The Complainant is Bayer HealthCare LLC of Pittsburgh, Pennsylvania, United States of America ("United States"), represented by BPM Legal, Germany.
The Respondent is Aleksey Tokar of Kharkov, Kharkovskaya oblast, Ukraine, self-represented.
The disputed domain name <contour.club> is registered with 1API GmbH (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 23, 2015. On April 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 28, 2015, 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.
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 May 1, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2015. The Respondent sent informal email communications on April 30, 2015, and filed an informal and a formal Response with the Center on May 21, 2015 through four (4) separate emails.
The Center appointed Assen Alexiev as the sole panelist in this matter on June 3, 2015. 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 June 7, 2015, the Complainant made a supplementary submission, by which it informed the Center of a message that it had received from the Respondent on April 26, 2015, whereby the Respondent suggested that the Parties may discuss the transfer of the disputed domain name at a negotiated price, and contended that this message was further evidence of bad faith registration and use under paragraphs 4(a)(i) and 4(b) of the Policy. On the same date, the Respondent submitted a reply to thе Complainant's supplementary submission, by which it denied it. In exercise of its discretion under paragraph 10 of the Rules, the Panel decided to accept the supplementary submissions of the Parties and to take them into account.
On June 17, 2015, the Panel issued its Procedural Order No.1, by which it invited the Complainant to submit a missing annex to the Complaint and granted an opportunity to the Respondent to comment on this annex once it was submitted by the Complainant. On the same date, the Complainant submitted the missing annex to the Complaint. On June 23, 2015, the Respondent submitted its comments on the previously missing annex to the Complaint.
The Complainant belongs to the Bayer group of companies − a global enterprise with core competencies in the fields of health care, nutrition and high-tech materials, which does business on all five continents, manufacturing and selling numerous products, including human pharmaceutical and medical care products, veterinary products, diagnostic products, agricultural chemicals and specialty polymers. The Bayer group includes over 250 affiliates and more than 111,000 employees worldwide. The stock of the Bayer group holding company, Bayer Aktiengesellschaft AG, is included in nearly all the major share indices, traded on all German stock exchanges and included in the DAX 30, a Blue Chip stock market index consisting of the 30 major German companies trading on the Frankfurt Stock Exchange.
The Complainant has a long history of developing diabetes medication and meters, starting in 1941, when it developed Clinitest, the first convenient tablet test for detection of reducing sugars in urine. Contour is a meter to meet many diabetes management needs, which was developed in the United States and was first introduced in 2003. Today, Contour strip sales exceed EUR 600 million annually and Contour meters and strips are sold in over 50 countries around the world (including major markets such as the United States, Canada, Germany, France, United Kingdom of Great Britain and Northern Ireland, Italy, Spain, Russian Federation and China). The Complainant's subsidiary Bayer Diabetes Care is the third largest manufacturer of blood glucose meters with a global market share of approximately 15%. The Complainant's Contour products are sold in the Ukraine, where the Respondent is located, since 2011. According to a quantitative research on the buying process mapping for BGM systems in Ukraine for 2014, the CONTOUR trademark has a total awareness of 49% in the Ukrainian market.
The Complainant is the owner of a number of registered trademarks for CONTOUR (the "CONTOUR trademark"), including the following:
- the word trademark CONTOUR with registration No. 011672367, registered as a Community trademark on July 31, 2013 for goods and services in International Classes 5 and 10;
- the word trademark CONTOUR with registration No. 3248451, registered in the United States on May 29, 2007 for goods and services in International Class 5;
- the word trademark CONTOUR with registration No. 109404, registered in Ukraine on July 10, 2009 for goods and services in International Classes 5 and 10; and
- the word trademark CONTOUR with registration No. 30219642, registered in Germany on October 10, 2002 for goods and services in International Classes 10, 20 and 21.
The Complainant's CONTOUR trademark was deposited with the Trademark Clearinghouse as of November 5, 2013.
The disputed domain name was registered on October 2, 2014.
