The Complainant is ALROSA of Mirnyi city, Sakha (Yakutia) Republic, Russian Federation, represented by Internet & Law, Russian Federation.
The Respondents are Domain Privacy LTD, DNS Admin of Marblehead, Massachusetts, United States of America / The Tidewinds Group, Inc. of Marblehead, Massachusetts, United States of America and Elisa Marina Mendoza Rosa of San Pedro Sula, Honduras, represented by Greenberg & Lieberman, LLC, United States of America / Whois Privacy Services Pty Ltd, Domain Hostmaster of Fortitude Valley, Queensland, Australia.
The disputed domain name <alrosa.com> is registered with Fabulous.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2013. On February 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 2013, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on February 13, 2013.
The Center verified that the Complaint together with the 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 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 with the amended Complaint, and the proceedings commenced February 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response March 6, 2013.
On March 1, 2013, the listed Registrant of the disputed domain name sent an email communication to the Center, stating that Domain Privacy Ltd is a privacy service of The Tidewinds Group, Inc. and indicating Ms. Elsa Marina Mendoza Rosa as the beneficial owner of the disputed domain name.
The Center replied, on March 4, 2013, indicating that it was not in a position to make a substantive assessment on the merits of the Registrant’s claim and that it is the role of the independent Administrative Panel (on appointment). In this communication, the Center also highlighted that it has certain obligations under the Rules in relation to the notification of a Complaint, that include ensuring that the Complaint is forwarded to the listed registrant of record and contact details as listed in the WhoIs data, or such as may be provided by the applicable Registrar.
On the same day, the Respondents’ representative sent a communication by email to the Center requesting that, should the Complainant have opted for proceeding with an action against the true owner, an amended complaint be filed. The Respondents’ representative also indicated that, otherwise, it would have filed a response on behalf of The Tidewinds Group, Inc. to dismiss the Complaint based on the fact that it does not own the disputed domain name. The Respondents’ representative also stated that, since Ms. Rosa is a Honduran citizen and speaks only Spanish, the complaint must be in Spanish.
Also the Complainant sent an email to the Center on March 4, 2013 (the contents of which are summarized in the next paragraphs), stating that it would not have been appropriate to consider Ms. Mendoza Rosa as a beneficial owner of the disputed domain name.
The Respondents’ representative sent a communication to the Center on March 4, 2013, requesting an extension of the Response due date to enable translation of the Complainant’s pertinent documents into Spanish in order for Ms. Elisa Marina Mendoza Rosa to understand them and participate in the preparation of the Response.
On March 5, 2013, the Center addressed a communication to the parties requesting the Complainant to send its comments on the extension of the Response due date and informing the Respondents’ representative that the language of the proceeding is English according to paragraph 11(a) of the Rules.
Following the Respondents’ representative email on March 5, 2013, reiterating the request for an extension, and the Complainant’s reply indicating that, if the Center had considered it necessary to grant such an extension to the Respondent, the Complainant would have not risen objections against it, the Center extended the Response due date to March 16, 2013.
The Response was filed with the Center on March 15, 2013.
The Center appointed Luca Barbero, Daniel J. Gervais and David E. Sorkin as panelists in this matter on April 17, 2013. The Panel finds that it was properly constituted. Each member of 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.
