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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

British American Tobacco (Brands) Limited v. Viktor Kuzmenko

Case No. D2020-0230

1. The Parties

The Complainant is British American Tobacco (Brands) Limited, United Kingdom, represented by Baker & McKenzie, Ukraine.

The Respondent is Viktor Kuzmenko, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <glo-device.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2020. On January 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2020, 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 January 31, 2020 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 amendment to the Complaint on February 5, 2020.

The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2020.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on March 16, 2020. 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 a part of the British American Tobacco group of companies, a multinational producer of tobacco, cigarettes and related products. It produces, distributes, and markets a tobacco heating device under the brand GLO.

The Complainant owns inter alia the following trademark registrations:

- the European Union registration for the GLO mark, No. 015179922, registered on July 6, 2016, for products and services in classes 9, 11, and 34;

- the United States of America registration for the GLO mark, No. 5719734, registered on April 9, 2019, for products and services in classes 9, 11, and 34;

- the Ukrainian registration for the GLO mark, No. 230855, registered on August 28, 2017, for products and services in classes 9, 11 and 34.

In Ukraine, the Complainant distributes GLO branded products through the official website at <myglo.com.ua> as well as through branded stores.

The disputed domain name was registered on September 12, 2019.

The Complaint provided evidence that the disputed domain name resolves to an online store offering GLO branded products and displaying the GLO mark. The website is provided in Ukrainian.

5. Parties’ Contentions

A. Complainant

Firstly, the Complainant contends that the disputed domain name is confusingly similar to the GLO mark. According to the Complainant, the disputed domain name contains the GLO mark in its entirety. The Complainant further asserts that an addition of the word “device” does not render the disputed domain name dissimilar to the Complainant’s mark as it obviously refer to GLO branded products of the Complainant.

Secondly, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant alleges that the Respondent is not commonly known by the disputed domain name and the Complainant has neither authorized the Respondent to register the disputed domain name nor to sell its GLO products. The Complainant also claims that the Respondent does not use the disputed domain name in connection with bona fide offering of goods or services as the website under the disputed domain name mirrors the Complainant’s website and displays the GLO brand and trademark, along with images of GLO branded products. There is no disclaimer on the website explaining that the Respondent has no relationship with the Complainant and no rights to the GLO mark.

Thirdly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the Respondent made its website under the disputed domain name look like an official website of the Complainant’s. In the Complainant’s opinion, this proves that the disputed domain name was intentionally registered to unfairly benefit from the goodwill of the Complainant’s mark. Moreover, the Complainant contends that the Respondent’s website gives the highly misleading and false impression of being owned, sponsored, and/or endorsed by the Complainant as it uses the GLO mark and official images of GLO products.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:

(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 the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The requested remedy may only be granted if the above criteria are met.

A. Identical or Confusingly Similar

The disputed domain name <glo-device.com> contains the GLO mark in its entirety, with an addition of the term “device” after a hyphen. Such a term does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s mark (see Compagnie Générale des Etablissements Michelin v. PrivacyDotLink Customer 1197652 / Alex Hvorost, WIPO Case No. D2016-1923).

The generic Top-Level Domain “.com” should not be taken into consideration while assessing the similarity between the disputed domain name and the Complainant’s mark.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the GLO mark and as a consequence, the Complainant has met the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1 and cases cited therein).

The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) there is no evidence that the Respondent has been commonly known by the disputed domain name; (b) the Complainant did not authorize the Respondent to register the disputed domain name; (c) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. In particular, use of a domain name that includes a registered mark, for the purpose of creating a website that offers products under this registered mark and does not accurately and prominently disclose the registrant’s relationship with the trademark holder cannot be qualified as a bona fide offering of goods or services (see WIPO Overview 3.0, section 2.8 and the cases referenced therein).

Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.

Firstly, not only does the Complainant’s mark predate the registration of the disputed domain name, but also the Complainant enjoys considerable renown as a manufacturer of tobacco products. In the light of these circumstances, the Panel concludes that the Respondent knew or should have known about the Complainant’s rights when registering the disputed domain name.

Secondly, the Respondent has also used the disputed domain name in bad faith, which is evidenced by the screenshots of the Respondent’s website that offers GLO branded products without an accurate disclosure that the Respondent is not related to the Complainant. The website also gives the false impression of being associated or endorsed by the Complainant which falls under paragraph 4(b)(iv) of the Policy (see WIPO Overview 3.0, section 3.1.4 and the cases referenced therein).

Accordingly, in the absence of any conceivable good faith use and noting the above referenced targeting of the Complainant’s mark, the Panel finds that the third element of paragraph 4(a) is satisfied.

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 <glo-device.com> be transferred to the Complainant.

Piotr Nowaczyk
Sole Panelist
Date: March 30, 2020

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