WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Torgovy dom Edyl v. Anton Baranov

Case No. D2006-0612

 

1. The Parties

The Complainant is Torgovy dom Edyl of Moscow Russian Federation, represented by a legal representative of the Russian Federation.

The Respondent is Anton Baranov of Moscow, Russian Federation.

 

2. The Domain Name and Registrar

The disputed domain name <holodok.info> is registered with CSL Computer Service Langenbach Gmbh dba Joker.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2006. On May 18, 2006, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. On May 18, 2006, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Paragraphs 2(a) and 4(a) of the Rules the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 29, 2006. In accordance with Paragraph 5(a) of the Rules the due date for Response was June 18, 2006. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on June 19, 2006.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on June 29, 2006. 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 paragraph 7 of the Rules.

 

4. Factual Background

Joint stock company of closed type (zakrytoe aktsionernoe obschestvo) “Torgovy dom Edyl” was incorporated on November 3, 1997, and has its principal activity in Moscow, Russian Federation (Annex 1a and 1b to the Complaint). The Complainant owns a well-known Russian Internet portal and Internet shop related to refrigerators (in Russian – “холодильник” or in Latin transcription - “holodilnik”), which operate using the domain names: <holodilnik.info>, <holodilnik.ru>, <holod.info>, and others.

The Complainant (its director Mr. Valery Kovalev) is the registrant of domain names <holodilnik.info>, <holodilnic.info>, <holodilnik.ru>, <holodilnic.ru>, <holod.info> (Attachment 5a, 5b, 5c, 5d and 5e to the Complaint).

The Complainant has registered several trademarks in the Russian Federation, including:

- trademark HOLOD registered on March 24, 2005 (priority date July 30, 2004) registration No 285059 and

- trademark HOLODILNIK registered on March 20, 2006 (priority date April 28, 2003) registration No 303134 (Annex 11 to the Complaint).

The Respondent registered the disputed domain name on January 27, 2005.

 

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name <holodok.info> is confusingly similar to the trademark of the Complainant:

- The Complainant has the following trademarks registered in the Russian Federation for numerous classes including classes 35 and 42:

- trademark ХОЛОД (in Cyrillic) registered on May 30, 1996 (priority date April 12, 1995) registration No 1425481;

- trademark HOLOD registered on March 24, 2005 (priority date July 30, 2004) registration No 285059 and

- trademark HOLODILNIK registered on March 20, 2006 (priority date April 28, 2003) registration No 303134 (See Annex 11 to the Complaint).

- The Complainant’s Internet portal and Internet shop operating under domain names <holodilnik.info>, <holodilnic.info>, <holodilnik.ru>, <holodilnic.ru>, <holod.info>, which are registered by the Complainant, are well-known in the Russian Federation.

- The Complainant’s Internet sites attract tens of thousands of visitors (Annex 6 to the Complaint). The Complainant’s Internet shop has about 45,000 hosts per month (Annex 8 to the Complaint).

- Although the disputed domain name is not identical to the Complainant’s registered trademarks it is confusingly similar to them.

- The disputed domain name <holodok.info> differs from the Complainant’s trademark HOLOD merely through the addition of the suffix “ok” and the generic top-level designation “.info”. Suffix “ok” is used by the Respondent in different color (yellow) than the root “holod” (blue).

- Practice of WIPO UDRP cases shows that additional prefix or suffix does not exclude the likelihood of confusion between a disputed domain name and a trade mark (see Keller Williams Realty, Inc. v. Advantage Realtor, WIPO Case No. D2002-0123; A. Nattermann & Cie Gmbh, Aventis Pharma SA v. Derrick Horner, WIPO Case No. D2003-0844).

- The Complainant submits that the disputed domain name is confusingly similar to the trademark of the Complainant, since the suffix “ok” is not an identifier.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name:

- The Complainant contends that the evidence in this case does not confirm the following circumstances:

- Respondent’s intentions to use the domain name with a bona fide offering of goods or services,

- fact that Respondent is, either as an individual, business or other organisation commonly known under the names “Holod” or “Holodok”,

- Respondent’s legitimate noncommercial or fair use of the disputed domain name.