As mentioned in the Procedural History, on March 6, 2012, the Complainant sent an email to the Center. In said communication, the Complainant stated that:
- Since Domain Privacy LTD and The Tidewinds Group, Inc. are/have been the entities recorded on the WhoIs register for the disputed domain name, they are the only parties against whom the Complaint should be initiated and upon whom service should be effected. For analogous circumstances, the Complainant cites Chippendales USA, LLC v. Registerfly.com, WIPO Case No. D2006-0488;
- At the moment the Complaint was filed, the Complainant was not aware of the existence of any beneficial owner, of his/her name, surname and contact details, and the web sites placed under the disputed domain name also did not, and do not, testify the identity of a beneficial owner; additionally, when the Respondent sent the message about a “true” beneficial owner to the Center, more than two weeks had passed from the Respondent’s receipt of the Notification of the Complaint and Commencement of Administrative Proceeding, circumstance that arouses reasonable suspicion, because it resembles an elaboration of the Respondent’s position in the case, and not only a notification of the fact, that could be established in a relatively short time;
- It does not seem appropriate to treat Ms. Rosa as a beneficial owner of the disputed domain name and later as a Respondent, and in this connection there do not appear to be sufficient reasons for considering her Response in the absence of any compelling documentary evidence of Ms. Rosa’s existence, of her name and surname and contact details and of her connection with the disputed domain name;
- The involvement of a person, whose virtual name (nickname, surname) sounds similar to the disputed domain name, suggests that artificial reasons are being created by the Respondent Domain Privacy LTD and The Tidewinds Group, Inc. in order to protect imaginary rights to the disputed domain name, used as a link farm, that is not supported by the WIPO practice and is rejected by it. For analogous circumstances (collision of nicknames/imaginary names and domain names) the Complainant refers to the following UDRP cases Harrice Simons Miller v. H Rheyne, WIPO Case No. D2004-0504, Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453, Irish Distillers Limited v. James Powers, WIPO Case No. D2010-2008, Banco Espírito Santo S.A. v. Bancovic, WIPO Case No. D2004-0890, CHRISTIAN DIOR COUTURE v. Erynn Brown, WIPO Case No. D2009-0351, that resulted successfully for the complainants.
In its Response, the Respondent Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc. states that it is not the owner of the disputed domain name, but rather a domain registration and domain name management service provider, and that the beneficial/substantive owner of the disputed domain name, as communicated by this Respondent to the Center on March 1, 2013, is Elisa Marina Mendoza Rosa.
The Respondents deny the above-mentioned Complainant’s claims and state that domain name owners’ use of a privacy shield is widely used and well documented, that such privacy shields replace a domain name registrant’s contact information in the Whois database with the privacy shield’s contact information and forwarding addresses and that many domain name registrars lift the privacy shield in response to a UDRP complaint. The Respondents point out that they are not creating artificial reasons in order to protect imaginary rights to the disputed domain name since Elisa Marina Mendoza Rosa is a real person who is the beneficial/substantive owner of the disputed domain name. The Respondent Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc. also state that it is not affiliated with the concerned Registrar and that, as a result, it was not able to terminate the privacy service and re-place the Registrant's WhoIs contact information of the disputed domain name before it was locked in response to the UDRP filing.
In light of the above summarized circumstances, a preliminary issue arises, in this case, concerning the use of a privacy (or proxy) registration service and the “disclosure” by such service of an underlying registrant only after the proceedings formally commenced.
In its consideration of this issue, the Panel notes, first, that the Policy does not expressly deal with such privacy services, for the obvious reason that their existence postdates the adoption of the Policy and the Rules. In the absence of clear guidance from ICANN on their status and treatment for UDRP purposes, the distillation of applicable principles in this still developing area is left to UDRP parties, providers and panels.
As indicated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2. 0”), paragraph 4.9, and cases cited therein, most panels in cases involving privacy services in which disclosure of a so-called underlying registrant (or registrants) has occurred, took due account of both, or even focused solely on the registrar-confirmed registrant. Even in cases where panels have upheld complainant elections to proceed formally against the privacy service only (see e.g. Research In Motion Limited v. PrivacyProtect.org / Pluto Domain Services Private Limited, WIPO Case No. D2009-0324, panels have still tended to take substantive account in their decisions of any registrar-confirmed registrants of record.
This Panel accepts that there may well be valid reasons for the use of a privacy registration service but notes that, as stated in F. Hoffmann-La Roche AG v. PrivacyProtect.org, Domain Admin and Mark Sergijenko, WIPO Case No. D2007-1854, it is also important for the functioning of the Policy that there be a reliable and readily accessible means by which the holder of a domain name can be identified in the event of a domain name dispute. That is the purpose of the WhoIs database and of the Center’s Registrar verification process, which can obtain additional information (including contact details and mutual jurisdiction information) not necessarily accessible through the WhoIs database.
In the cases involving the use of privacy services, the Center’s verification procedure provides the listed registrars of record with an opportunity to disclose the contact information of the underlying domain name registrants before the formal commencement of the proceedings. This only applies when privacy or proxy registration services i) have some affiliation with the registrars or ii) have established communications with the concerned registrar.
