WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Master Delivery Limited Liability Company v. Domain Protection Services, Inc. / Karim Aimeldinov
Case No. D2021-1110
1. The Parties
The Complainant is Master Delivery Limited Liability Company, Russian Federation, represented by Claims IP, Russian Federation.
The Respondent is Domain Protection Services, Inc. / Karim Aimeldinov, Russian Federation, represented by Internet and Law Legal Company, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <pryami.com> (the “Domain Name”) is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2021. On April 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 12, 2021, 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 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 April 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2021. The Response was filed with the Center on May 3, 2021. On May 28, the Complainant submitted a request to submit a Supplemental filing. On June 2, 2021, the Complainant filed its supplemental filing “to address some Respondent’s [sic] arguments which contradict the facts and the information”. On June 3, 2021, the Respondent filed a supplemental filing intending to respond to allegations in the Complainant’s supplemental filing. On June 7, 2021, the Center at the direction of the Panel advised the Parties that: “The Panel disallows the Complainant’s supplemental filing in accordance with settled Policy precedent. As a result, the Panel disallows the Respondent’s supplemental filing. The Panel will include further explanation in her Decision. The Panel requests that neither Party submit any further communication to the WIPO Center without the Panel’s express direction.”
The Center appointed Olga Zalomiy as the sole panelist in this matter on May 19, 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.
4. Factual Background
The Complainant offers a food delivery service in Russia. The Complainant is the owner of two trademark registrations for the mark ПРЯМИКОМ and for the mark PRYAMI.COM, such as:
-Russian Federation Trademark registration No. 791061 for the mark ПРЯМИКОМ, registered on December 10,2020, with the priority date of October 19, 2020; and
-Russian Federation Trademark registration No. 256867 for the mark PRYAMI.COM registered on January 12, 2021, with the priority date of October 19, 2020.
The Respondent registered the Domain Name on October 21, 2020. The Respondent has been using the Domain Name to direct to a nonfunctioning website in Ukrainian Language for information about flights originating in Ukraine to different countries.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it offers food delivery services in Russia. The Complainant claims that it owns PRYAMI.COM and ПРЯМИКОМ trademark registrations in Russia with the priority date of October 19, 2020. The Complainant asserts that the Domain Name is identical to the Complainants PRYAMI.COM trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Domain Name was registered after the Complainant filed applications for registration of its trademarks. The Complainant asserts that the Respondent had not used either the trademark or the Domain Name prior to the date of the Complainant’s filing for the trademark registration. The Complainant contends that the Respondent is using the Domain Name to create an appearance of preparation to implement commercial activities and that use of the Domain Name coincided with the time when the parties began negotiating purchase of the Domain Name. The Complainant asserts that the Domain Name previously directed to a web page “Wow My blog will be here Soon”.
The Complainant states that the Domain Name was registered primarily for the purpose of reselling the Domain Name to the Complainant because the Respondent registered the Domain Name that it identical to the Complainant’s trademark after the Complainant filed its application for registration of the trademark. The Complainant contends the parties entered the negotiations to purchase the Domain Name during which the Respondent offered to sell the Domain Name to the Complainant for a sum exceeding the Respondent’s out-of-pocket expenses related to the Domain Name. The Complainant argues that the Respondent is using the Domain Name in bad faith because it is trying to prevent the Complainant from using its trademark, so that the Complainant lose its trademark rights.
B. Respondent
The Respondent contends that the Domain Name is not identical or confusingly similar to the Complainant’s marks. In support of this contention, the Respondent points to the fact the Complainant’s ПРЯМИКОМ trademark, is in Cyrillic and is directed to Russian consumers. The Complainant’s trademark does not have a dot in the middle and it represents the whole word “прямиком”, which means “straight” in Russian. The Respondent argues that the Complainant registered the PRYAMI.COM trademark solely for the purpose of obtaining the Domain Name, because the trademark does not match its first trademark ПРЯМИКОМ. The Respondent contends that in determining similarity between the Domain Name and the Complainant’s trademark, the gTLD “.com” should be disregarded from the comparison because it is the standard registration element. The Respondent argues that apart from the gTLD, the Domain Name consists of the term “pryami”, in which the Complainant does not have any rights.
The Respondent claims that it has rights and legitimate interests in respect of the Domain Name because it registered and made preparations to use the Domain Name for a Ukrainian aggregator of flight information. The Respondent contends that it ceased using the Domain Name because it business was wound down due to a disagreement with an investor, about which the Complainant knows. The Respondent asserts that it is making a legitimate fair use of the Domain Name without intent for commercial gain.
