The Complainant is Invest Alliance AO (Aktsionernoe Obshchestvo “Invest Al’yans”), Russian Federation, represented by OOO Beiten Burkhardt Rechtsanwaltsgesellschaft mbH, Russian Federation.
The Respondent is Alexander Rubets, Ukraine.
The disputed domain name <ermolino-polufabrikaty.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2020. On November 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 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 December 4, 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 amended Complaint on December 7, 2020.
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 December 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2020.
The Center appointed Assen Alexiev as the sole panelist in this matter on January 31, 2021. 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.
The Complainant is a manufacturer of ready-to-cook products, based in the city of Ermolino, Russian Federation. It has several hundred stores in the Russian Federation.
The Complainant is the owner of the following trademark registrations of the sign ЕРМОЛИНО (with English transliteration “ERMOLINO”):
- the word trademark ЕРМОЛИНО with registration No. 412582, registered in the Russian Federation on July 2, 2010 for goods in International Classes 29 and 30; and
- the combined International trademark ЕРМОЛИНО with registration No. 1142524, registered on August 20, 2012 for goods in International Classes 29 and 30, for a number of jurisdictions, including Ukraine. These trademarks will be referred to in this decision as the “ERMOLINO trademark”.
The Complainant is the owner of the following trademark registrations of the sign ЕРМОЛИНСКИЕ ПОЛУФАБРИКАТЫ (with English transliteration “ERMOLINSKIE POLUFABRIKATY”):
- the word trademark ЕРМОЛИНСКИЕ ПОЛУФАБРИКАТЫ with registration No. 415718, registered in the Russian Federation on August 11, 2010 for goods in International Classes 29 and 30; and
- the combined trademark ЕРМОЛИНСКИЕ ПОЛУФАБРИКАТЫ and logo with registration No. 102022, registered in Ukraine on January 12, 2009 for goods in International Classes 29, 30 and 31. These trademarks will be referred to in this decision as the “ERMOLINSKIE POLUFABRIKATY trademark”.
The Complainant is also the owner of the domain name <ermolino-produkty.ru>, registered on April 8, 2016, which it uses for its official website containing information about the Complainant’s products and stores.
The disputed domain name was registered on July 23, 2016. It resolves to a website that displays the ERMOLINSKIE POLUFABRIKATY trademark and offers for sale the Complainant’s products.
The Complainant states that the disputed domain name is confusingly similar to its ERMOLINO and ERMOLINSKIE POLUFABRIKATY trademarks, and notes that it is a combination of the word “Ermolino” – the name of the city where the Complainant is located, and the word “polufabrikaty” – the Latin transliteration of the Russian word “полуфабрикаты” meaning “ready-to-cook products”.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because it was registered without the Complainant’s consent, and the Respondent has no rights to the designations “Ermolino” or “Ermolinskie polufabrikaty”, and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and is not using it in connection with a bona fide offering of goods or services. The Complainant points out that its products are offered for sale on the Respondent’s website without authorization from the Complainant, and the website does not indicate the contact information of its owner.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. It points out that the ERMOLINO and ERMOLINSKIE POLUFABRIKATY trademarks predate the registration of the disputed domain name and maintains that the Respondent knew of the Complainant’s products and trademark when it registered the disputed domain name. The Complainant submits that the Respondent is using the disputed domain name in bad faith, as it capitalizes on the fame of the Complainant’s ERMOLINO and ERMOLINSKIE POLUFABRIKATY trademarks by creating an impression that there is a connection between the disputed domain name and the Complainant. The Complainant points out that the Respondent’s website includes the ERMOLINSKIE POLUFABRIKATY trademark and offers for sale products manufactured by the Complainant but also contains third-party commercial advertisements.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to the 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;
(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 the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(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 Respondent however did not submit a Response in this proceeding.
The Complainant has provided evidence that it is the owner of the ERMOLINO and ERMOLINSKIE POLUFABRIKATY trademarks and has thus established that it has rights in these trademarks for the purposes of the Policy.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level-Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.
The relevant part of the disputed domain name for purposes of the first element is therefore the sequence “ermolino-polufabrikaty”. The first of these elements is identical to the ERMOLINO trademark and similar to the first element of the ERMOLINSKIE POLUFABRIKATY trademark, while the second element is identical to the second element of the ERMOLINSKIE POLUFABRIKATY trademark. The incorporation of these elements in the disputed domain name makes the ERMOLINO and ERMOLINSKIE POLUFABRIKATY trademarks recognizable in it. As discussed in section 1.7 of the WIPO Overview 3.0, 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.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the ERMOLINO and ERMOLINSKIE POLUFABRIKATY trademarks in which the Complainant has rights.
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, as it was not authorized by the Complainant to use its trademarks and distribute its products, and is not using the disputed domain name in connection with a bona fide offering of goods or services. Rather, the Respondent is using the disputed domain name in relation to a website that offers the Complainant’s products alongside third-party commercial advertising, and prominently features the ERMOLINO trademark and logo, without disclosing the owner of the website. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not alleged that it has rights and legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding.
The disputed domain name is confusingly similar to the ERMOLINO and ERMOLINSKIE POLUFABRIKATY trademarks, which were registered several years earlier, and the evidence in the case file shows that it resolves to a Russian language website that features the Complainant’s products alongside third-party commercial advertisements, and includes the ERMOLINO trademark without any indication that the owner of the website is unrelated to the Complainant. This makes it likely that Internet users may regard the disputed domain name as being an official online location offering the Complainant’s products.
On the basis of the above, the Panel is satisfied that the Respondent, being well aware of the goodwill of the Complainant’s ERMOLINO and ERMOLINSKIE POLUFABRIKATY trademarks, is likely to have registered and used the disputed domain name in an attempt to exploit this goodwill to attract the attention of Internet users and to mislead them that the disputed domain name and the associated website represent an official online location approved by the Complainant to offer its products, without disclosing the lack of any partnership with the Complainant. When arriving at the associated website, Internet users are exposed to various third-party commercial advertisements placed among content related to the Complainant’s products. In the Panel’s view, such conduct does not comply with the criteria set out in the Oki Data test and does not appear to be legitimate and giving rise to rights and legitimate interests of the Respondent in the disputed domain name.
Therefore, 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 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 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.
As discussed above, the disputed domain name is confusingly similar to the Complainant’s ERMOLINO and ERMOLINSKIE POLUFABRIKATY trademarks, which were registered several years before the registration of the disputed domain name in the Russian Federation and in Ukraine, where the Respondent is located. The Respondent does not deny that the same website features the Complainant’s products and third-party advertisements and displays the ERMOLINO trademark and logo, and does not indicate its owner or contain a disclaimer for the lack of affiliation with the Complainant.
In view of the above, the Panel accepts that the Respondent is likely to have registered the disputed domain name with knowledge of the Complainant and targeting its ERMOLINO and ERMOLINSKIE POLUFABRIKATY trademarks in an attempt to attract traffic to the disputed domain name by confusing Internet users that they are reaching an official online location of the Complainant. The website at the disputed domain name may further confuse Internet users that it is an official or an authorized online location offering the Complainant’s products, and includes advertisements of third parties. This supports a finding that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainant’s ERMOLINO and ERMOLINSKIE POLUFABRIKATY trademarks as to the endorsement by the Complainant of the Respondent’s website and of the products and services offered through it.
Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.
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 <ermolino-polufabrikaty.com> be transferred to the Complainant.
Assen Alexiev
Sole Panelist
Date: February 13, 2021