The Complainant is E.I. du Pont de Nemours and Company (DuPont) and Antec International Ltd. of Geneva, Switzerland, represented internally.
The Respondent is DomainProtect LLC/Comar Ltd., Domain Administrator both of St. Petersburg, the Russian Federation.
The disputed domain name <virkon.com> is registered with NICCO.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2010. On August 27, 2010, the Center transmitted by email to NICCO a request for registrar verification in connection with the disputed domain name. On August 31, 2010, NICCO 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 September 7, 2010 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 September 9, 2010.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2010.
The Center appointed Ladislav Jakl as the sole panelist in this matter on October 21, 2010. 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 the question of the language of the proceedings, the Center invited the parties to comment as the language of the proceedings is normally the same as the language of the registration agreement, in this case, Russian. The Respondent did not comment on this question by the specified due date. The Complainant requested the Panel to decide that the language of the administrative proceedings in this case be English. According to Paragraph 11(a) of the Rules the Panel has the authority to determine a different language other than the one in the registration agreement, having regard to the circumstances of the administrative proceeding. Therefore the Panel, taking into account the circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd., WIPO Case No. D2007-1836), decides that the language of the administrative proceedings be English.
The Complainant asserted, and provided evidence in support of the following facts which the Panel finds established:
The Complainant’s Du Pont Company has been founded in 1802 in Wilmington, Delaware, USA. Du Pont is a chemical and science based company that puts science to work by creating sustainable solutions essential to a better, safer, healthier life for people everywhere. It operates in approximately 80 countries. Du Pont offers a wide range of innovative products and services for markets including agriculture, nutrition, electronics, communications, safety and protection, home and construction, transportation and apparel. At the core of thousands of applications in our world are ingredients that have origins in Du Pont science and innovation. The Du Pont brands are familiarly known in homes, communities and commercial environments.
Complainant is the owner of the VIRKON trademark, which was registered in many countries around the world, including Russia. The Russian word trademark VIRKON was registered in the Russian Federation on September 20, 1993, registration No. 134614, in class 05 of the International Classification of Goods and Services under the Nice Agreement.
The disputed domain name was created <virkon.com> on April 25, 2007 (valid until April 25, 2011).
The Complainant states that his trademark VIRKON, which is registered in many countries around the world, including Russia, is identical to the disputed domain name <virkon.com> and that the portion corresponding to the gTLD “.com” should not be taken into account (Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300).
As to legitimate interests, in respect of the disputed domain names, the Complainant contends that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name that is the subject of the Complaint. In particular, none of the circumstances mentioned in the Policy, paragraph 4(c), have been demonstrated by the Respondent on the present record. Specifically, the Panel finds no evidence of 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. None of the links shown at the website refer or are related to Virkon and a number of them redirect to DuPont competitors’ sites and products. It is clear that the Respondent’s website, to which the disputed domain name resolves, contains numerous sponsored commercial links. The Respondent’s use of the disputed domain name serves the purpose of generating revenue via advertised pay-per-click products and links and it has been held in previous cases that such use in the circumstances does not represent a use in connection with a bona fide offering of goods and services. In addition the Complainant contends, that it should be noted that the disputed domain name was first registered in 2007. Complainant has been monitoring it since late 2008 and can confirm that since then, there has been no website other than the current one, which strongly suggests that Respondent has no intention to carry out any bona fide offering of goods or services.
Moreover the Complainant contends that Respondent’s website is nothing but a list of links to companies and products unrelated or competing with DuPont products. Therefore, Respondent is diverting Internet users to websites that advertise goods competitive with those of Complainant and thus it is using the disputed domain name for commercial gain and to misleadingly divert consumers to its and its advertiser’s websites. This can certainly not be considered a legitimate noncommercial or fair use of the disputed domain name (Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006; The Knot, Inc. v. In Knot we Trust Ltd, WIPO Case No. D2006-0340; Brink’s Network, Inc. v. Asproductions, WIPO Case No. D2007-0353).