In cases where a privacy registration service is confirmed by the concerned registrar as the registrant of record, it receives formal notification of the complaint from the Center (as a respondent) and it should make any possible submissions in relation to the respondent’s identity at least before the due date for the submission of the response.
In the case at hand, the Panel finds that Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc. is to be considered as a Respondent for the purposes of this proceeding. Domain Privacy Ltd, the privacy service of The Tidewinds Group, Inc., is the entity that is recorded on the Whois register for the disputed domain name and that was indicated as registrant of the disputed domain name in the Verification Response sent to the Center by the Registrar. As stated, amongst others, in Chippendales USA, LLC v. Registerfly.com, WIPO Case No. D2006-0488, cited by the Complainant, “[i]t is, therefore, the party against whom any complaint should be initiated and upon whom service should be effected under Paragraph 2 of the Rules”.
However, unlike in Chippendales USA, LLC v. Registerfly.com, supra, in the present case the Respondent has submitted a detailed Response indicating that it is not the beneficial owner of the disputed domain name, and the disputed domain name was acquired in 2005 by Ms. Elisa Marina Mendoza Rosa, who, after the acquisition, decided to leave the disputed domain name into the administration of The Tidewinds Group, Inc. using the company’s privacy service.
While the Panel might have been inclined to accept the Respondents’ arguments that, since Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc. is not affiliated with the Registrar, it could not provide the disclosure of the underlying registrant before the disputed domain name was locked, it notes that this disclosure was made to the Center two weeks after the notification of the Complaint and that the Respondent has failed to provide an explanation for the delay in communicating the identity of the effective owner of the disputed domain name.
Based on the evidence submitted by the Respondent as to the identity of the owner of the registration due to her acquisition of the disputed domain name in September 2005 (described in detail in the paragraphs below), the Panel finds that Ms. Elisa Marina Mendoza Rosa is the appropriate substantive Respondent in this case.
The Complainant is a Russian open joint-stock company that was established on August 13, 1992 and is active in the field of diamond recovery.
The Complainant is the owner of trademark registrations consisting in or including ALROSA or its transliteration in Cyrillic characters АЛРОСА, including the Russian trademark registrations Nos. 141052 for АЛРОСА-АВИА (in English ALROSA-AVIA), filed on July 7, 1994, 268048 for ALROSA, filed on April 18, 2002, 185691 for АЛРОСА, filed on April 27, 1999, in classes 1, 2, 3, 4 and 5; International trademark registration No. 874227 for ALROSA, registered on December 1, 2005, in classes 14, 35, 36, 37, 39, 40 and 42.
The Complainant is also the owner of domain names including “alrosa” in the Latin or Cyrillic alphabet, including the domain names <alrosa.ru>, registered on May 6, 1998, <алроса.рф>, registered on November 26, 2009, <алроса.net> and <алроса.com>, registered on February 2, 2010, and <алроса.info>, registered on October 22, 2012.
According to the public WhoIs information of <alrosa.com>, the disputed domain name was registered on August 10, 1998. The correspondence submitted by the Respondent shows that the disputed domain name was acquired by Ms. Rosa from The Tidewinds Group, Inc. at the end of September 2005.
The Complainant states that its company is well-known in Russia and all over the world, accounting for 30% in the global diamond production in terms of value (18% in 2002) and for 94% of Russia’s overall diamond output. The Complainant informs the Panel that its current average annual core product sales revenues, including those generated by the Complainant’s subsidiaries, amount to over USD 4 billion.
The Complainant points out that it has used the company name Alrosa since its establishment and explains that the name Alrosa derives from “Almazy Rossii-Sakha” (in English, “Diamonds of Russia-Sakha”).
With reference to the disputed domain name, the Complainant indicates that it was registered to a person named Victor Smirnov from Moscow from August 10, 1998 to March 6, 2007, when it was registered by the Respondent Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc.
The Complainant highlights that, as evidenced by the screenshots attached to the Complaint, the disputed domain name was redirected in the past to parking pages - the contents of which varied - that displayed various commercial links, including links to web sites that offer goods competing with the Complainant’s ones, such as “www.diamondland.be”, “www.myblackdiamonds.com”, “www.valtera.ru”, “www.lightinthebox.com”, “www.nebo-v-almazah.ru”, and web sites connected with activities that can be associated with the Complainant’s business.
