WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aukro Ukraine LLC v. PrivacyYes.com, Igor Spodin

Case No. D2013-1568

1. The Parties

The Complainant is Aukro Ukraine LLC of Dniepropetrovsk, Ukraine, represented by Ronzani Schlauri Attorneys, Switzerland.

The Respondent is PrivacyYes.com, Igor Spodin of St. Peter Port, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <vcene.com> is registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2013. On September 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 9, 2013, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided contact details.

The Center verified that 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 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2013. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on October 7, 2013.

The Center appointed Assen Alexiev as the sole panelist in this matter on October 14, 2013. 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 November 1, the Respondent sent a number of messages to the Center. The first states the following:

“Hi,

Please provide us with text of compliant from Aukro Ukraine LLC that we can prepare a grounded response to claims against us as owner of vcene.com

Thanks”

Later the same day, the Respondent sent two additional messages to the Center. The first message contained a document in the Ukrainian language for the registration of a trademark in Ukraine, and the second message alleged that the Respondent had not received the Notification of Complaint and Commencement of Administrative Proceeding, sent by the Center to the Respondent on September 16, 2013.

On November 4, 2013, the Respondent sent a further message to the Center in the following terms:

“Hi, did you receive the document of our registered trademark for the domain “vcene.com”

It's a pity we didn't receive the complain letter from you, that's why couldn't respond to it in time. Possibly the problem was related to the letter's size. We have full rights on the domain “vcene.com” & we don't violate any laws. So we are very sorry we missed the “complain letter” & corresponding date, but we would like to arrange appellate claim. How we can process with it?

Thanks”

The Panel has reviewed these messages of the Respondent and the information in the case file related to the communications between the Center and the Respondent. The Panel notes the following in this regard.

The Notification of Complaint and Commencement of Administrative Proceeding was sent by the Center to the Respondent by courier and by email to the addresses of the Respondent indicated in the WhoIs records for the disputed domain name and confirmed by the Registrar. The case file contains a confirmation that the notification was successfully delivered to the Respondent by email on September 16, 2013, and by courier on September 18, 2013.

In the light of this evidence, the Panel is not convinced by the Respondent’s allegation that it had not received the September 16, 2013 notification by the Center and that it had not had an opportunity to review the Complaint and to prepare and submit a response within the October 6, 2013 deadline. The Respondent’s messages of November 1 and November 4, 2013 were sent long after the expiration of the October 6, 2013 deadline for the submission of a response and do not provide any plausible reasons for the request of an extension for filing of a response in the present proceeding. Paragraph 10(c) of the Rules require the Panel to ensure that the proceedings take place with due expedition. In this situation, the Panel does not find any justification for an extension of the deadline for submission of a response in this proceeding. At the same time, in exercise of his powers under Article 10 of the Rules, the Panel has decided to review the belated submission of the Respondent and to take it into account in rendering the present decision.

4. Factual Background

The Complainant is the owner of the Ukrainian word trademark VCENE with registration number 117214, registered on January 11, 2010 for services in International Classes 35 and 41.

In May 2010, the Complainant started operating a consumer price comparison website at the Ukrainian domain name <vcene.ua>. This domain name made use of its protected trademark and the Ukrainian country-code top level domain extension. The price comparison services are offered in local language to the general Ukrainian public.

The Respondent is the owner of the Ukrainian combined trademark VCENE COM AND DEVICE with registration number 173126, registered on July 10, 2013 for goods and services in International Classes 9, 35, 38, 41, 42 and 45.

The disputed domain name was first registered on June 23, 2008 by a third party. The Complainant submits that it was acquired by the Respondent sometime in 2013, and this has not been denied by the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it registered the domain name <vcene.ua> on January 2, 2010. In May 2010, the Complainant started a price comparison business under this domain name and has continued to operate it since then. The Complainant has since become a strong player on the market for online price comparison services in Ukraine. The Complainant’s web service has been successful in attracting a large number of customers and has become the third biggest operator in the Ukrainian price comparison market. The Complainant’s services have thus become widely known in Ukraine.

The Complainant contends that the disputed domain name is identical with its trademark.

The Complainant maintains that the Respondent has no rights or other legitimate interests in the disputed domain name, which was transferred from a previous owner to the Respondent sometime after April 2013. The Respondent then started operating a price comparison website under the disputed domain name. The Respondent’s website is in the Ukrainian language and targets the Ukrainian public by offering services identical to those of the Complainant, and the products presented on the website are offered by Ukrainian shops. The services provided by the Respondent on the website at the disputed domain name coincide with the services offered by the Complainant.

According to the Complainant, it is inconceivable that roughly three years after the Complainant had launched its “www.vcene.ua” website which has since gained a strong market position in the Ukraine and become well known among consumers, the Respondent could have been unaware of the Complainant’s trademark and online services when it obtained the registration of an identical domain name in order to offer identical services at the same Ukrainian market.