As to bad faith, the Complainant says that the Respondent’s conduct falls squarely within Policy, paragraph 4(b)(iv) by using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s web site 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 web site or location or of a product or service on the Respondent’s web site or location. The fact that Respondent includes links to products/companies unrelated to (and sometimes competing with) DuPont, most likely for commercial gain, may create the impression on Internet users that such products/companies, as well as Respondent’s website, are in fact sponsored, affiliated or endorsed by DuPont. In Complainant’s opinion, Respondent’s registration and current use of the disputed domain name is in bad faith.
In accordance with paragraph 4(i) of the Policy, the Complainant requests the Panel to order that the disputed domain name <virkon.com> be transferred to Du Pont or, in the alternative, to Antec International.
The Respondent did not reply to the Complainant’s contentions.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.
There is no doubt that disputed domain name <virkon.com> is identical to the Complainant´s trademark VIRKON, which is registered in many countries around the world, including the Russian Federation on September 20, 1993, registration No. 134614, in class 05 of the international classification. Non-distinctive inclusion of the gTLD suffix “.com” do not avoid confusing similarity of domain names and trademarks (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-aventis v. Brad Hedlund, WIPO Case No. D2007-1310; Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300).
For all the above cited reasons, the Panel concludes that disputed domain name is confusingly similar to the Complainant’s trademark, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.
The Panel accepts the arguments of the Complainant that the Respondent does not have any rights or legitimate interests in respect of the domain name that is the subject of the Complaint and that none of the circumstances mentioned in the Policy, paragraph 4(c), are met whether before any notice to the Respondent of the dispute, there is any evidence of 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. Moreover the disputed domain name does not correspond to the name of the Respondent and there is nothing in the record to indicate that the Respondent is commonly known as “Virkon”. The Panel finds that Respondent has no rights in the disputed domain name. Furthermore, it is obvious that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s trademark. The Respondent is diverting Internet users to websites that advertise goods competitive with those of Complainant and thus it is using the disputed domain name for commercial gain and to misleadingly divert consumers to its and its advertiser’s websites.
There is a consensus view by previous UDRP panels that such use cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use in circumstances as the ones that are present in this case (Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wang, WIPO Case No. D2005-0819).
For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(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 his website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
There are present circumstances indicating that, by using the domain name <virkon.com>, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website (paragraph 4(b)(iv) of the Policy). The Panel finds that by using the Complainant’s trademark to draw Internet users to a site offering what appears to be competing or at least related goods, the Respondent is attempting to divert customers from the Complainant and thus to disrupt the Complainant’s business. Such conduct has been found to signal bad faith in numerous other cases such as Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658.
The Complainant’s trademark VIRKON is distinctive and the fact that the Respondent has registered a domain name that is identical to them indicates that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. The Complainant has submitted evidence, unchallenged by the Respondent, which tends to demonstrate that the Respondent knew or must have known of the Complainant’s trademarks at the time he registered the disputed domain name.
As noted, the Panel accepts the arguments of the Complainant, that disputed domain name is not used for any bona fide offerings of goods and services. Internet users, while searching for information on the Complainant’s products, are confusingly led to website connected to the disputed domain name. In such a way, the Respondent is using the disputed domain name to intentionally attract for commercial gain Internet users by trading on the goodwill associated with the Complainant’s trademark. WIPO UDRP decisions have stated that the registration and use of a domain name to re-direct Internet users to websites of competing organizations constitute bad faith registration and use under the Policy. Such conduct has been found to signal bad faith in other cases such as Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658, Encyclopaedia Britannica Inc. v. Sheldon.com, WIPO Case No. D2000-0753, Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768, Zwack Uniuom RT. v. Erica J. Duna, WIPO Case No. D2000-0037.
For the above cited reasons the Panel finds that the disputed domain name was registered and used in bad faith.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <virkon.com> be transferred to the Complainant.
Ladislav Jakl
Sole Panelist
Dated: November 4, 2010