The Complainant contends that the disputed domain name is identical to the Complainant’s trademarks and company name.
With reference to rights or legitimate interests in the disputed domain name, the Complainant states that the Respondent Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc. was not, and is not, the right holder of trademark rights for ALROSA, that this Respondent was not granted any license or authorization by the Complainant to use its trademarks in any manner and that the disputed domain name does not reflect the Respondent’s company name.
The Complainant highlights that the disputed domain name does not consist of a common term or an ordinary word, particularly, in the Russian language or in the European languages. The Complainant underlines that the disputed domain name does not coincide with the company name of the Respondent Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc. and there is nothing in the Respondent’s name that indicates it may have become commonly known by the disputed domain name.
The Complainant also highlights that there is no evidence that the Respondent Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc. is making any legitimate noncommercial or fair use of the disputed domain name, that, when the disputed domain name was registered by the Respondent in 2007, the Complainant and its trademark ALROSA had already become well-known and that, in light of the above-described redirection of the disputed domain name to parking page web sites with pay-per-click links, the Respondent Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc. does not use the disputed domain name in connection with a bona fide offering of goods or services
The Complainant, therefore, concludes that the Respondent Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc. has no rights or legitimate interests in respect of the disputed domain name.
With reference to the circumstances evidencing bad faith, the Complainant states that, at the time the disputed domain name was registered by the Respondent Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc., the Complainant’s trademarks had been already registered and the Complainant was well-known, in view of the use of its trademarks and its company name; therefore, the Complainant affirms that the Respondent Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc. should have been aware of the Complainant’s activity and its trademarks and that the Respondent intentionally chose for registration the disputed domain name, coinciding with the Complainant’s trademarks, to benefit from the Complainant’s goodwill with the purpose to attract the Internet users that aim at visiting the Complainant’s website and to stimulate Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc.’s revenue from every click to the link. The Complainant remarks that “such parking pages built around a trademark” constitute evidence of Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc.’s bad faith.
The Complainant states that, by registering the disputed domain name, the Respondent Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc. prevented the Complainant from reflecting its trademarks in the disputed domain name, and that, by using the disputed domain name, the Respondent Domain Privacy Ltd, DNS Admin / The Tidewinds Group, Inc. has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's trademarks.
The Complainant states that Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc. was already involved as respondent in other domain name disputes brought before the WIPO Arbitration and Mediation Center and the National Arbitration Forum, where the contested domain names were transferred to the complainants.
The Complainant underlines that the Respondent Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc. offers domain name registration services and also helps in acquiring registered domain names, having registered a total of 8,235 domain names in its name, many of which include third parties’ trademarks or are confusingly similar with them. The Complainant further notes that, according to a developing consensus view of UDRP panelists, professional domainers registering large numbers of domain names for the purposes of sale or pay-per-click advertising must make reasonable good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others.
The Complainant also informs the Panel that the Respondent did not reply to the Complainant’s letters, sent to the email address that was indicated in the contact details of the disputed domain name holder.
As an additional circumstance of bad faith, the Complainant asserts that the named registrant of the disputed domain name was changed from the Tidewinds Group, Inc. to Domain Privacy LTD upon receipt of the Complaint and contends that such a modification was done “with the purpose of avoiding enforcement actions of the WIPO Arbitration and Mediation Center under UDRP”.
Therefore, the Complainant concludes that the Respondent has registered and has been using the disputed domain name in bad faith.
A Response was submitted by the Respondents’ representative who indicated that Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc. does not own the disputed domain name and reiterated the statement made by the DNS administrator at Domain Privacy Ltd in a communication to the Center: “With regard to the lists of domains and other UDRP filings complainant ascribes to The Tidewinds Group, Inc. and Domain Privacy Ltd.: The vast majority of those domains [shown in Complainant’s Exhibits] belong to our customers and we are not in a position to judge whether or not the use of any particular domain name may or may not infringe on the rights of a third party. Many of our customers value their privacy and use our services to avoid unwanted spam emails, telephone calls, and postal mail from all manner of unsavory characters. The attempt by the complainant to burden the respondent with the perceived misdeeds of other users of our services should be disregarded.”
