Complainant is Alfaleads Limited, China, represented by Versus.legal LLC, Russian Federation.
Respondent is Perfect Privacy, LLC, United States of America (“United States”) / Frank Kube, United States.1
The disputed domain name <alfaleads.com> is registered with Register.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2019. On December 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2019, 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 Complainant on December 19, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 23, 2019.
The Center verified that the Complaint, together with the amendment to 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 20, 2020.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on January 23, 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.
Complainant is a company organized under the laws of Hong Kong, China that is active in the online advertising industry.
Complainant has provided evidence that it is the registered owner of the following trademarks relating to its company name and brand “Alfaleads”:
- Word mark ALFALEADS, Russian Federation Federal Service for Intellectual Property, registration number: 706357, registration date: January 1, 2019, status: active;
- Word mark ALFALEADS, World Intellectual Property Organization (WIPO), registration number: 1453127, registration date: October 2, 2018; with designation under the Madrid Protocol, inter alia, to the United States, status active.
Moreover, Complainant has evidenced to own since July 28, 2016, the domain name <alfaleads.ru>, which redirects to Complainant’s official website at “www.alfaleads.ru” promoting Complainant’s online advertising business and related services.
Respondent, according to the WhoIs information for the disputed domain name, is a resident of the United States who registered the disputed domain name on March 19, 2012. Complainant has demonstrated that, before the filing of the Complaint, the disputed domain name redirected – and still does by the time of the rendering of this decision – to a website at “www.alfawassermannus.com” run by “Alfa Wassermann Diagnostics Technologies, LLC” with legal domicile in the United States, the use of which requests a User Log-in (email address and password) for further access.
Complainant requests that the disputed domain name be transferred to Complainant.
Complainant contends that it has been using its ALFALEADS trademark for identifying Complainant’s online advertising services since 2016 and that this trademark is meanwhile widely known in the advertising market and has a strong reputation.
Complainant submits that the disputed domain name is identical with Complainant’s ALFALEADS trademark. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name because: (1) Respondent has never used or tried to use the disputed domain name since its registration in 2012, neither commercially nor in any noncommercial way, as the website to which the disputed domain name redirects is empty, (2) Respondent Perfect Privacy LLC is well known as a professional cybersquatter, which is evidenced by a number of decisions in UDRP proceedings which found against this Respondent, (3) when Respondent Perfect Privacy LLC was notified of the Complaint, it decided to transfer the disputed domain name to Respondent Frank Kube in order to hide the real identity that has an interest in the disputed domain name, and (4) Respondent Frank Kube currently is the “Vice President of Global Information Technology” (Global IT) at “Alfa Wassermann Diagnostics Technologies, LLC”, with the official website being “www.alfawassermann.com”, thus having no legitimate interests in respect of the disputed domain name on their own. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) when Respondent Perfect Privacy LLC learned of the Complaint, it decided to transfer the disputed domain name to Respondent Frank Kube in order to pretend that there is no bad faith conduct, (2) the disputed domain name is only being passively held by Respondent as the website to which it redirects does not reflect Respondent’s real commercial activity, and (3) Complainant’s ALFALEADS trademark is widely known on the advertising market and has a strong reputation, so it is obvious that Respondent Frank Kube had knowledge thereof when the disputed domain name was transferred upon him.
Respondent did not reply to Complainant’s contentions.
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent’s failure to submit a Response as it considers appropriate.
The Panel concludes that the disputed domain name <alfaleads.com> is identical with the ALFALEADS trademark in which Complainant has rights, and that Complainant, thus, has standing to file this UDRP Complaint.
The disputed domain name consists of Complainant’s entire ALFALEADS trademark as the Second-Level Domain; moreover, it has been held in many UDRP decisions and is widely agreed upon among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11) that the applicable generic Top-Level Domain (“gTLD”), here “.com”, is generally viewed as a standard registration requirement and as such is disregarded under the first element test.
The Panel further notes that there is a consensus view among UDRP panels according to which the fact that a domain name has been registered before a complainant has acquired trademark rights does not by itself preclude a complainant‘s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element, provided that complainant’s trademark rights are in existence at the time the complaint is filed (see WIPO Overview 3.0, section 1.1.3). Accordingly, the fact that the disputed domain name <alfaleads.com> was registered by Respondent already on March 19, 2012, thus well before Complainant acquired registered rights in the ALFALEADS trademark in 2018/19, is not in contrast to the above finding that Complainant has standing to file this UDRP Complaint, but need be evaluated in the context of the second and the third elements of the UDRP (see Sections B. and C. below).
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
The Panel, further, has to decide whether or not Respondent has rights or legitimate interests in respect of the disputed domain name. In order to demonstrate such rights or legitimate interests, according to paragraph 4(c) of the UDRP, a non-exclusive catalogue of respondent defenses includes the following:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
While the overall burden of proof in UDRP proceedings is on the complainant, there is a consensus view among UDRP panels that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1).
