WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ZEBRA A/S v. Privacy protection service - whoisproxy.ru / Aleksey M Vukolov

Case No. D2018-2300

1. The Parties

The Complainant is ZEBRA A/S Copenhagen, Denmark, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Privacy protection service - whoisproxy.ru of Moscow, Russian Federation / Aleksey M Vukolov of Kolomna, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <flyingtiger.online> (“Disputed Domain Name”) is registered with RU‑CENTER‑MSK (Regional Network Information Center, JSC dba RU-CENTER) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2018. On October 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 12, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 12, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date the Center sent an email communication in English and Russian in regard to the language of the proceedings. The Complainant filed an amended Complaint on October 15, 2018 and requested English to be the language of the proceedings. The Respondent did not comment on the language of the proceedings.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2018. The Respondent did not submit any response, but did communicate to the Center on October 25, 2018 indicating that it did not intend to renew the Disputed Domain Name after its expiry. Accordingly, the Center notified the Respondent’s default on November 9, 2018.

The Center appointed Mariya Koval as the sole panelist in this matter on November 14, 2018. 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.

4. Factual Background

The Complainant, doing business as Flying Tiger Copenhagen, is a Danish retail design store which offers an assortment of goods such as toys, party, hobby, home, electronics, gadgets and other items. The Complainant was founded in 1991 and is based in Copenhagen, Denmark. As of today, the Complainant’s chain of stores counts 800 stores in 30 European countries, having more than 44 partners in these countries.

The Complainant owns a number of registrations for FLYING TIGER Trademark in different jurisdictions, among which are:

- European Union Trademark FLYING TIGER No. 009529637, registered on July 11, 2013, in respect of goods in classes 3, 4, 5, 8, 9, 11, 14, 16, 18, 20, 21, 22, 23, 26, 28, 29, 30, 32 and services in class 35;

- European Union Trademark FLYING TIGER COPENHAGEN No. 012781415, registered on December 12, 2014, in respect of services in class 35;

- International Trademark FLYING TIGER No. 1260770, registered on January 22, 2015, in respect of services in class 35;

- International Trademark FLYING TIGER COPENHAGEN No. 1293983, registered on February 1, 2016, in respect of services in class 35;

- Denmark Trademark FLYING TIGER No. VR 2015 00251, registered on January 30, 2015, in respect of services in class 35;

- United States Trademark FLYING TIGER COPENHAGEN No. 4786945, registered on August 4, 2015 in respect of services in class 35.

The Complainant has a strong online presence, operating, among others, a domain name <flyingtiger.com> (registered on July 19, 1997), through which it sales the goods and promotes its services. The Complainant has also a significant social media presence, having its own Facebook page (with 162,000 followers), Instagram page (with more than 73,000 followers) and Twitter webpage (with over 10,000 followers).

The Disputed Domain Name was registered on November 20, 2017. The Disputed Domain Name resolves to a website that redirects the Internet users to general Registrar’s page where it is offered to create a website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Disputed Domain Name is identical to its FLYING TIGER Trademark in view of it reproduces the Trademark in its entirety. The Complainant notes that a number of its FLYING TIGER Trademark registrations across various jurisdictions demonstrates that it has spent a considerable amount of time and money for protection of intellectual property rights.

The Complainant further contends that the Respondent is not sponsored by or affiliated with the Complainant in any way, that the Respondent has not obtained permission from the Complainant to use its Trademark in any manner and that the Respondent is not commonly known by the Disputed Domain Name.

The Complainant also asserts that it has marketed and sold its goods and services using its FLYING TIGER Trademark since 1991, which is well before the Respondent’s registration of the Disputed Domain Name on November 20, 2017. The Respondent, by registering the Disputed Domain Name, that incorporates the Complainant’s FLYING TIGER trademark in its entirety and that is confusingly similar to the Complainant’s Trademark, as well as its <flyingtiger.com> domain name, has demonstrated a knowledge of and familiarity with the Complainant’s brand and business.

The Complainant alleges that the Disputed Domain Name can only be taken as intending to cause confusion among the Internet users as to the source of the Disputed Domain Name, and thus, the Disputed Domain Name must be considered as having been registered and used in bad faith pursuant to Policy paragraph 4(b)(iv), with no good faith use possible. More specifically, where the Disputed Domain Name incorporates the Complainant’s FLYING TIGER Trademark in its entirety, thus resulting in a domain name that is identical to said Trademark, there is no plausible good-faith reason or logic for the Respondent to have registered the Disputed Domain Name.

Finally, the Complainant alleges that the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past UDRP panels have held to serve as further evidence of bad faith registration and use.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements, namely that:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name was registered and being used in bad faith.

6.1. Language of Proceedings

According to paragraph 11 of the Rules the language of the proceeding shall be the language of the Registration Agreement unless the Panel in its discretion determines otherwise.

