WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LLC KEH eCommerce v.Alessandro Materazzo, Italian Stallion
Case No. D2019-1980
1. The Parties
The Complainant is LLC KEH eCommerce, Russian Federation, represented by Victor Topadze, Russian Federation.
The Respondent is Alessandro Materazzo, Italian Stallion, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <domofonru.com> (the “Domain Name”) is registered with CNOBIN Information Technology Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2019. On August 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 15, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 15, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 26, 2019.
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 August 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2019.
The Center appointed Olga Zalomiy as the sole panelist in this matter on October 3, 2019. 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 is an operator of a website connected to the domain name ˂domofond.ru˃, which provides online ad placement services for real estate sales and leases (the “Website”). The Complainant holds an exclusive license to use the following trademarks in the Russian Federation:
- Russian trademark registration for the DOMOFOND.RU mark, Reg. No. 553093, registered on September 29, 2015;
- Russian trademark registration for the DOMOFOND mark, Reg. No. 534336, registered on February 11, 2015.
The Respondent registered the Domain Name on December 4, 2016. The Domain Name used to direct to a paid online real estate classified ads website. Currently, the website at the Domain Name is disabled.
5. Parties’ Contentions
A. Complainant
The Complainant’s contentions may be summarized as follows:
The Complainant claims that it is an operator of a website connected to the domain name ˂domofond.ru˃, which provides online ad placement for real estate sales and leases. The Complainant states that it is also a provider of Russian real estate market analytics. The Complainant asserts that it launched its Website in 2014, which is currently one of the leading online real estate classifieds in Russia. The Complainant contends that it is a holder of an exclusive license to use the DOMOFOND trademarks. The Complainant argues that the Domain Name is identical or confusingly similar to the DOMOFOND.RU trademark because it incorporates the DOMOFOND.RU trademark in its entirety. The Complainant claims that neither omission of the dot symbol, nor omission of the letter "d" from the Domain Name detracts from confusing similarity.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Respondent does not own any trademark registrations for the Domain Name. The Complainant asserts that the Respondent is not commonly known by the Domain Name. The Complainant argues that the Respondent is using Domain Name to attract Internet users to its website and to derive profit from its activities.
The Complainant claims that the Respondent registered and using the Domain Name in bad faith. The Complainant claims that it is unlikely that the Respondent did not know about the Complainant's Website by the time of the Domain Name registration because the Complainant had operated its Website for two years by the time of the Domain Name registration. The Complainant contends that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website connected to the Domain Name by creating likelihood of confusion with the Complainant's well-known trademark as to the source, sponsorship or affiliation.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
To succeed under the first UDRP element, the Complainant is required to prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
Pursuant to section 1.4 of the Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint”. The Complainant submitted a copy of a license agreement between the owner of the DOMOFOND and the DOMOFOND.RU trademarks (the “DOMOFOND marks”) that shows that the Complainant owns an exclusive license to use the DOMOFOND marks in the Russian Federation. Therefore, the Complainant proved its standing.
Where a domain name “consists of a common, obvious, or intentional misspelling of a trademark” 1, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing 2 . Here, the Domain Name consists of the word “domofonru” and the generic Top-Level Domain (“gTLD”) “.com”. Because the DOMOFOND.RU trademark is recognizable within the Domain Name, neither omission of the letter “d”, nor the omission of the dot symbol, would prevent a finding of confusing similarity under the first element. The gTLD “.com” does not detract from confusing similarity because “[t]he applicable Top-Level Domain (“TLD”) in a domain name … is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”.
Thus, the Domain Name is confusingly similar to the DOMOFOND.RU trademark and the first element of the UDRP has been satisfied.
B. Rights or Legitimate Interests
To succeed under the second UDRP element, the Complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the Respondent.
The Complainant alleges and the Respondent does not contradict it that it has not licensed or permitted the Respondent to use the Complainant’s DOMOFOND trademarks in domain names, or for any other purpose.
The evidence on file also shows that the Respondent has not been commonly known by the Domain Name.
The Respondent is not using the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. The Respondent used the Domain Name to direct to a paid online real estate classified ads website. The Respondent website’s design was in the same blue and white color scheme as is the Complainant’s website and featured a logo that resembled the logo used on the Complainant’s website. The Respondent used the Domain Name to trade off Internet users’ confusion between the Respondent’s and the Complainant’s websites. Such use does not qualify as bona fide.
Nor is the Respondent’s use of the Domain Name fair, because “it falsely suggests affiliation with the trademark owner”. 3 The nature of the Domain Name itself suggests affiliation between the Complainant and the Respondent because the Domain Name, which is virtually identical to the DOMOFOND.RU trademark carries a high risk of implied affiliation between the Complaint and the Respondent.
The Respondent’s current non-use, or passive holding, of the Domain Name is further evidence that it does not have any rights or legitimate interest in the Domain Name. See, e.g., BMW v. Weiss, WIPO Case No. D2017-2145 (“The Panel agrees that the use of the disputed domain name in connection with a ‘coming soon’ website is analogous to non-use or passive holding, which does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use.”)
The Panel finds that the Complainant has made out the prima facie case and the burden of producing evidence demonstrating it has rights or legitimate interests in the Domain Name shifted to the Respondent 4. Because the Respondent failed to present any rebutting evidence, the Complainant is deemed to have satisfied the second element of the UDRP.
C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
The Complainant claims that the DOMOFOND trademark is well-known. In support of this assertion, the Complainant submitted evidence of its website rankings and analytics. The evidence shows the Website’s ranking as of August 13, 2019 and analytics for the 31 days preceding August 13, 2019. The Panel finds the evidence insufficient to show notoriety of the DOMOFOND trademarks in 2016, when the Domain Name was registered.
The Panel finds the Respondent’s registration and use of the Domain Name constitute bad faith under paragraph 4(b)(iv) of the Policy, because the Respondent has used the Domain Name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s DOMOFOND.RU mark as to the source, sponsorship, affiliation, and/or endorsement of the Domain Name and the Respondent’s website. The Respondent used the Domain Name that was confusingly similar to the DOMOFOND.RU trademark, in connection with a paid online real estate classified ads website, that was similar to the Complainant’s website and services.
Currently, the Domain Name does not resolve to any active website. It is well-established that non-use of a domain name would not prevent finding of bad faith under certain circumstances 5 . The Respondent’s registration of the Domain Name incorporating the DOMOFOND trademarks and its prior bad-faith use of the Domain Name make any good faith use of the Domain Name implausible.
Therefore, the Panel finds that the Complainant satisfied the third element of the UDRP.
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 <domofonru.com> be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: October 14, 2019