelist in this matter on October 1, 2020. 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.
On October 3, 2020, the Center received a request from the Complainants seeking the Panel’s leave for the Complainants to submit a supplemental filing in reply to the Response in order to explain why the action would not become “moot” on expiry of the disputed domain name on October 7, 2020, as the Respondent had contended.
On October 6, 2020, the Panel issued Procedural Order No. 1 declining the Complainants’ request to submit a supplemental filing on the grounds that the Registrar had confirmed that the disputed domain name would not expire during the pendency of this administrative proceeding.
The Second Complainant is a prominent lawyer in Latvia. In 2005, he formed the First Complainant law firm, which has traded under the name “Vonsovičs Law”. The Complainants are hereafter referred to as “the Complainant” except where it is necessary to refer to them separately.
Since 2005, the Complainant has used the domain name <vonsovics.lv> for a website and email.
The Respondent registered the disputed domain name on October 7, 2019.
The disputed domain name has been used for a website with a short video promoting a book that was highly critical of the Second Complainant.
A summary of the Complainant’s contentions is as follows:
The Complainant possesses unregistered trade mark rights in the terms “Vonsovičs”, “Vonsovičs Law”, and the domain name <vonsovics.lv>, deriving from their use as distinctive identifiers of legal services offered by the Complainant. This is supported by the fact that the Respondent registered the disputed domain name specifically to target the Complainant.
The disputed domain name is confusingly similar to the Complainant’s trade mark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has never given the Respondent permission to use its name for any purpose.
The Respondent is using the disputed domain name intentionally to trade on the fame of the Complainant by impersonating the Complainant to lure visitors to the Respondent’s website to promote the Respondent’s book. Such use cannot constitute a bona fide offering of goods or services.
On June 12, 2020, the Consumer Rights Protection Center of the Latvian Ministry of Economics issued a decision that the Respondent had used the disputed domain name, plus the name and photograph of the Second Complainant, to promote a book in breach of local advertising law.
The Respondent has not been commonly known by the disputed domain name.
The Respondent is not making legitimate noncommercial or fair use of the disputed domain name. The Respondent’s purpose is to sell a book about the Second Complainant.
The disputed domain name was registered and is being used in bad faith.
The disputed domain name constitutes an effort to disrupt the Complainant’s business and promote the Respondent’s book in breach of paragraph 4(b)(iii) of the Policy.
The Respondent has also set out to create a likelihood of confusion with the Complainant’s mark in accordance with paragraph 4(b)(iv) of the Policy.
A summary of the Respondent’s contentions is as follows:
The First Complainant is not entitled to the disputed domain name as only one word in the official name of the firm overlaps with the disputed domain name. However, the Second Complainant has a greater entitlement to the disputed domain name than the Respondent but the right is not exclusive as other people may share the surname.
The Respondent’s website did not impersonate the First Complainant, as it was not connected with law or similar services and its purpose was clear and transparent.
The First Complainant was founded in 2005 and it therefore had 14 years during which it could easily have registered the disputed domain name itself as the disputed domain name was freely available during that time.
In any case, the Respondent never intended to extend the disputed domain name past its imminent expiry date of October 7, 2020, and has no interest about what happens to the disputed domain name thereafter. The disputed domain name will become available for registration by anyone including the Complainant. On that date, this proceeding will become pointless.
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
The principles governing the question of whether a complaint may be brought by multiple complainants are set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11 .
The Panel is satisfied that (a) the Complainants have a specific common grievance against the Respondent and that the Respondent has engaged in common conduct that has affected the Complainants in similar fashion and (b) that it would be equitable and procedurally efficient to permit the consolidation.
The Response is in the form of an email to the Center, which does not comply with the formal requirements set out in paragraph 5 of the Rules. For example, there is no statement of truth. The Panel has nonetheless decided to admit the Response in accordance with its powers under paragraph 10(d) of the Rules but to bear in mind the Response’s non-compliance with the Rules, including in particular the absence of a statement of truth, when weighing up the Respondent’s assertions in this case.
It is true that, as the Respondent states, only one word in the long official name of the First Complainant overlaps with the disputed domain name. However, the Complainant has established – and indeed the Respondent has not disputed - that the First Complainant has traded for many years under the names “Vonsovičs Law” and “vonsovics.lv” and that it has therefore acquired unregistered trade mark rights in those terms.
Section 1.7 of WIPO Overview 3.0 explains that “where at least a dominant feature of the relevant mark is recognisable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
Here, the dominant feature of the Complainant’s marks is the term “Vonsovics” and the Panel therefore concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel would add that for the purposes of this first element it is not relevant that, as the Respondent points out, other people may share the same surname as the Second Complainant. At this point, the Panel is simply concerned with a reasoned but relatively straightforward comparison between the Complainant’s trade mark and the disputed domain name – see section 1.7 of WIPO Overview 3.0.
The Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.
In this case, the Respondent has used the disputed domain name for a website promoting a book that is highly critical of the Second Complainant.
In certain circumstances, genuine and noncommercial criticism can support a claim to a legitimate interest under paragraph 4(c)(iii) of the Policy. See section 2.6 of WIPO Overview 3.0.
However, in this case, the criticism is not noncommercial as it is being used to promote a book.
Furthermore, as explained in section 2.6.2 of WIPO Overview 3.0, panels tend find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trade mark (i.e., <trademark.tld>) as this creates an impermissible risk of user confusion through impersonation.
In this case, the disputed domain name is virtually identical to the Complainant’s trade mark because it consists of the dominant and distinctive feature of that mark - “Vonsovics”. In the Panel’s view, the disputed domain name constitutes a misrepresentation to users that any associated website is likely to be officially connected with the Complainant. There is nothing in the disputed domain name to indicate that it leads to a site that contains content critical of the Complainant. While no doubt users arriving at the Respondent’s website will soon realise that it is not a law firm site, and not officially associated with the Complainant, such users have nonetheless been attracted to the website on the false premise that is the Complainant’s own site.
For these reasons, the Panel does not consider that the website is a legitimate criticism site for the purposes of the Policy. The Panel would add that it is not qualified to assess, and it expresses no opinion on, the views expressed by the Respondent including whether or not they are defamatory.
There is no evidence that paragraphs 4(c)(i) or (ii) of the Policy apply in the circumstances of this case either.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
As explained above, the Panel considers that the Respondent has used for its commercial website containing highly critical content about the Complainant a domain name that is likely to make a misrepresentation to users that any associated website is connected with the Complainant. As the panel in Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No. D2001-0376, puts it, the disputed domain name would “catch by surprise” visitors intending to reach the Complainant’s website. In the Panel’s view, the foregoing constitutes registration and use in bad faith.
It does not assist the Respondent that, as the Respondent points out, the Complainant did not itself register the disputed domain name in the 14 years before the Respondent registered it. Even if the disputed domain name was available during that time, the Complainant’s failure to do register it, for whatever reason, does not itself justify the Respondent itself doing so in the circumstances of this case.
ThePanel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
For 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 <vonsovics.com> be transferred to the Complainant.
Adam Taylor
Sole Panelist
Date: October 15, 2020
1 The original Complaint named the Registrar as the Respondent. The third amended Complaint added the name of the Respondent. For the purposes of this decision, the Panel treats the underlying registrant, Roberts Sulcs, as the Respondent.