WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Go Travel Un Limited v. Obshchestvo s organichennoj otvetstvennostyu “Ekstrip”
Case No. D2020-1719
1. The Parties
The Complainant is Go Travel Un Limited, Russian Federation, represented internally.
The Respondent is Obshchestvo s organichennoj otvetstvennostyu “Ekstrip”, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <aviasales.app> (the “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 June 30, 2020. On June 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 2, 2020, 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 Registrar confirmed that the language of the Registration Agreement for the Domain Name is Russian. On July 14, 2020, the Center sent an email communication in both English and in Russian to the Parties regarding the language of the proceeding. On July 15, 2020, the Complainant submitted its request for English to be the language of the proceeding. On July 16, 2020, the Respondent responded in Russian that it was unable to negotiate in English because it was not proficient in it and requested to use Russian.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2020. No formal Response was filed with the Center. The Respondent sent an email communication to the Center on August 25, 2020, which the Panel has assessed in rendering this decision.
The Center appointed Olga Zalomiy as the sole panelist in this matter on August 31, 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 owns a Russian trademark registration for the AVIASALES mark, registration number 504286, registered on January 20, 2014.
The Respondent registered the Domain Name on May 8, 2018. In 2018, the Respondent briefly used the Domain Name to direct to a website offering tickets for air travel. Currently, the Respondent is not using the Domain Name to direct to any website. The Respondent offered the Domain Name for sale to the Complainant at a price that exceeds its costs.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to its AVIASALES trademark registered in the Russian Federation.
The Complainant claims that the Domain Name is necessary for its group of companies to provide mobile applications to its users. The Complainant contends that the Respondent has nor rights or legitimate interests in the Domain Name. The Complainant alleges that there is no evidence of the Respondent's use or demonstrable preparations to use the Domain Name in connection with offering of goods or services. The Complainant claims that the Domain Name was in use only from June to August of 2018 and that currently the Domain Name does not direct to an active website. The Complainant alleges that the Respondent has never been commonly known by the Domain Name. The Complainant claims that its trademark has a long history and wide-ranging brand recognition and that its mobile applications are widely used.
The Complainant states that the Domain Name was registered and is being used in bad faith for the purpose of selling it to the Complainant at an unreasonably high price starting at USD150,000. The Complainant claims that AVIASALES is the largest flight metasearch engine in the Russian Federation and the CIS that has been in existence since 2007. The Complainant contends that it’s been in business for 12 years, so it was impossible for the Respondent, that works in a similar industry, online travel, not to know about the AVIASALES brand. The Complainant claims that initially, the Respondent offered the Domain Name for sale for USD150,000 and then lowered its asking price to USD5000. The Complainant argues that the Respondent registered the Domain Name to disrupt the Complainant's business by preventing the Complainant from using the Domain Name in connection with its mobile applications. The Complainant claims that the Respondent in engaged in a cybersquatting business whereby it registers domain names similar or identical to names of airports, railway companies and travel agencies.
B. Respondent
The Respondent did not submit any formal response.
On August 25, 2020, the Respondent sent to the Center an email in Russian that can be summarized as follows. The Respondent notifies the Center that it was unable to respond to the Complaint in a timely manner because it received the notification of Complaint on August 24, 2020, which was five days after the deadline for submission of a response had passed. The Respondent submits that it acquired the Domain Name at an open auction conducted by the Registrar, in which the Complainant chose not to participate. The Respondent claims that it is not using the Domain Name for commercial purposes. The Respondent contends that the “rights holder attempted to purchase the Domain Name from it”, but, in the Respondent’s opinion, the price offered by the rights holder was too low. In the Respondent's opinion, the price did not correlate to the Respondent's expenses on the acquisition and maintenance of the Domain Name. The Respondent desires to transfer the Domain Name to the Complainant for a fair price. In the Respondent's opinion, a fair price for the Domain Name is USD50,000. The Respondent requests that the Panel compensate it for the losses that the Respondent has suffered and its future losses.
6. Discussion and Findings
6. 1. Procedural Issue - Language of the Proceeding
Under paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement, unless the parties agree to use a different language, or the registration agreement provides otherwise. The Panel has the right to determine the language of the administrative proceeding based on the circumstances of the case.
Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding should be Russian. However, the Complainant requested that English be the language of the administrative proceeding because both parties work in the travel industry, where English is the most common language of communication. In response, the Respondent sent a message in Russian that can be translated into English as follows: “we cannot negotiate in the English language because they we are not proficient in it. We suggest using Russian.”
Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. “Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, […] (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint; vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language,”. See section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Having considered all circumstances of this case and relevant Policy considerations, the Panel finds that English is an appropriate language of this proceeding for the following reasons: (i) the language of the Domain Name is English, which is the same as the Complainant’s trademark, (ii) the Respondent’s ˂extrip.su˃1 domain name directs to a dual English/Russian language website, which shows that the Respondent is, in fact, proficient in English; (iii) while the Respondent suggested to use Russian for negotiations, it did not request that Russian be the language of the proceeding; (iv) the Respondent chose not to submit a response to the Complaint; (v) the Panel, who is proficient in both English and Russian, reviewed and considered the information submitted by both parties in both languages. Based on the aforementioned, the Panel believes that the Respondent would not be prejudiced if English is adopted as the language of the proceeding.
Considering the above, the Panel grants the Complainant’s request that English be the language of this proceeding.
6.2 Substantive Issues
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 Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
The submitted evidence shows that the Complainant owns the AVIASALES trademark in the Russian Federation. Pursuant to section 1.2.1 of the WIPO Overview 3.0, this satisfies the threshold requirement of having trademark rights for purposes of standing in a UDRP case.
The Domain Name consists of the Complainant’s AVIASALES trademark and the generic Top-Level Domain (the “gTLD”) “.app”. Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”2 It is well-established, that the applicable gTLD should be disregarded under the confusingly similarity test as a standard registration requirement.3 Because the Domain Name consists of the entirety of the Complainant’s trademark and the gTLD should be disregarded from the assessment of confusing similarity, the Domain Name is identical to the Complainant’s AVIASALES trademark.
The Complainant has satisfied the first element of the UDRP.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the UDRP, the following may demonstrate rights or legitimate interests in the Domain Name:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that the Complainant has made out prima facie case in respect of the lack of rights or legitimate interests of the Respondent. The Complainant has not authorized or licensed the Respondent to use the Complainant’s AVIASALES trademark in any manner. The Respondent’s email refers to the Complainant as the “rights holder”, which indicates that the Respondent has no rights or legitimate interests in the Domain Name identical to the Complainant’s trademark. The Respondent also has not been commonly known by the Domain Name.
The Complainant submitted copies of email correspondence between the Complainant’s representative and a third-party discussing sale of a domain name. One of the emails contains a link to an add on Yandex.ru showing use of the Domain Name in connection with an offer to purchase tickets for air travel. While it is not clear from the correspondence whether the third party acted on behalf of the Respondent, the Respondent’s August 25, 2020 email concedes that it has tried selling the Domain Name to the Complainant. The email also shows that the Respondent is trying to sell the Domain Name to the Complainant for USD50,000, which shows its intent to profit from such sale.
The Panel finds that the Complainant has made out the prima facie case that is required to succeed under the second UDRP element4 , and the burden of producing evidence demonstrating it has rights or legitimate interests in the Domain Name has shifted to the Respondent. Because the Respondent failed to produce evidence that it has rights or legitimate interests, the Panel concludes that the Complainant has satisfied the second element of the UDRP.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name was registered and is being used in bad faith.
For the reasons stated below, the Panel finds that the Respondent registered and is using the Domain Name in bad faith in accordance with paragraph 4(b)(i) of the UDRP, because the Respondent acquired the Domain Name “primarily for the purpose of selling […] the domain name registration to the complainant who is the owner of the trademark […]”. Id.
The Respondent registered the Domain Name in 2018, which is six years after the Complainant registered its AVIASALES trademark in the Russian Federation, where the Respondent is located and operates its travel business. The Domain Name is identical to the Complainant’s trademark, adding only the gTLD “.app”, which directly relates to the Complainant’s business- mobile application (“app”) for booking airline tickets. The Complainant claims and the Respondent does not dispute the fact that the Complainant has made extensive and long-standing use of its AVIASALES trademark. The Panel considers it very unlikely that the Domain Name is identical to that trademark by coincidence, especially because the Respondent appears to work in the same industry as the Complainant. The Respondent submits that it registered the Domain Name at an auction, in which the Complainant chose not to participate. In its August 25, 2020 email, the Respondent explicitly refers to the Complainant as the “rights holder”. In these circumstances, the Panel finds it very likely that the Respondent knew of the trademark and the Complainant’s rights in it at the time that it registered the Domain Name.
The Respondent concedes that it offered the Domain Name for sale to the Complainant, but the Complainant counteroffered the price that was too low in the Respondent’s opinion. The Respondent submits that the fair sale price is USD50,000. The Respondent also concedes that it is not using the Domain Name to direct to any website. In the circumstances of this case, the Panel finds that the Respondent has targeted the value of the Complainant’s trademark by intending to sell the Domain Name for commercial gain. This constitutes bad faith registration and use of a domain name within the terms of paragraph 4(b)(i) of the Policy.
The Complainant has 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 Domain Name <aviasales.app> be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: September 11, 2020
1 The Panel notes that the Respondent in its communication to the Center referred to a website “www.extrip.su”, under which it appears to operate. Under section 4.8 of the WIPO Overview 3.0, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. In this case, the Panel reviewed the Respondent’s website “www.exptrip.su” and notes that it appears to be in dual language.
2 Section 1.7, WIPO Overview 3.0.