- At the time when Respondent registered the disputed domain name the Complainant’s Internet business and trademarks were well-known in the Russian Federation.

- The Respondent’s use of the disputed domain name to attract the Internet users to its site where he sells the same goods as the Complainant is not enough to demonstrate legitimate interest (see The Marigny Corporation v. Discount Coffee.com, Inc., WIPO Case No. D2001-0354).

- The Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain name.

(c) The domain name was registered and is being used in bad faith:

- The Complainant contends that at the time of registration of the disputed domain name by the Respondent, the Complainant’s Internet business and its trademarks were well-known in the Russian Federation.

- It is the Complainant’s belief that the Respondent as a potential competitor of the Complainant on the market of refrigerators clearly knew of the Complainant’s business and trademarks.

- Furthermore, considering that the Respondent is using a different color for suffix “ok” it increases the risk of confusion for potential customers.

- The Complainant contacted the Respondent several times asking him to stop using the trademark of the Complainant or to show evidence of its legitimate interest in using the disputed domain name, however, the only answer received from the Respondent does not address any of the issues risen by the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under Paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.

However, as noted, the Respondent failed to file any reply to the Complaint and has not sought to answer the Complainant’s assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case, and the Panel will proceed to a decision on the Complaint.

The Respondent’s default does not automatically result in a decision in favour of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:

(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 respect of the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Pursuant to Paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply.

A. Identical or Confusingly Similar

The Complainant has registered trademarks in the Russian Federation for numerous classes including classes 35 and 42:

- trademark HOLOD registered on March 24, 2005 (priority date July 30, 2004) registration No 285059 and

- trademark HOLODILNIK registered on March 20, 2006 (priority date April 28, 2003) registration No 303134 (See Annex 11 to the Complaint).

Since the disputed domain name <holodok.info> bears close resemblance to the trademark HOLOD for the purpose of this case the Panel will examine one trademark of the Complainant, namely HOLOD in Latin. The Panel finds that the Complainant has proved rights to registered trademark HOLOD on the territory of the Russian Federation.

The disputed domain name <holodok.info> is not identical to the Complainant’s trademark HOLOD. The Complainant submits that this difference is merely the addition of the suffix “ok” and generic top-level designation “.info”. Suffix “ok” is used by the Respondent in different color (yellow) than the root “holod” (blue) and as such suffix “ok” is not an identifier of sufficient distinctiveness to avoid confusion.

The Complainant refers to several WIPO UDPR cases. The first case Keller Williams Realty, Inc. v. Advantage Realtor, WIPO Case No. D2002-0123, which, in Panel’s view, relates to a different set of facts when the Respondent adds not a suffix, but a whole new word describing the Complainant’s area of business (the word “realtor” after “kw”, which users could logically use while looking for the Complainant’s web site).

As for A. Nattermann & Cie Gmbh, Aventis Pharma SA v. Derrick Horner, WIPO Case No. D2003-0844, this decision also refers to the situation when the whole new word “direct” is added to the disputed domain name < lipostabildirect.com>.

The Panel considers that both WIPO UDPR cases to which the Complainant refers to are not related to the present case.

In the present case the Panel finds that the trademark HOLOD does not have any meaning in English. However, it does represent a Latin transcription of the word “холод”, which means “cold” in Russian. The word “cold” is not a distinctive name but is a generic word. As for the suffix “ok”, as such it does not represent any word or have any meaning in the Russian language.

The Panel does not accept the Complainant’s argument that the word “ok” should be treated as the English language expression “ok” when the main word “holod” does not have any meaning in English. Even if it were, the Panel notes that the expression “ok” in English is, in any case, a highly generic term commonly used to indicate positive affirmation.

As for the disputed domain name <holodok.info> it does represent a Latin transcription of the word “холодок”, which means “slight cold” and, therefore, also represents a generic word.

The Panel finds that the disputed domain name is similar to the Complainant’s trademark. The Panel refers to a number of past WIPO UDRP decisions, which confirm that incorporating a trademark in its entirety can be sufficient to establish that a domain name is confusingly similar to a registered trademark (Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002 and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802) even when there is a generic word (see Kirkbi AG v. Michele Dinoia, WIPO Case No. D2003-0038) or suffix added.