According to the case file brought before this Panel, including correspondence between the Center and the Registrar in relation to the so-called “Request for Registrar Verification”, it is obvious that Perfect Privacy, LLC is a typical privacy protection service and that Frank Kube is – and, in the absence of any other indication in the case file, was since 2012 – the underlying registrant of the disputed domain name. Complainant’s presumption that Perfect Privacy, LLC transferred the disputed domain name to Frank Kube only upon notification of the Complaint not only is against usual business practice, but above all contrary to the fact that the Registrar locked the disputed domain name for the duration of the pending UDRP proceeding on December 16, 2019, and that Perfect Privacy, LLC was first contacted by the Center as well as by Complainant in relation to this UDRP proceeding only on December 19, 2019.
Moreover, as stated by Complainant itself and also confirmed by some limited research undertaken by this Panel as part of its general powers set forth by paragraph 10 of the Rules, before the filing of the Complaint the disputed domain name redirected – and still does so – to a website at “www.alfawassermannus.com” run by “Alfa Wassermann Diagnostics Technologies, LLC”, the further use of which requests a User Log-in (email address and password) for access. Respondent, as brought forward by Complaint itself, is the “Vice President of Global IT” of this company and obviously registered the disputed domain name in accordance with this function by referring in the corresponding WhoIs information to “Alfa Wassermann” as the “Registrant Organization” and using the contact details of said company. This Panel, therefore, may not follow Complainant’s assumption that Respondent has never used or tried to use the disputed domain name since its registration in 2012, neither commercially nor in any noncommercial way and that this is a case of so-called “passive holding”.
On the contrary, the disputed domain name undisputedly is resolving, and apparently has been doing so for quite some time, to the commercially active website “www.alfawassermannus.com” of the company “Alfa Wassermann Diagnostics Technologies, LLC” for which Respondent acts as “Vice President of Global IT”. It is correct if Complainant states that this Internet presence under the disputed domain name at “http://www.alfawassermannus.com/dp/login.asp” may not be directly accessed by every Internet user, however, requesting a User Log-in (by inserting an email address and a password) for website access is a standardized technical means to restrict on the Internet certain website areas to specific Internet users and is not in contrast to a finding that the disputed domain name is being used within the meaning of paragraph 4(c) of the UDRP.
Finally, the company name “Alfa Wassermann” of the legal entity to whom the disputed domain name commercially seems to belong, directly relates to the term “alfa” as it is reflected in the disputed domain name together with the dictionary term “leads” which has several meanings and does not specifically point e.g., to Complainant at all. This circumstance may well be regarded as an indication that the disputed domain name is and was used by Respondent in connection with a bona fide offering of an Internet service even well before Respondent got notice of this dispute (see paragraph 4(c)(i) of the Policy) and Complainant, in turn, has not put forward any circumstances that would refute this presumption.
Accordingly, the Panel finds that Respondent has rights or legitimate interests in respect of the disputed domain name as set forth by paragraph 4(c) of the Policy, and that Complainant, therefore, fails to establish the second element under the Policy set forth by paragraph 4(a)(ii).
Given the above conclusion, the Panel need not specifically address the question whether or not Respondent registered and uses the disputed domain name in bad faith.
Nevertheless, and in order to complete and further substantiate the final decision in this proceeding, the Panel has well noted that Respondent registered the disputed domain name already back in 2012, when Complainant, according to its own contentions, had not yet even started its business, and had not yet acquired any rights in relation to the term “Alfaleads”, either as trademark, domain name, or in any other way. Moreover, the case file does not contain any indication whatsoever that the registration and making use of the disputed domain name at any point of time targeted at Complainant, its business or its ALFALEADS trademark. On the contrary, the disputed domain name apparently has been in use since some time in a commercial context by the company “Alfa Wassermann Diagnostics Technologies, LLC”, whose name at least relates to the disputed domain name; moreover, the way in which the disputed domain name is used obviously has no impact on Complainant (other than that Complainant does not itself possess of the disputed domain name) and Respondent, being the “Vice President of Global IT” of “Alfa Wassermann Diagnostics Technologies, LLC” apparently never attempted to take unfair advantage of or otherwise abuse Complainant’s ALFALEADS trademark in any way.
Against this background, the Panel concludes that Respondent has not registered and is not using the disputed domain name in bad faith, which is why Complainant has not established the third element under the Policy set forth by paragraph 4(a)(iii) either.
For the foregoing reasons, the Complaint is denied.
Stephanie G. Hartung
Sole Panelist
Date: January 31, 2020
1 It is evident from the case file that Perfect Privacy, LLC, United States, is a privacy protection service and that Frank Kube, United States, is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only (see also Section 6. B. below).