The Complainant submits that the disputed domain name has been used in bad faith. The Respondent uses the disputed domain name, identical to the Complainant’s trademark, in order to provide identical services. In so doing, the Respondent intentionally attempts to attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name and website or of the service on the website at the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions by submitting a proper Response within the deadline. As mentioned in Section 3 above, the Respondent submitted a number of messages to the Center well after the expiration of the mentioned deadline. By these messages, the Respondent referred to its rights in a registered trademark in Ukraine, alleged having rights in the disputed domain name and not violating any laws by its actions.

6. Discussion and Findings

Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(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 Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”

As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.”

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its trademark rights in the VCENE trademark, registered in Ukraine.

It is a common practice under the Policy to disregard in appropriate circumstances the generic top-level domains (“gTLD”) such as the “.com” for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name comprises of “vcene”, identical to the Complainant’s VCENE trademark, making it likely to appear to be associated with the Complainant’s trademark and online services.

Taking the above into account, the Panel finds that the disputed domain name is identical to the VCENE trademark in which the Complainant has rights, and the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name.

B. Rights or Legitimate Interests

The Policy requires the Complainant to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating certain arguments in support of this contention, as described in section 5 above. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent, although given a fair opportunity to do so, chose not to present to the Panel a proper response in accordance with the Rules, paragraph 5(b)(i) and 5(b)(ix), despite the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any legitimate reason for the acquisition and use of the disputed domain name, it could have brought it to the attention of the Panel. In particular, the Respondent has failed to deny the contentions of the Complainant and to contend that any of the circumstances described in Policy, paragraph 4(c), is present in its favor. The only arguments and evidence which the Respondent chose to submit, long after the expiration of the deadline for submission of a response in this proceeding, consist of a certificate for registration of a trademark in Ukraine and the statement that the Respondent has “full rights” in the disputed domain name and does not violate any laws.

In principle, the Respondent may rely on a valid trademark registration to show prior rights under the Policy. Nevertheless, such rights should be recognized only if the overall circumstances in the case show that the registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered and not obtained merely to circumvent the application of the Policy. See paragraph 2.7 of the WIPO Overview 2.0.

Having reviewed the trademark certificate submitted by the Respondent and the other relevant documents in the case file, the Panel notes the following. The Respondent has applied for the registration of its VCENE COM AND DEVICE trademark on December 20, 2012, and the trademark was registered on July 10, 2013. The most prominent and recognizable element of its trademark is its “vcene” element. The Complainant’s VCENE trademark was registered on January 11, 2010, and its price comparison website became operative in the spring of 2010. This shows that the Respondent has applied for registration of its trademark almost three years after the Complainant registered its trademark and commenced operating its website at “www.vcene.ua”, while the dominant and distinctive element of the Respondent’s trademark is phonetically identical and visually confusingly similar to the Complainant’s trademark. In its submissions of November 1 and 4, 2013, the Respondent has not denied that it was aware of the Complainant and of the Complainant’s business when it acquired the disputed domain name, and that the two parties offer competing online services on the Ukrainian market, as contended by the Complainant. The actual location of the Respondent in Ukraine is also confirmed by the Respondent’s address there provided for the purposes of its trademark registration.

In these circumstances, it appears likely to the Panel that the Respondent has applied for and has registered its trademark in attempt to secure to himself trademark rights in the term “vcene” and thus to legitimize its ownership of the disputed domain name and circumvent the application of the Policy, while being well aware of the Complainant, its goodwill in its trademark and website and its established position on the Ukrainian market for almost three years. In this situation, the Panel is not prepared to accept that the Respondent’s trademark was applied for and registered in good faith and that the conduct of the Respondent gives rise to rights or legitimate interests of the Respondent under the Policy in the disputed domain name.

For these reasons, the Panel accepts that the Complainant’s prima facie case has not been rebutted and finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Policy, paragraph 4(b) lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your website or location or of a product or service on your website or location.”

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

It has been settled under the Policy that the transfer of a domain name amounts to a new registration. The Respondent has acquired a domain name, which is identical to the VCENE trademark, and has started offering services identical to these of the Complainant on the same market. The Respondent has not denied having been well aware of the Complainant and its activities at the time of the acquisition of the disputed domain name. As discussed above, the Respondent has not established that it has cognizable rights or legitimate interests in the disputed domain name. Taken together, these circumstances satisfy the Panel that the Respondent, by using the disputed domain name, has intentionally attempted to attract for commercial gain Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant’s VCENE trademark as to the source, sponsorship, affiliation, or endorsement of the same website or of the product offered on it. This supports a finding of bad faith registration and use of the disputed domain name under Policy, paragraph 4(b) (iv).

Therefore, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <vcene.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: November 5, 2013