WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Appfollow.fi Oy v. Private Registration / Pavel Gross

Case No. D2021-3309

1. The Parties

The Complainant is Appfollow.fi Oy, Finland, represented by Versus.legal LLC, Finland.

The Respondent is Private Registration, United States of America / Pavel Gross, Russian Federation, represented by Sergo A.G, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <appfollow.com> is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2021. On October 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 2021, 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 October 20, 2021, 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 October 20, 2021.

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 October 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2021. The Response was filed with the Center on November 9, 2021.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on November 24, 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 is a Finnish company founded in 2015, which provides a software application review management, analytics and app store optimization platform under the name “Appfollow”.

According to the Complaint, the business was started in 2014 by a Russian company, Appfollow LLC, which registered and began using the domain name <appfollow.ru>. The domain name <appfollow.io> was registered in and use commenced in 2015. Following its incorporation, the Complainant assumed the running of the business. It appears from the declaration of Mr. Evgeny Kruglov included with the Complaint that the same persons own, or owned at that time, both the Russian company and the Complainant.

The Complaint includes evidence in Annex 4 of sales revenues as follows:

Almost all of the sales in 2015 were in the Russian Federation. There were comparatively modest sales in 13 other countries. In 2016 and 2017, the Russian Federation represented just over or just under half of total sales revenues. The remainder of the sales in 2016 were generated in some 39 other countries.

However, the profit and loss figures included in the Financial Statements in Annex 5 are somewhat less:

The Complaint does not include an explanation of these apparent discrepancies.

According to the Complaint, the Complainant’s website at <appfollow.io> had over 22 million visitors in the period 2017 to 2021. According to the statistics included in Annex 7, these were broken down as follows:

The visitors to the website have come from more than 20 different countries.

The Complainant (or its predecessor) has had accounts on Twitter since 2015 and, from unspecified dates, Facebook and LinkedIn. It currently has 2,533 followers on Twitter. The Complainant’s advertising through Google AdWords between November 2016 and September 2021 has generated more than 86,000 “clicks” in total throughout that period. Its advertising through QuoraAds has generated some 530,000 impressions in 2021.

The Complainant owns Finnish Registered Trademark No. 280546, APPFOLLOW, which was filed on April 14, 2021 and registered on May 21, 2021. The Complainant also has an International Registration derived from the Finnish registration No. 1606281, in respect of goods and services in International Classes 9, 35 and 42 and which designates 20 countries.

The Respondent is an American citizen based in both the United States of America and the Russian Federation. He registered the disputed domain name on February 26, 2017.

From shortly after that date until at least January 2020, the disputed domain name was parked with the “DomainParking.ru” service. For much of that period, the landing page indicated the disputed domain name was for sale. The disputed domain name is also listed as for sale on “Sedo.com”. No minimum offer price is specified and the Respondent claims that he did not authorize the listing. More recently (that is, after January 2020), the disputed domain name has resolved to a website which promotes the “App Annie” service which the Complainant contends is one of its competitors. Even more recently, the website to which the disputed domain name resolves contains articles about various applications and topics.

At least some of the webpages bear a copyright notice “Copyright © 2016 – 2021 appfollow.com”. At least some of the articles posted on the website appear to have been published in 2019. However, they appear to re-posting of articles from other sites. For example, the article “Review: Cinder Grill” bears the date February 10, 2019. This appears to be the same article published on February 8, 2019 at <https://www.wired.com/review/cinder-grill/>. See also the article “Review: Apple Homepod” and the article appearing at <https://www.wired.com/review/review-apple-homepod/>.

As the Respondent does not claim to have held the disputed domain name before February 26, 2017, it is not clear what the basis for the claim of copyright beginning in 2016 is.

In May 2021, the Complainant’s representative sent a communication to the Respondent through “DomainParking.ru” offering to buy the disputed domain name for USD 5,000. The Respondent replied rejecting this offer “its funny and not interesting for us”.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(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 respect of the disputed domain name; and

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

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of the registered trademark in Finland for APPFOLLOW. At this stage of the inquiry, it is not relevant that the trademark was registered after the Respondent acquired the disputed domain name. That is an issue better addressed under the second and third requirements and is considered further below.

The Complainant also claims rights in APPFOLLOW as an unregistered trademark. Having regard to the sales revenues and other evidence of usage indicated above, the Panel is also prepared to find that the Complainant has established this as well. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3.

The Respondent points out that there has been a very significant expansion in the size and scale of the Complainant’s business after the Respondent registered the disputed domain name. As in the case of the timing of the registered trademark, however, the relevance of that (if any) falls to be assessed under the second and third requirements of the Policy.

The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview 3.0, section 1.7.

In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (gTLD) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.

Disregarding the “.com” gTLD, the disputed domain name consists of the Complainant’s trademark. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.