The Respondent contends that it did not register, nor is using the Domain Name in bad faith because the Respondent could not have learned about the Complainant’s trademark at the time of the Domain Name registration because the Complainant began using its trademark after the Respondent registered the Domain Name. The Respondent contends that its Domain Name registration and the Complainant’s filing of an application to register its trademark took place almost simultaneously. The Respondent contends the Domain Name was created on January 24, 2006 and registered by the Respondent on October 21, 2020 while the agreement to establish the Complainant was concluded on July 21, 2020 and that the Complainant was registered as a company on August 22, 2020. The Respondent contends that the Complainant began using its ПРЯМИКОМ trademark on March 23, 2021. The Respondent asserts that while the Complainant’s trademark has a priority of October 19, 2020, the mark registered only on January 12, 2021, which is after October 21, 2020, the date of the Respondent’s registration of the Domain Name. The Respondent alleges that the Domain Name, which consists of the Ukrainian word “pryami” (meaning “direct”) and the gTLD “.com”, was registered for a Ukrainian flight aggregation company, was chosen for its meaning and has not had any information in Russian, the language of the Complainant and the country of registration of its trademarks. The Respondent contends that it did not offer to sell the Domain Name to the Complainant, because it was the Complainant that approached the Respondent about the sale of the Domain Name.
The Respondent contends that the Complainant is engaged in reverse domain name hijacking because the Complainant filed the Complaint in this case after it failed to purchase the Domain Name from the Respondent at the price acceptable to the Complainant. The Respondent contends that at the time when the parties entered into negotiations regarding the purchase of the Domain Name, the Complainant filed two claims for a preliminary injunction with the Russian court in anticipation of filing of a lawsuit to seize the Domain Name.
6. Discussion and Findings
6.1. Supplemental Filing
Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding “with due expedition”. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated.1
Supplementary filing by a party merely to respond or reply to issues or points raised by the other parties which could have otherwise been raised in its complaint or response has not been seen to be reason enough to allow supplemental filings. See for instance, Mejeriforeningen Danish Dairy Board v. Cykon Technology, WIPO Case No. D2010-0776. (Given the expeditious and speed nature of the remedy offered to parties under the Policy, additional evidence or submissions can be allowed only under exceptional circumstances).
Here, the Complainant filed a request to file a supplemental filing long after the receipt of the Respondent’s response. The request provides no new information, just points to the Complainant’s need to address the Respondent’s allegations. Five days later, without any permission from the Panel, the Complainant filed a supplemental filing “to address some Respondent’s [sic] arguments which contradict the facts and the information”. The Panel notes the Complainant’s reason for the supplemental filing: “[t]he Response is based party on the documents dated after the filing of the Complaint (see, for example, p.10 of the Response, Annex 9 and 10 with the correspondence from 23.12.2020 to 27.04.21). There are also allegations in reverse domain name hijacking.” On June 3, 2021, the Respondent filed a supplemental filing intending to respond to allegations in the Complainant's supplemental filing.
Having reviewed the request for a supplemental submission by the Complainant, the Panel finds no information about existence of such exceptional circumstance. The exhibit 9 submitted by the Respondent does not contain any correspondence between the parties after the date of the Complainant. The exhibit 10 contains translation from Russian to English of a purported message sent by a Complainant’s representative to a Respondent’s representative on April 27, 2021. Because the original message was not provided to the Panel, the Panel did not give any weight to the translation of the document. Furthermore, the Panel is a native Russian, so she does not require the translation from Russian to English to understand the nature of the correspondence between the parties in Russian. The Complainant’s response to the Respondent’s reverse domain name hijacking claim address the following matters: why the circumstances of this case do not support the lack of the Respondent’s bad faith; and a rebuttal of that its request to a Russian court not to publish the decision was evidence of the Complainant’s bad faith.
The Complainant provides no information what makes its arguments exceptional. It appears that long after receipt of the response, the Complainant merely decided to request an opportunity to respond to issues raised by the Respondent, which is not a reason to allow the supplemental filing. Therefore, in the interests of due expedition, the Panel declines the Complainant’s request to submit a Supplemental filing. Because the Panel declined the Complainant’s supplemental filing, the Panel also did not consider the Respondent’s supplemental filing.