The Registrar informed the Center that the language of the Registration Agreement for the Disputed Domain Name is Russian. The Complainant has submitted the Complaint in English based on the following factors:

(1) the Complainant is unable to communicate in Russian and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter;

(2) additional delay, considering the obviously abusive nature of the Disputed Domain Name, which is identical to the Complainant’s FLYING TIGER Trademark, poses continuing risk to the Complainant and unsuspecting consumers seeking the Complainant or its products;

(3) the Disputed Domain Name is comprised of Latin characters;

(4) the term “flying tiger”, which is the dominant portion of the Disputed Domain Name, does not carry any specific meaning in the Russian language;

(5) in light of the Respondent’s use of the Disputed Domain Name and the Respondent’s decision to register a domain name that misappropriates the famous FLYING TIGER Trademark and brand, it would unduly burden the Complainant to have to arrange and pay for translation where the Respondent has demonstrated behavior that disrupts the Complainant’s business and has already required the Complainant to devote significant time and resources to addressing this instance of abuse.

The Panel considered all circumstances of this case, particularly, the Complainant’s request that the language of proceeding be English, the failure of the Respondent’s objection to English as the language of the proceedings and of the Respondent’s decision not to formally respond to the Complaint although being notified in English and Russian, the Respondent’s choice of English words for the Disputed Domain Name. In light of the above circumstances, the Panel concludes in accordance with paragraph 11(a) of the Rules that English shall be the language of this proceeding.

A. Identical or Confusingly Similar

The Complainant has established rights in its FLYING TIGER Trademark in view of large number of registrations in different jurisdictions and long use.

The Disputed Domain Name comprises the Complainant’s FLYING TIGER Trademark in its entirety as a dominant element. Previous UDRP panels have acknowledged that incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark, see e.g. Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001‑0505. The new generic Top-Level-Domain (“gTLD”) “.online” is typically not taken into account for purposes of considering the first element under the Policy. In accordance with section 1.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) “the practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to “new gTLDs”)”.

Accordingly, the Panel concludes that the Complainant has proven that the Disputed Domain Name is identical to the FLYING TIGER Trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

In accordance with section 2.1 of the WIPO Overview 3.0 while the overall burden of proof in UDRP proceedings is on the Complainant, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. If such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidences demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to come forward with such relevant evidence, the Complainant is generally deemed to have satisfied the second element.

Also according to the WIPO Overview 3.0, section 2.5.1, “UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation”.

The Panel finds that the Complainant has made out a prima facie case, clearly alleging that it has never licensed or authorized the Respondent to use its FLYING TIGER Trademark in the Disputed Domain Name or in any other manner. Moreover, the Panel finds that there are no evidence that the Respondent, as a natural person, is commonly known by the Disputed Domain Name.

With respect to the circumstances of this case, the Panel considers that it is more likely that the Respondent registered the Disputed Domain Name with the sole intention of commercial gain by attracting the consumers to its website.

The Panel finds that there is no evidence which may show that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. The website under the Disputed Domain Name resolves to general registrar parking page. This cannot be considered as the use or preparations for use of the Disputed Domain Name in connection with a bona fide offering of goods or services, see e.g. Pepperdine University v. BDC Partners, Inc., WIPO Case No. D2006-1003. Also the Panel finds that the Respondent has failed to produce any evidence which may confirm its rights or legitimate interests in the Disputed Domain Name.

Accordingly, the Panel concludes that the second element has been met by the Complainant.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant who is the owners of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) the Respondent has registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).

The Complainant used its FLYING TIGER Trademark for the first time in 1991 and registered its domain name <flyingtiger.com> in 1997. Its first FLYING TIGER Trademark registration is dated 2013. Thus first use of FLYING TIGER Trademark by the Complainant is more than 25 years before the Respondent registered the Disputed Domain Name. Moreover, the Complainant’s Trademark is original and it is most unlikely that the Respondent could have registered the Disputed Domain Name, which incorporates the FLYING TIGER Trademark in its entirety, accidentally. In view of this, the Panel is of opinion that the Respondent was likely aware of the Complainant's Trademark and business when he registered the Disputed Domain Name in 2017.

The Disputed Domain Name resolves to a general registrar parking page, therefore it is not being actively used. According to the section 3.3. of the WIPO Overview 3.0 while panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. Taking into account the fact that the Complainant’s FLYING TIGER Trademark has a distinctive character and the Respondent did not file a formal response and did not provide any evidence of actual good-faith use, the Panel comes to a conclusion that the Respondent’s passive holding of the Disputed Domain Name supports a finding of bad faith.

The Panel considers it obvious that the Respondent selected and used the Disputed Domain Name in bad faith for creating a likelihood of confusion with the Complainant’s FLYING TIGER Trademark and to disrupt the Complainant’s brand and business.

At the time of initial filing of this Complaint the Respondent used a privacy service for hiding its identity. According to the WIPO Overview 3.0, section 3.6 where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, panels tend to find that this supports an inference of bad faith.

Further, according to the evidence in this case the Respondent has provided false contact details to the Registrar that also supports finding of bad faith, see e.g., Euromarket Designs, Inc. d/b/a Crate & Barrel v. Namesnet, WIPO Case No. D2000-1196 (“The false contact information is evidence of use and registration in bad faith”).

Moreover, the Respondent did not respond to the Complainant’s contentions. Previous UDRP panels have considered that the Respondent’s failure to respond to the Complaint supports an inference of bad faith, see e.g. Bayerische Motoren Werke AG v. Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

In light of the above, the Panel concludes that the third element has been established by the Complainant with respect to the Disputed Domain Name.

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 <flyingtiger.online> be transferred to the Complainant.

Mariya Koval
Sole Panelist
Date: November 27, 2018