The Respondents assert that they are not capable of fairly analyzing the facts submitted against them because the Complainant has not provided full English translations for its Russian marks to include the goods and services listed in the trademark registrations. They also point out that all the registrations consisting of АЛРОСА and АЛРОСА-АВИА should not be considered in establishing the Complainant’s rights with reference to ALROSA because these two Russian terms do not “translate” to ALROSA since ALROSA is a “made-up acronym” that cannot be translated into another language.
The Respondent Elisa Marina Mendoza Rosa asserts that she acquired the disputed domain name for her baby when she was pregnant and explains that the disputed domain name consists of her and her son’s surname “Rosa” and of the name “Al”, the abbreviated or common name of Ms. Rosa’s now seven year old son Alejandro. This Respondent states that she has a legitimate interest in the disputed domain name and that she acquired it in good faith in September 2005 from The Tidewinds Group, Inc., prior to the Complainant’s registration of the International trademark ALROSA No. 874227. Ms. Rosa also asserts that, as a Honduran citizen whose native language is Spanish, she was not aware of, or familiar with, the Complainant’s trade name or trademark ALROSA at the time she obtained the disputed domain name.
In the Response, it is indicated that, according to the evidence submitted by the Complainant, no Mexican, Central American or South American countries are listed among the countries in which the Complainant has registrations for the trademark ALROSA, and specifically the Complainant does not assert a Honduran registration of the mark ALROSA, circumstance that is deemed to directly impact on Ms. Rosa’s knowledge or awareness of the Complainant and/or its trademarks.
It is stressed that Elisa Marina Mendoza Rosa does not read or understand the Cyrillic alphabet, and, therefore, the Russian language. It is also asserted that the term “rosa” is a Spanish word meaning “pink” and “rose” in English and that it is a common Italian, Portuguese and Spanish language surname, and is a common surname in Honduras.
It is underlined that the Respondent Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc. received a number of email communications from the Complainant requesting to buy the disputed domain name and that such emails were sent to the Respondent Elisa Marina Mendoza Rosa, who declined to respond to the Complainant’s offers since she wanted to retain the disputed domain name.
The Respondents concede that the disputed domain name consists of the same Latin letters as in the Complainant’s International trademark No. 874227 for ALROSA and in the Russian trademark No. 268048 for ALROSA.
The Respondents, however, also question the validity of these two trademark registrations indicating that, according to the documents submitted by the Complainant, the certificate of the Russian trademark No. 268048 and the Complainant’s translation in English of this document do not show the list of the goods and services. The Respondents also reiterate that the disputed domain name is constituted of the common name and surname of Ms. Rosa’s son, “Al Rosa”.
The Respondents assert that the Complainant did not provide any explanation as to how Ms. Rosa could possibly have been aware of the Complainant and the Complainant’s mark when registered the disputed domain name.
The Respondents state that Ms. Rosa, on behalf of her minor child, is making fair use of the disputed domain name as an individual, having been commonly known by the disputed domain name, even if the minor child has acquired no trademark or service mark rights. They explain that Ms. Rosa has not made preparations to use the disputed domain name by creating a web page specifically for the disputed domain name since she obtained the disputed domain name to be used at some future time by her son.
As to the use of the disputed domain name, the Respondents points out that it was “parked” on Tidewinds “default parking servers” until Ms. Rosa requested, in February 6, 2013, that it point to a blank web page. The Respondents also assert that, if any ad revenue was generated from the disputed domain name, Ms. Rosa was never paid any money for it. The Respondents also indicate that Tidewinds’s provision of advertising services by publishing links for general topics of interest that did not target the Complainant gives rise to a legitimate interest in the disputed domain name.
With specific reference to the links published on the web site corresponding to the disputed domain name, the Respondents highlight that the web page was built and controlled by the concerned Registrar, that
Tidewinds uses as its “default parking servers.” Such a website allows users to choose a language and, then, proceed to do a search in that language. The search itself is passed into the Google’s system pursuant to Fabulous’s contract with Google, and all links that are shown thereafter are not related to the disputed domain name, but rather generated by Google over which Ms. Rosa has not control. Further, the Respondents also indicate that, should the Complainant’s attorney not have first typed in the term “Jewelry” and other terms into the search box on the web page displayed at the disputed domain name, no links pertaining to those terms would have been displayed.