6.2. Substantive Elements of the Policy
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
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 Complainant says that the Domain Name is identical to the Complainant’s trademark rights. The Respondent disagrees on the basis that a) the relevant part of the Domain Name is “pryami” and “pryami” is not identical or confusingly similar to any of the Complainant’s trademarks; and b) the Complainant’s ПРЯМИКОМ trademark, which is in Cyrillic and is directed to Russian consumers, does not have a dot in the middle and it represents the whole word “прямиком”, which means “straight” in Russian.
The Respondent contends that in determining similarity between the Domain Name and the Complainant’s trademark, the gTLD ".com" should be disregarded from the comparison because it is a standard registration element. The Respondent argues that apart from the gTLD, the Domain Name consists of the term “pryami”, in which the Complainant does not have any rights.
While gTLD is typically disregarded from the determination of confusing similarity, it is well established that “[w]here the applicable TLD and the second-level portion of the domain name in combination contain the relevant trademark, panels may consider the domain name in its entirety for purposes of assessing confusing similarity.”2
The Panel is not persuaded by the Respondent’s arguments in this case. Whether the Complainant had a reason to register a trademark in Latin, is not the subject of inquiry under this element. If we compare the Complainant’s trademarks PRYMI.COM and ПРЯМИКОМ (which is transliterated PRYMIKOM) and the Domain Name in its entirety, the similarity is evident. See, e.g., WeWork Companies, Inc. v. Michael Chiriac, Various Concepts Inc., WIPO Case No. D2016-1817 (WEWORK trademark is confusingly similar to domain names with the mark interrupted by a dot); Tesco Stores Limited v. M.F., WIPO Case No. DCO2013-0017 (˂tes.co˃ domain name was found similar to TESCO trademark).
Therefore, the Domain Name is confusingly similar to the Complainant’s trademarks.
The Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Domain Name by demonstrating the following:
(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the Domain Name, even if he has acquired no trademark or service mark rights; or
(iii) 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.
Although the Respondent claims that he has rights and legitimate interests in the Domain Name <pryami.com>, on the record submitted to this Panel, that claim is not sufficient. The Respondent states that he registered the Domain Name, which consists of the Ukrainian word “pryami”, for a Ukrainian flight aggregation company, and that it ceased using the Domain Name because its business was wound down due to a disagreement with an investor. Yet, correspondence between the parties shows that on the same day the Respondent registered several domain names similar to the Complainant’s ПРЯМИКОМ and PRYAMI.COM trademarks, such as ˂pryami.ru˃, ˂pryamikom.ru˃, ˂pryamikom.ru˃, ˂pryamycom.ru˃, and ˂прямиком.рф˃, which were offered and ultimately sold to the Complainant. There is no explanation why a Ukrainian flight aggregator that chose the Domain Name based on the meaning of the Ukrainian word “pryami” would register several additional domain names with Russian country code domains that were based on the Russian word “pryamikom.” The Respondent provided no evidence that such Ukrainian flight aggregator existed.
Although the Respondent claimed to have had a disagreement with a purported investor in November of 2020 and stated that “in the coming 3 years we are not planning to use the domain name pryami.com for any commercial activity”, two months later the Respondent created a non-working website for a purported flight aggregator.
The Respondent acquired the Domain Name and five other domain names, consisting of the Complainant’s trademarks, on October 21, 2020, just two days after the Complainant filed its applications for registration of the PRYAMI.COM and ПРЯМИКОМ trademarks. The Respondent registered five out of six domain names with Latin and Cyrillic Russian country code domain names. However, the <pryami.ua> and <pryami.com>,3 domain name with a country code domain for Ukraine, were never registered. It is not likely that a Ukrainian flight aggregator would register several domain names with Russian country code domains, which are usually registered for Russian businesses and would not register domain names with country code domain for Ukraine that are registered for Ukrainian businesses. Nor it is likely that a Ukrainian business that chose the Domain Name because of the Ukrainian word “pryami” would register the domain name in Russian, which is a transliteration of the Complainant’s trademark ПРЯМИКОМ.
The evidence shows that the Respondent’s representative stated that “[o]ur job is to create good-sounding names for projects and to track the available domains which may present some potential or may have some history. Then we register then and turn some of the into sellable projects. We also register additional typo domains, both for better protection of the main domain, and for the value of a “package offer”, which enables the buyer to own all the variants of domain name spelling. If you wish, we could say that in the current situation we have the key on the one side, and the lock on the other. To resolve the situation, one person much own both items.”
In light of the above-mentioned, the Panel infers that the Respondent sought to acquire the Domain Name because of the value it would have to the Complainant and then, caused an offer to be communicated to the Complainant to sell the Domain Name for 4 million rubles,4 a sum in excess of ordinary out of pocket costs.