The Complainant has made the following contentions:
- the disputed domain name is identical to the Complainant's CONTOUR trademark, as it fully incorporates the same trademark;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use the CONTOUR trademark and has not permitted the Respondent to apply for or use any domain name incorporating the CONTOUR trademark. According to the Complainant, there is no evidence of the Respondent's use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. The disputed domain name is being used in connection with a website that contains links to various topics containing "contour", including "Contour meter" and "Contour diabetes". This website is thus used to earn pay-per-click-revenues for redirecting Internet users to third parties' websites and thus capitalizing on the Complainant's mark. Such use is neither a bona fide use of the disputed domain name pursuant to paragraph 4(c)(i) of the Policy nor a legitimate noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy. In addition, there is no evidence, which suggests that the Respondent trades under the disputed domain name or the name "Contour", or is commonly known by the disputed domain name or by the name "Contour";
- the disputed domain name was registered and is being used in bad faith. The Respondent is the registered owner of a total number of 126 domain names, including domain names identical to third parties' trademarks, such as <bacardi.limited>, <chivasregal.club>, <jack-daniels.club>, <parishilton.club> and <tomtailor.club>. Some of these domain names are registered in the name of Elite Group Kharkov, which according to the Complainant is the Respondent's business name. This shows that the Respondent targets third parties' trademarks with its domain registrations. Given that the Complainant's CONTOUR trademark is well established in Ukraine, where the Respondent is located, and that the Complainant's trademark registration in Ukraine predates the registration of the disputed domain name by more than 5 years, it is inconceivable that the Respondent registered the disputed domain name unaware of the Complainant and its CONTOUR trademark. This finding is supported by the fact that the Respondent's website available at the disputed domain name shows advertising links clearly referring to the Complainant's products;
- the Respondent's use of the disputed domain name is qualified to disrupt the Complainant's business in that it is capable of reducing the number of visitors to the Complainant's website, may adversely affect the Complainant's business and therefore constitutes bad faith. According to the Complainant, the registration and use of the disputed domain name by the Respondent also constitutes an abusive threat hanging over the head of the Complainant. As the Respondent is neither selling the Complainant's products nor has any business relationship with the Complainant, there is no plausible use of the disputed domain name other than the exploitation of the Complainant's CONTOUR trademark by the Respondent. The website at the disputed domain name redirects Internet users to a parking website that provides links to third parties' websites. By using the website for sponsored links, the Respondent is, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant's website. The Respondent's registration of the disputed domain name also prevents the Complainant from reflecting the CONTOUR trademark in a corresponding domain name and the Respondent has engaged in a pattern of such conduct, as set out in paragraph 4(b)(ii) of the Policy;
- the Complainant's CONTOUR trademark has been deposited with the Trademark Clearinghouse since November 2013. Therefore, the Respondent had received a trademark claim notification before registering the disputed domain name. The Respondent nonetheless proceeded with the registration of the disputed domain name and therefore registered the disputed domain name in bad faith under the Policy;
- the Respondent had offered to sell the disputed domain name on the website at "www.sedo.com". Such offer to sell a domain name on a public website has been found to indicate that a domain name has primarily been registered with the intention of selling it to the Complainant or one of its competitors in return for a payment that exceeds the costs directly related to the domain name under paragraph 4(b)(i) of the Policy. The Respondent's asking price of USD 1,250 exceeds the Respondent's expenses within the meaning of paragraph 4(a)(i) of the Policy;
With its supplementary submission dated June 7, 2015, the Complainant contended that the Respondent's suggestion that the Parties may discuss the transfer of the disputed domain name at a negotiated price, made with the Respondent's message of April 26, 2015, represented further evidence of bad faith registration and use of the disputed domain name under paragraphs 4(a)(i) and 4(b) of the Policy.
The Respondent submitted comments on the Complaint two times in the course of the procedure.
In its comments, submitted on April 30, 2015, the Respondent:
- declared that it had not infringed any trademark rights for profit, and pointed in this regard to unspecified web archive sites, which allegedly showed that the disputed domain name had never hosted a website;
- alleged that the disputed domain name was selected and registered in view of a certain Contour Club in the United States, whose official website was at "www.clubcontour.com";
- submitted that the ".club" generic Top-Level Domain (gTLD) was intended for entertainment and clubs, and the CONTOUR trademark was not registered for such services, but only for goods in International Classes 5 and 10;
- pointed out that if the Complainant was really interested in the disputed domain name, it could have registered it in the sunrise period. The Complainant did not use this opportunity, so after the expiration of the sunrise period the disputed domain name was in free registration and anyone could register it; and
- admitted having offered the disputed domain name for sale at Sedo, and that a parking page was linked to the disputed domain name by Sedo. In this regard, the Respondent referred to the text at the bottom of the parking website at the disputed domain name, which informed Internet users that the parking website was set up by Sedo, and that the owner of the disputed domain name had no relationship with third party advertisers.