The Respondents underline that, despite the fact that the Complainant knew the owner of the disputed domain name since 1998, it did not attempt to obtain it from him during his ownership and waited over 7 years after the acquisition from Ms. Rosa to notify her of the alleged misuse of the disputed domain name.
The Respondents conclude that the disputed domain name was not registered in bad faith with the intentions to prevent the Complainant from obtaining it, or to intentionally attempt to attract, for commercial gain, Internet users to Ms. Rosa’s website by creating a likelihood of confusion with the Complainant’s mark.
The Respondents also request that the Panel issue a Reverse Domain Name Hijacking decision, stating that the Complainant did not provide any explanation as to how the Respondents could possibly have been aware of the Complainant and the Complainant’s mark when registered the disputed domain name. The Respondents state that, since the Complainant is a large corporation, it decided that it wanted the disputed domain name and, due to the fact that it was unable to buy it from the Respondents, decided to use its financial power to take it.
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondents is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondents have 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.
The Complainant has provided evidence of ownership, amongst others, of the Russian trademark registration No. 268048 for ALROSA in Latin characters, filed on April 18, 2002, and of the International trademark registration No. 874227 for ALROSA in Latin characters, registered on December 1, 2005.
As mentioned in the paragraphs above, the Respondent has questioned the validity of the trademark Russian trademark registration No. 268048 since the list of goods and services was not comprised in the trademark certificate and in the correspondent translation in English submitted by the Complainant.
The evidence on records shows that the International trademark No. 874227 for ALROSA, registered in the classes 14, 35, 36, 37, 39, 40 and 42, is based on the Russian trademark No. 268048, and that this latter trademark has been regularly renewed and will be valid until April 18, 2022. Despite the lack of express citation of the goods and services in the certificate of the Russian trademark, the Panel finds that, in light of the functioning of the Madrid system, the goods and services covered by the International registration must be included in the Russian basic registration.
According to paragraph 1.1 of the WIPO Overview 2.0, the location of the trademark, its date of registration or first use, and the goods and/or services for which it is registered, are irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.
The Panel is, therefore, satisfied that the Complainant has established rights in the trademark ALROSA for the purpose of paragraph 4(a)(i) of the Policy.
Based on a visual or aural comparison of the trademark ALROSA with the alphanumeric string in the disputed domain name <alrosa.com>, the Panel finds that the disputed domain name is identical to the Complainant’s trademark ALROSA.
Indeed, it should be taken into account the well-established principle that the generic top level domain may be excluded from consideration as being merely functional component of a domain name. See i.a. Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, stating: “the specific top level of the domain name such as ‘net’ or ‘com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; and Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770, where it was found that “the accused domain name <chevychasebank.org> is legally identical to Complainant’s trade name CHEVY CHASE BANK.” See also, among others, Priority One Financial Services Inc. v. Michael Cronin, WIPO Case No. D2006-1499 and Laramar Group, L.L.C. v. XC2, WIPO Case No. D2006-0617.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating, in accordance with paragraph 4(c) of the Policy, any of the following:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
In the case at hand, the Respondents have provided evidence showing that the disputed domain name was acquired in September 2005 by Ms. Elisa Marina Mendoza Rosa from Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc. In detail, the Respondents have submitted the email correspondence which occurred between Elisa Marina Mendoza Rosa and Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc. regarding the transfer of the disputed domain name - that Ms. Rosa acquired for the amount of 175 USD to the first Respondent and bearing the transaction fees -, as well as emails from an escrow services provider regarding this transaction. In the correspondence between the two Respondents, it is highlighted that, after completing the acquisition, Ms. Rosa instructed Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc. to keep the disputed domain name in its administration on her behalf, using its privacy service.
As mentioned in the paragraphs above and highlighted in a declaration submitted by the Respondents, the Respondent Elisa Marina Mendoza Rosa has indicated that she acquired the disputed domain name when she was pregnant, for future use of her now seven-years-old child Alejandro Rosa, commonly known as “Al Rosa”.