However, in present case the addition of the word “ok” to the word “holod” does not represent an addition of generic word or of a suffix to a descriptive trademark. Both the trademark and the disputed domain name are generic or dictionary words.

The Panel finds that although there is a similarity between the Complainant’s trademark HOLOD and the disputed domain name <holodok.info>, the Panel also notes that both the trademark and the domain names are generic words and are not distinctive as such.

The Panel further reviews whether the similarity between the disputed domain name and the trademark is confusing.

The Panel view is that both the Complainant’s trademark and the disputed domain names represent Latin transcription of Russian generic terms or dictionary words “cold” and “slight cold”. These words are indirectly associated with the Internet business of the Complainant and the Respondent, which is the Internet service in the area of domestic refrigerators. However, the Complainant uses its trademark HOLOD only as a link to the website “www.holodilnik.ru”. There is no direct Internet presence attached to the trademark HOLOD.

For the reasons set out above, the Panel concludes that there is sufficient similarity between the domain name and the trademark to advance to consideration of the second and third elements of Par. 4(a) of the Policy (See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

B. Rights or Legitimate Interests

The Complainant contends the Respondent has no rights or legitimate interests in the disputed domain name.

Even though the Respondent has not filed any reply to the Complaint and has not contested the Complainant’s assertions, it is up to the Panel to consider whether the evidence shows the Complainant has established at least on a prima facie basis that Respondent does not have rights or legitimate interests in the domain name.

According to Paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a Respondent’s rights or legitimate interests in a domain name:

(i) Respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.

The Respondent may elect to show rights and legitimate interests, non-exhaustively, by producing evidence under Paragraphs 4(c)(i-iii) of the Policy. By not responding to the Complainant’s contentions the Respondent in this proceeding has never attempted to show its rights and legitimate interests.

Firstly, the Panel will examine evidence that, before any notice of a dispute with the Complainant, the Respondent was using the disputed domain name for a legitimate offer of goods and services.

The Respondent’s website using the disputed domain name offers services for comparing prices for different model of refrigerators, their technical and other characteristics and links to various online shops. It may be described as an online shopping guide or Internet information portal. It does provide reviews and price comparison on refrigerators.

The Respondent’s website structure, design and architecture demonstrates a certain level of work and effort invested in creating it. The website offers a possibility of putting up advertising on the website, which is presumably one of the sources of revenue, another one potentially being revenue from referring customers to other online shops.

Secondly, the Panel finds that the Respondent registered the disputed domain name on January 27, 2005 (Annex 2 to the Complaint). The Complainant has registered his trademark HOLOD on March 24, 2005, with priority date July 30, 2004. Although the Complainant filed the trademark application before the Respondent registered the disputed domain name, the domain name <holodok.info> is a generic term in Russian. It was unlikely in the Panel’s view for Respondent to expect that it may be similar to a name covered by a trademark application.

The Panel finds on the evidence presented that the Respondent is engaged in a legitimate business offering services of offering price comparison and product information to the public. The facts of the present case show that the Respondent has been using the website for a legitimate offering of services prior to notice of the dispute under Paragraph 4(c)(i) of the Policy.

The Panel concludes that the Respondent is using the domain name in connection with a bona fide offering of services, according to the standards suggested in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

For the reasons set out above, the Panel finds the Complainant has not carried out its burden of proof to show that the Respondent has no legitimate rights or interests in the disputed domain name.

C. Bad Faith

Although unnecessary in light of the previous finding, the Panel nevertheless makes the following observations in relation to this element.

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that the Respondent has registered and used a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the 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 the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.

The Complainant contends that the Respondent has acted in bad faith because the disputed domain name was registered and used primarily for the purpose of confusing the public and diverting the public’s attention from the Complainant’s official website to the Respondent’s website for potential commercial gain.

As stated above the Respondent operates what appears to be a legitimate price comparison and review website or online shopping guide for refrigerators and uses for that the disputed domain name <holodok.info>. The Respondent’s website has links to various Internet shops.