In its Response, submitted on May 21, 2015 through four (4) emails, the Respondent:
- alleged that at the time of the registration of the disputed domain name it did not receive any notices that the disputed domain name is in conflict with any trademarks or signs;
- pointed out that the word "contour" is a dictionary word;
- alleged that it was irrelevant for which other domain names the gmail address of "elitegroupkharkov" was provided as part of the contact details of the respective domain name registrant and which other domain names were registered by the Respondent or by Elite Group Kharkov, as the Respondent had not received any complaints about these domain names so far, and alleged that Elite Group Company was not the registrant of the disputed domain name and that the Complainant had not proven its existence;
- disputed that the CONTOUR trademark was listed in the Trademark Clearinghouse;
- disputed the evidence attached to the Complaint about the trademark registrations of the CONTOUR trademark, as the Office for Harmonization in the Internal Market (OHIM) and Trademark Electronic Search System (TESS) websites were allegedly not sources of official information;
- disputed the printouts of the website at the disputed domain name, attached to the Complaint, and alleged that this evidence was manipulated and did not reflect the real content of the website at the disputed domain name. At the same time, the Respondent alleged that the words "Contour Meter", "Contour HD", "Eye Contour", "Gillette Contour", "Ascencia" and "Contour Diabetes", included in this website, were not evidence of any violation, as it was not proven by the Complainant that these words were actually links to other websites;
- pointed out that the printouts of the website at the disputed domain name submitted by the Complainant contained a statement by Sedo that the parking website was provided by Sedo and that the website's owner and Sedo did not maintain relations with the advertisers;
- disputed the printout of the offer for sale of the disputed domain name at the website of Sedo, attached to the Complaint, claiming that this image was again manipulated;
- claimed that it had not violated the terms and conditions of the Registrar for registration and use of domain names;
- claimed that the domain name reseller <rdn.name> had violated the reseller agreement with the Registrar, by linking the disputed domain name to illegal content;
- alleged that the official website of the Complainant for the CONTOUR trademark was not known to the Respondent, and that web search results did not return results related to the CONTOUR trademark, but to other subjects, including video cameras and other equipment. The Respondent makes the conclusion that the CONTOUR trademark was not unique and did not have a "high rating" or popularity; and
- alleged that the mission of the ".club" gTLD was described on the official site of its registry, and was aimed at various communities and groups "forming around every imaginable interest". This allegedly showed that the Complainant did not have a genuine intention to use such a domain name for the advertising of the CONTOUR trademark.
In its reply to the Complainant's supplementary submission of June 7, 2015, the Respondent appears to deny the Complainant's contentions based on the fact that proofs are not provided by the Complainant.
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…"
The Complainant has provided evidence and has thus established its rights in the CONTOUR trademark in various jurisdictions including Ukraine where the Respondent is located. The Respondent's allegations that the Complainant has not proven its trademark rights because the OHIM and TESS websites were not official sources of information are groundless and the Panel rejects them.
The Panel notes that a common practice has emerged under the Policy before the advent of the new gTLDs, namely to disregard in appropriate circumstances the gTLD section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the ".club" part of the disputed domain name. Therefore, the relevant part of the disputed domain name that has to be analyzed is its "contour" section, which is identical to the CONTOUR trademark.
As summarized in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), "The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, […]. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name."
Having applied the test discussed above, the Panel finds that the disputed domain name is identical to the CONTOUR trademark in which the Complainant has rights.
The Complainant is required 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 burden of production shifts to 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 2.0.
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not affiliated to the Complainant and has never been authorized to use the name "contour", including as a domain name, that the Respondent is not commonly known by the disputed domain name, is not making a noncommercial or a fair use of it and is not using it in relation to the provision of a bona fide offering of goods or services. The disputed domain name is being used in connection with a website that contains links to various topics containing "contour", including "Contour meter" and "Contour diabetes", which generate pay-per-click revenues by redirecting Internet users to third parties' websites. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
In its submissions, the Respondent has relied on the allegations that "contour" is a dictionary word, that the disputed domain name was selected and registered in view of a certain Contour Club in the United States, while admitting that the disputed domain name was offered for sale at Sedo, and that a parking page was linked to the disputed domain name by Sedo.