In light of the above and of the evidence on records, the Panel finds that, notwithstanding the Complainant’s contention that the trademark ALROSA is distinctive and well-known, the Complainant is not satisfied that the Respondent registered the disputed domain name in order to capitalize on the Complainant’s goodwill in its trademark.
As stated in PENGUIN BOOKS LIMITED v. THE KATZ FAMILY and ANTHONY KATZ, WIPO Case No. D2000-0204, “[i]t is reasonable for someone to register a domain name based on a nickname […] and it follows that the Respondent had legitimate interests in that name. It is not for this Administrative Panel to decide on whether such use would in any way infringe any intellectual property rights of the Complainant and this must be left to other fora”. See also Ken’s Foods Inc. v. kens.com, WIPO Case No. D2005-0721, where it was found: “The disputed domain name clearly reflects the Respondent’s given name, and the Panel concludes from the record as a whole that the Respondent has rights or legitimate interests in the disputed domain name under paragraph 4(c)(ii)”.
In light of the above, the Panel finds that the Complainant has not met its burden under paragraph 4(a)(ii) of the Policy to demonstrate that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
In light of the Panel’s findings in the section 7B of this decision, it is not strictly necessary for the Panel to address the bad faith issue. However, for the sake of completeness and in view of the Respondent’s request for a finding of Reverse Domain Name Hijacking, the Panel will also briefly examine the circumstances of the present case with respect to bad faith registration and use.
The Complainant contends that the disputed domain name was registered in bad faith since its trademark ALROSA is well-known in Russia and abroad for the production and distribution of diamonds and that the Respondents, therefore, could not ignore the existence of the Complainant’s trademark rights. The Complainant has also submitted evidence of ownership of a Russian trademark registration for ALROSA (No. 268048), registered before the acquisition of the disputed domain name by the Respondent Elisa Marina Mendoza Rosa.
As indicated above, the evidence submitted by the Respondents shows that the disputed domain name was acquired by Ms. Rosa, a citizen of Honduras, from Tidewinds, in September 2005. According to the correspondence on records, for the purchase of the disputed domain name, Ms. Rosa paid USD 175. In the absence of any additional element showing that Ms. Rosa was or should have been aware of the Complainant’s trademark when purchased the disputed domain name and registered the disputed domain name with the Complainant’s trademark in mind, the Panel finds that the Complainant has not proved that the disputed domain name was acquired by the substantive Respondent in bad faith.
With reference to the use of the disputed domain name, as highlighted in the previous paragraphs, <alrosa.com> resolved to a click-through farm until Ms. Rosa requested, on February 2013, that it point to a blank page. Ms. Rosa declared that she did not obtain any revenue from the click-through ads that were published on the site published at the disputed domain name, and none was provided by the Complainant. In addition, the Panel notes that, as highlighted by the screenshots submitted by the Complainant, the links displayed were mostly of generic nature and did not refer to the Complainant.
In view of the above, the Panel finds, on balance, that the disputed domain name was not registered and has not been used in bad faith.
The Respondents requests a finding of Reverse Domain Name Hijacking. This is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” In addition, paragraph 15(e) of the Rules provides as follows: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
In the case at hand, the Panel does not deem it appropriate to make a finding of Reverse Domain Name Hijacking. The Complainant could not have been aware of the identity of the – substantive – Respondent Elisa Marina Mendoza Rosa until it was disclosed by the - formal - Respondent Domain Privacy LTD, DNS Admin / The Tidewinds Group, Inc. after the commencement of this administrative proceeding; in the absence of such a disclosure, the holder’s bad faith could provisionally be inferred, as the Complainant tried to prove, from the registration of the disputed domain name, identical to the Complainant’s trademark, used as a click-through farm, and from the fact that the “formal” registrant of record (a privacy service company) of the disputed domain name is a company which was already named as respondent in other UDRP proceedings.
In light of the above, the Panel also finds that the Complaint has not been brought in bad faith.
For the foregoing reasons, the Complaint is denied.
Luca Barbero
Presiding Panelist
Daniel J. Gervais
Panelist
David E. Sorkin
Panelist
Date: May 10, 2013