The Complainant’s website with addresses “www.holodilnik.info” and “www.holodilnic.info” is also a price comparison and review website dedicated to refrigerators (online shopping guide).

The Complainant’s other website with addresses “holod.info”, “holodilnik.ru” and “holodilnic.ru” is an online shop selling a wide range of home electrical goods and appliances, ranging from refrigerators to plasma screens and hovers to cookers. It is worth pointing out that the Complainant’s online shop adopts English spelling “holodilnik.ru” whereas the Complainant’s other website spells “holodilnik.info” in Cyrillic.

The Complainant’s price comparison website has direct links to the Complainant’s online shop. It is important to stress that the Complainant’s domain name <holod.info> based on trademark HOLOD is not used by the Complainant for a website, it is used only as a link to the Complainant’s online shop under the domain names <holodilnik.ru>. “Holod.info” or “holod” logo do not appear at any stage on that website.

The Panel does not find any evidence that the Respondent has violated the provisions of Par. 4(b)(iv) of the Policy.

Equally the Panel does not find any evidence of the Respondent violating other provisions of Par. 4(b) of the Policy.

The Panel concludes that the Respondent is in all probability not using the disputed domain name in bad faith.

As for the registration of the disputed domain name which was done before the Complainant has registered its trademark (but after the trademark application was filed) the Panel believes that the Respondent was unlikely to have knowledge of the Complainant’s trademark application, in particular when both trademark and domain name are generic terms.

WIPO UDRP decisions are consistent in finding absence of bad faith in cases where generic terms or dictionary words are involved.

In the case Alfabet Meta-Modeling AG v. Henrik Rambe, WIPO Case No. D2001-1205 the Panel decided:

“However, the word “alfabet” is indeed, as claimed by the Respondent, a generic term in Respondents home-country, being the Scandinavian word for “alphabet”. As pointed out by the Complainant, this does not preclude that the word can be protected as a trademark for goods and services for which it is not descriptive. On the other hand this means that the Registrant of a domain name incorporating a generic term may well have registered and even used the domain name based on an bona fide assumption that the term incorporated in the domain name is generic and not reflective of a protected mark. In such cases the Registrant can be deemed to have a legitimate interest in the domain name as required in Paragraph 4 (a)(ii) and Paragraph 4(c). The Panel notes that many previous decisions under the UDRP has addressed the same question, see inter alia Kur-und Verkehrsverrein St. Moritz v. StMoritz.com, WIPO Case No. D2000-0617 <stmoritz.com>, J. Crew International, Inc. v. crew.com, WIPO Case No. D2000-0054 <crew.com>, Zero International Holding Gmbh & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, WIPO Case No. D2000-0161 <zero.com>, and Amana Company, L.P. v. Vanilla Limited, WIPO Case No. D2001-0749 <deepfreeze.com>.”

Therefore, regarding these facts, it is the Panel’s view that the Respondent most probably registered the disputed domain name without awareness of the Complainant’s trademark application and even products and services provided under domain names <holodilnik.ru> and <holodilnic.ru>.

The Panel’s independent search shows that current use of the website “www.holodok.info” is practically the same. It is clear that the Respondent continues to use the disputed domain name for a website, which may be described as online shopping guide, which has links to various online shops.

The Panel finds notes the Complainant has not submitted evidence that the circumstances described in Paragraph 4(b)(iv) of the Policy are present in this case.

The Panel finds that, had a finding on this element been necessary, the Panel would in all likelihood have concluded that the Complainant has not shown that the Respondent registered and used the disputed domain name in bad faith.

 

7. Decision

The Panel decides that the Complainant has not proven elements of Paragraph 4(a)(ii-iii) of the Policy. In accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Complaint is denied.

Irina V. Savelieva
Sole Panelist

Dated: July 24, 2006

1 The Complaint states that this is one of the trademarks that the Complainant has a right to. In fact, the registration of this trademark has expired on April 12, 2005. The Complainant filed an application for this trademark again on April 27, 2006, just before the filing of this Complaint.