In relation to the argument of the Respondent that the word "contour" is generic, the Panel notes that the Complainant has registered its CONTOUR trademark in various jurisdictions including Ukraine where the Respondent is located. In view of these registrations, the Panel accepts that CONTOUR is protectable as a trademark and that the Complainant has valid trademark rights in it. As discussed in paragraph 2.2 of the WIPO Overview 2.0, if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and the Respondent fails to show one of the three circumstances under paragraph 4(c) of the UDRP, or any other basis for rights or legitimate interests, then the Respondent may lack a legitimate interest in the disputed domain name, even if it is a domain name comprised of a dictionary word or phrase. Normally, in order to find rights or legitimate interests in a domain name based on the dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).
As stated by the Respondent, the disputed domain name was registered in view of a certain Contour Club. The Respondent has not alleged that it has any connection to this club or that the club itself has requested the Respondent to register the disputed domain name for the purposes of the club. In view of this, the Panel does not see how the reference to the existence of an unrelated to the Respondent club is relevant to this dispute and how it could be regarded as evidence that the Respondent has rights or legitimate interests in the disputed domain name.
The Respondent has not alleged that it has used or planned to use the disputed domain name in relation to the alleged dictionary meaning of the word "contour" either. There is no evidence in the case file that the Respondent is commonly known by the disputed domain name, and the Respondent has not alleged any other circumstances under paragraph 4(c) of the UDRP or made any other allegations relevant to the issue of rights and legitimate interests. In view of the above, the Panel finds that the mere fact that the disputed domain name may be regarded as comprising a dictionary word does not establish any rights or legitimate interests of the Respondent in the disputed domain name.
As to the content of the website at the disputed domain name, the Respondent admitted in its submission dated April 30, 2015 that this was a parking webpage set up by Sedo, and did not dispute the contention of the Complainant that this webpage contained links to various topics containing "contour", including "Contour meter" and "Contour diabetes". The Respondent pointed to the disclaimer at the bottom of the webpage at the disputed domain name, which contained a statement that there was no relation between the owner of the disputed domain name and the third party advertisers. In this respect, the Panel has reviewed the website of Sedo, which on its page related to domain name parking1 clearly states that "Advertisements which thematically correspond to the domain name will be displayed on your domain. You will earn money whenever a visitor clicks on the advertising links." This statement by Sedo clearly contradicts the disclaimer at the bottom of the parking webpage at the disputed domain name, and supports the contention of the Complainant that this webpage contains pay-per-click links to third party websites, including links that contain "Contour" and refer to the type and purpose of the products marketed by the Complainant under the CONTOUR trademark.
As discussed in paragraph 2.6 of the WIPO Overview 2.0, it is generally recognized that use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" or from "legitimate noncommercial or fair use" of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. Where such links are based on trademark value, such practices are generally considered as unfair use resulting in misleading diversion.
In its Response, submitted on May 21, 2015, the Respondent has disputed the authenticity of the printout of the webpage at the disputed domain name, claiming that this printout was manipulated. The Panel is not convinced by this statement of the Respondent. It clearly contradicts the previous comments made by the Respondent with its submission dated April 30, 2015. Therefore, the Panel is satisfied that webpage at the disputed domain name has contained pay-per-click links to third party websites, including links that refer to the type and purpose of the products marketed by the Complainant under the CONTOUR trademark. In the Panel's view, such conduct unfairly takes advantage of the CONTOUR trademark and cannot be regarded as a bona fide activity that gives rise to rights or legitimate interests of the Respondent in the disputed domain name.
Taking all the above into account, the Panel finds that the Complainant's prima facie case of lack of rights or legitimate interests of the Respondent in the disputed domain name has not been rebutted. Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
Paragraph 4(b) of the Policy 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.
In the present case, the Complainant points to the fact that the Complainant's CONTOUR trademark has been deposited with the Trademark Clearinghouse since November 2013, and that the Respondent had received a trademark claim notification for the CONTOUR trademark before registering the disputed domain name. The Respondent nonetheless proceeded with the registration of the disputed domain name and therefore registered the disputed domain name in bad faith under the Policy.
In addition to this argument, the Complainant asserts that the CONTOUR trademark is well established in Ukraine, where the Respondent is located, and points out that the registration of the CONTOUR trademark in Ukraine predates the registration of the disputed domain name by more than 5 years and that the Respondent's website at the disputed domain name shows advertising links clearly referring to the Complainant's products. In view of these circumstances, the Complainant submits that it is inconceivable that the Respondent registered the disputed domain name unaware of the Complainant and its CONTOUR trademark.