B. Registered and Used in Bad Faith

In the circumstances of this case, the Panel considers it appropriate to consider the third requirement under the Policy next.

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd WIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

Citing WIPO Overview 3.0, section 3.1.1, the Complainant contends that the Panel should infer registration and use in bad faith on the basis of (i) the Respondent’s likely knowledge of the Complainant’s rights, (ii) the distinctiveness of the Complainant’s mark, (iii) website content targeting the Complainant’s trademark, e.g., through links to the complainant’s competitors, (iv) failure of a respondent to present a credible evidence-backed rationale for registering the domain name.

On the other hand, the Respondent denies knowledge of the Complainant or its trademark when registering the disputed domain name. The Respondent claims he registered the disputed domain name to offer a not-for-profit service of providing information about various applications that can help people in the fields of gaming, health, sports and home improvement.

Plainly, the Respondent could not have been aware of the Complainant’s registered trademark when the Respondent registered the disputed domain name as the Complainant did not apply to register its trademark until four years after the Respondent registered the disputed domain name.

The Complainant, however, was using the trademark before the Respondent registered the disputed domain name. Thus, it is possible that the Respondent did become aware of the Complainant’s use of “Appfollow” before registering the disputed domain name.

The Respondent contends that the Complainant’s evidence of sales revenues and use before 2017 is too limited to infer that he was likely to have been aware of the Complainant’s unregistered trademark. The sales revenues before 2017 are not large. The number of visitors to the Complainant’s website in 2016 is not insubstantial. The Respondent contends, however, that closer analysis of the Complainant’s statistics shows that there were on average only 41 visitors daily to the landing on the homepage of the Complainant’s website. This is still not insubstantial but equally it is on a much smaller scale than in later years and, as noted above, sales appear to have been mainly in the Russian Federation. Contrary to the Respondent’s claims, the Complaint includes evidence of at least six articles or website postings referring to the Complainant as “Appfollow” in 2016. As the Respondent contends, the publications do appear to be fairly specialised. Nonetheless, it may have been possible that an Internet search in February 2017 may have disclosed the existence of the Complainant and its business.

Against this, first and despite the Complainant’s argument to the contrary, the Panel considers the expression “Appfollow” is largely descriptive in many contexts.

Also, it appears that, apart from a short period in 2018, the Respondent cannot be said to have been obviously targeting the Complainant’s trademark until, it appears, some time after January 2020. After January 2020 and contrary to the Respondent’s claims, there has been advertising re-directing to one of the Complainant’s competitors. However, that goes to use in bad faith rather than registration in bad faith (bearing in mind it is at least three years after the registration of the disputed domain name).

As the Complainant contends, the parking page in the period before January 2020 did indicate the disputed domain name was for sale. Given the largely descriptive connotations of the term “Appfollow” in many contexts, however, that does not necessarily indicate targeting of the Complainant’s trademark.

Given the long delay between the registration of the disputed domain name and the inclusion of substantive content on the Respondent’s website, the Panel does not attach much weight to the Respondent’s claimed purpose in registering the disputed domain name. Given the potential for this matter to be taken up in another forum, however, the Panel will refrain from commenting further.

In all the circumstances, the Panel considers it is possible that the Respondent was aware of the Complainant’s unregistered trademark when registering the disputed domain name. However, the scale of the Complainant’s use at that time and the absence of evidence of targeting bearing in mind the nature of the term “Appfollow” in many contexts means the Panel does not think the Respondent’s denial of awareness of the Complainant’s unregistered trademark when registering the disputed domain name can be rejected.

The Complainant points to evidence in the WhoIs record indicating the registrant of the disputed domain name held more than 13 million domain names when the Respondent registered the disputed domain name and, in 2021, just under one million domain names. The Respondent denies this. Examination of the WhoIs record shows that these statistics are attributed to the Privacy Service through which the disputed domain name was being held at that time.

Accordingly, the Complainant cannot establish all three requirements under the Policy and the Complaint must fail.

C. Rights or legitimate interests

As the Complaint cannot succeed, no good purpose would be served by addressing this requirement under the Policy.

D. Reverse Domain Name Hijacking

The Respondent claims this is a case of reverse domain name hijacking (“RDNH”). However, the Panel notes that the Respondent’s advertising included re-directing to one of the Complainant’s competitors and, while the Panel has found there is not sufficient evidence to make a finding in the face of the Respondent’s denial that the Respondent was aware of the Complainant’s trademark, such awareness is nonetheless a possibility. So, the Panel does not consider the Complaint was necessarily bound to fail. Further, given the finding on registration and use in bad faith, it has not been necessary or desirable for the Panel to address the issue of rights or legitimate interests. In these circumstances, therefore, the Panel rejects the Respondent’s claim of RDNH.

6. Decision

For the foregoing reasons, the Complaint is denied.

Warwick A. Rothnie
Sole Panelist
Date: December 8, 2021