Based on the record in this proceeding, it appears to the Panel that the Respondent’s only interest in the Domain Name was to try to sell it to the Complainant and not to use it for a legitimate purpose not related to the Complainant. Accordingly, the Panel concludes that the Complainant has sustained its burden of proving that the Respondent lacks rights or a legitimate interest in the Domain Name.
The Complainant has established the second element of the Policy.
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.
Paragraph 4(b) of the UDRP sets forth circumstances, which shall be considered evidence of the registration and use of a domain name in bad faith. The examples of bad faith registration and use set forth in paragraph 4(b) of the UDRP are not meant to be exhaustive of all circumstances from which such bad faith may be found. Prior UDRP Panels found that “ in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith. Such scenarios include registration of a domain name: … (iv) following the complainant’s filing of a trademark application.”5
Here, the Respondent registered the Domain Name along with several other domain names including the Complainant’s trademarks two days after the Complainant filed its applications for registration of the trademarks. The Panel accepts the Complainant’s argument that it is likely that the Respondent registered the Domain Name to sell it to the Complainant.
The Respondent’s argument the Domain Name was created on January 24, 2006 and registered by the Respondent on October 21, 2020, while the Complainant was registered as a company on August 22, 2020, is without merit. The evidence on record shows that the Domain Name had several different owners between 2006 and 2018. When the Respondent acquired the Domain Name in 2020, that constituted a new registration of the Domain Name. Therefore, it is the Respondent’s knowledge in October of 2020, at the time of his registration of the Domain Name, is relevant to the question of bad faith registration.
The Panel rejects the Respondent’s argument that the Complainant registered the PRYAMI.COM trademark solely for the purpose of obtaining the Domain Name, because the trademark does not match its first trademark ПРЯМИКОМ. The Panel finds this argument unpersuasive for two reasons: 1) the Domain Name along with several other domain names confusingly similar to the Complainant’s trademarks, were registered after the Complainant had filed its application for registration of the PRYAMI.COM trademark; and 2) the Respondent registered several domain names similar to the Complainant’s trademarks with country-code top level domains “.ru” and “.рф” for a purported Ukrainian flight aggregator, but did not register domain names with its chosen word “pryami” within the country code top level domain for Ukraine.
The Respondent argues that the Complainant owns other domain names that “really include its principal trademark, for example, <prymikom.ru>, <prymicom.ru> <прямиком.рф> and etc., so there is no reason for the Complainant to demand the Domain Name”. Based on the evidence of record, however, those are the same domain names that the Respondent registered and later sold to the Complainant. The reason for the Complainant’s request to transfer the Domain Name is to prevent the Respondent’s abusive use of the Domain Name. The Complainant’s ownership of several domain names including its trademarks, is likely defensive and does not prevent it from owning other domain names that are confusingly similar to its trademarks.
For all the reasons discussed above, given the suspicious timing of the registration of the Domain Name (just two days after the Complainant’s filing of its two trademark applications) and the offer to sell the Domain Name along with other domain names including the Complainant’s marks, the Panel infers that the Respondent registered the Domain Name with the bad faith intent to attempt to sell it to the Complainant for a price in excess of the Respondent’s registration costs.
The Respondent submitted evidence of a lawsuit filed by the Complainant against the Registrar seeking a preliminary injunction prior to initiation of a lawsuit that restrained transfer of the Domain Name to any party other than the Complainant and transfer of administration of the Domain Name to a different Registrar. The Respondent contends that such actions of the Complainant during the parties’ negotiation of sale of the Domain Name support its Reverse Domain Name Hijacking claim (the “RDNH”).
Previous panels found that the RDNH means “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.”6 The evidence shows that the Respondent informed the Complainant about its intent to transfer the Domain Name to a European registrar and a different administrator, so it can be protected within the framework of the European legal system. It appears that the Complainant’ actions were an attempt to protect its legal rights in Russia before the Respondent took further damaging action. Based on the Panel’s finding that the Respondent registered and is using the Domain Name in bad faith, the Respondent’s claim for RDNH is rejected.
The Complainant has established the third element of the Policy.
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 <pryami.com> be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: June 2, 2021
1 Section 4.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
2 Section 1.11.3, WIPO Overview 3.0.
3 It has been well-established 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”. The Panel in this case found such limited factual research warranted.
4 4,000,000 rubles approximately equals to USD 55,000.