As an additional argument that the Respondent has acted in bad faith when registering the dispute domain name, the Complainant contends that the Respondent targets third parties' trademarks with its domain names registrations, and in support of this contention points to the fact that the Respondent is the registered owner of a total number of 126 domain names, including domain names identical to third parties' trademarks, such as <bacardi.limited>, <chivasregal.club>, <jack-daniels.club>, <parishilton.club> and <tomtailor.club>. Some of these domain names are registered in the name of Elite Group Kharkov, which according to the Complainant is the Respondent's business name.
In its defense, the Respondent makes a number of allegations, which the Panel will discuss in turn.
The Respondent disputes that the CONTOUR trademark was listed in the Trademark Clearinghouse and alleges that at the time of the registration of the disputed domain name it did not receive any notices that the disputed domain name was in conflict with any trademarks. In this respect, the Panel notes that the Complainant has submitted a printout from the Trademark Clearinghouse which shows that the CONTOUR trademark was indeed listed there as of November 2013. The Panel does not see a reason why this document should not be credited. As mandated by ICANN for all new gTLDs, following the Sunrise period for each new gTLD, the Trademark Clearinghouse carries out the Trademark Claims notification service, by which it warns both domain name registrants and trademark holders of possible infringements2. In relation to the ".club" gTLD, the Trademark Claims notification service was active in the period from May 7, 2014 to January 22, 20153. The Respondent has registered the disputed domain name on October 2, 2014, which date is within this period, so the Respondent is likely to have received a warning notice from the Trademark Clearinghouse about the CONTOUR trademark when it attempted to register the disputed domain name.
The Respondent submits that the ".club" gTLD was intended for entertainment and clubs, and the CONTOUR trademark was not registered for such services, but only for goods in International Classes 5 and 10. At the same time, the Respondent refers to the description of ".club" gTLD, given by its registry, i.e. that the ".club" gTLD is aimed at various communities and groups "forming around every imaginable interest". This description covers a scope that is clearly much wider than "entertainment and clubs", as alleged by the Respondent. As further described by the ".club" gTLD registry, the ".CLUB is the ultimate social domain name, making it easy for anyone and everyone to bring people together around common interests and passions – and own the perfect domain for their community."4 Taking this description into account, the Panel accepts that it may encompass a broad range of common interests of groups of people, possibly connecting users of the Complainant's products marketed under the CONTOUR trademark, which, depending on the jurisdiction, is registered not only for goods in Classes 5 and 10, but also for goods in Classes 20 and 21. At the same time, as already discussed above, the Respondent has not even alleged that it has carried out any activities in the "entertainment and clubs" industry, and the only use to which the disputed domain name has been put so far is for a parking webpage that contains links that contain "Contour" and refer to the type and purpose of the products marketed by the Complainant under the CONTOUR trademark. In view of this, the Panel rejects the Respondent's defense that the CONTOUR trademark is not an obstacle to the registration and use of the disputed domain name.
The Respondent also disputes the relevance and weight of the market research report for the popularity of the CONTOUR trademark, submitted by the Complainant in Annex 3a to the Complaint. In this regard, the Panel notes that these market research results contain data about the organization that has made the research, the date of the research, information about the methodology, the type and number of respondents and the questions they were asked, and provide the results of the market research. The document appears genuine on its face and the Panel does not see why it should be disregarded in this proceeding. Therefore, the Panel will take it into account. As to the findings in the report, it shows that the total awareness of the CONTOUR products among endocrinologists and pharmacists in Ukraine is 49%. In the Panel's view, this figure shows that the CONTOUR products and therefore the CONTOUR trademark enjoy significant recognition among the relevant Ukrainian professional public.
Taking this into account and given that the Respondent does not appear to deny having itself knowledge of the Complainant and of its CONTOUR products and trademark, and that the website at the disputed domain name contains links that mention "Contour" and refer to products marketed by the Complainant under the CONTOUR trademark, the Panel is satisfied that it is more likely than not that the Respondent was aware of the Complainant and of its CONTOUR trademark when it registered the disputed domain name, and that this registration was targeting the CONTOUR trademark. That the Respondent may have engaged in such conduct appears likely also in view of its conduct in relation to the registration by the Respondent (either directly under its own name or under the name Elite Group Kharkov) of a number of other domain names, identical to third parties' trademarks, such as <bacardi.limited>, <chivasregal.club>, <jack-daniels.club>, <parishilton.club> and <tomtailor.club>. The Panel accepts in this regard that the Respondent and Elite Group Kharkov are either one and the same entity, or are at least related to one another, as they share some of their contact details, including the email address.
The Respondent makes the argument that if the Complainant was really interested in the disputed domain name, it could have registered it in the sunrise period, and that as the Complainant did not use this opportunity, after the expiration of the sunrise period anyone could register the disputed domain name. In this regard, the Panel notes that it is true that during the Sunrise period trademark owners have an opportunity to register their marks in the ".club" space before domain names in that space became generally available on a first come, first served basis. This does not mean, however, that upon the expiration of the Sunrise period non-trademark owners necessarily became entitled to register any available <trademark.club> domain names without regard for the UDRP, including the disputed domain name in the present case.
Taking all the above into account, as well as its findings that the disputed domain name is identical to the CONTOUR trademark and that the Respondent does not have rights or legitimate interests in the disputed domain name, the Panel finds that it is more likely than not that the Respondent has registered the disputed domain name in bad faith targeting the CONTOUR trademark of the Complainant.
The Complainant contends that the Respondent is neither selling the Complainant's products nor has any business relationship with the Complainant, so there is no plausible use of the disputed domain name other than the exploitation of the Complainant's CONTOUR trademark by the Respondent, which is supported by the fact that the website at the disputed domain name redirects Internet users to a parking website that provides links to third parties' websites. According to the Complainant, by using the website for sponsored links, the Respondent is trying to divert traffic intended for the Complainant's website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant's website.
As discussed above in relation to the issue of rights or legitimate interests, in its first submission dated April 30, 2015 the Respondent did not dispute the contention of the Complainant that this webpage was a parking webpage set up by Sedo and that it contained links to various topics containing "Contour", including "Contour meter" and "Contour diabetes". On its website Sedo assures the users of its parking services that they will earn money whenever a visitor clicks on the advertising links posted on their websites. These circumstances support the contention of the Complainant that the Respondent's webpage contains pay-per-click links to third party websites that would generate revenue for the Respondent whenever an Internet user clicks on them. Given that these links contain the word "Contour" and refer to products and services that resemble those that the Complainant markets under the CONTOUR trademark, the Panel is prepared to accept that these links are based on the value of the CONTOUR trademark, and their use is unfair as it results in a misleading diversion. Even if the Respondent has not itself posted the pay-per-click links on its website, it is still responsible for its content. As discussed in paragraph 3.8 of the WIPO Overview 2.0, the domain name registrant is normally held responsible for the content appearing on the website at its domain name, even if such registrant may not be exercising direct control over such content. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks. The Respondent has not alleged having taken any steps for preventing the inclusion of pay-per-click links on its website that refer to the CONTOUR trademark, so the Panel sees no reason to depart from this practice. The conclusion that the Respondent has attempted to generate financial gains from the disputed domain name is further supported by the fact that the Respondent has offered it for sale to the general public through Sedo – a fact that was confirmed by the Respondent with its submission dated April 30, 2015. This offer was for USD 1,250 – an amount that is well in excess of the normal out-of-pocket costs for the registration of the disputed domain name.
Taking all the above into account, and in the lack of any relevant and plausible allegations and evidence to the contrary, the Panel finds it more likely than not that the Respondent, by registering and using the disputed domain name that is identical to the CONTOUR trademark, has intentionally attempted to attract, for commercial gain, Internet users to its website or to other on-line locations, by creating a likelihood of confusion with the CONTOUR trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of the products and services to which the pay-per-click links on the Respondent's website redirect visitors, which supports a finding of bad faith use of the disputed domain name under paragraph 4(b)(iv) of the Policy.
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 <contour.club> be transferred to the Complainant.
Assen Alexiev
Sole Panelist
Date: July 3, 2015
1 See "https://sedo.com/uk/park-domains/how-parking-works/?language=e&partnerid=20292&tracked=1"
2 See "http://www.trademark-clearinghouse.com/content/trademark-claims-services"
3 See "https://newgtlds.icann.org/en/program-status/sunrise-claims-periods/club"
4 See "http://nic.club/why-club/"