WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Metinvest Holdings NV v. O. Bogatov
Case No. DNL2008-0025
1. The Parties
The Complainant is Metinvest Holdings NV, Curacao, Netherlands Antilles, represented by BCCC Attorneys-at-law, Geneva, Switzerland.
The Respondent is Mr. O. Bogatov, Kiev, Ukraine or on the alternative address in Amstelveen, The Netherlands, represented by Boekx Advocaten, Amsterdam, The Netherlands.
2. The Domain Name and Registrar
The disputed domain name <metinvest.nl> is registered with SIDN, through EuroDNS S.A. (“the Domain Name”).
3. Procedural History
The Complaint was filed by e-mail with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2008 and received in hardcopy on July 18, 2008. On July 16, 2008, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On July 18, 2008, SIDN transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Domain Name and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, Articles 5.1 and 15.5, per e-mail of July 23, 2008 the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 23, 2008. In accordance with the Regulations, Article 7.1, the due date for Response was August 12, 2008. The Response was filed with the Center on August 12, 2008 by e-mail and on August 15, 2008 in hardcopy.
The Center appointed Mr. P.L. Reeskamp as the sole panelist in this matter on August 22, 2008. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, Article 8.2.
Per e-mail of August 14, 2008 Complainant requested to submit further statements and evidence. Per e-mail of August 15, 2008 Respondent argued that the Panel should reject this request and, if granted, to be allowed to respond to this.
Per e-mail of August 29, 2008, which was addressed directly to the Panel, Complainant submitted a response to the Response. On the same date the Center reminded Complainant of the prohibition contained in the Regulations, Article 14, against direct communications with the Panel. Per e-mail of August 29, 2008 the Panel informed the Center that he has not read Complainant’s e-mail of August 29, 2008 and that he has deleted it (Regulations, Article 10.3 and 14). By e-mail of September 2, 2008 Complainant reminded the Center that it has requested to file an additional statement and exhibits. The Panel denies this request, as further explained in section 6 below.
4. Factual Background
Complainant is a limited liability company, incorporated in Curacao, Netherlands Antilles, on October 30, 2000, and with its principal office in Curacao.
Respondent is a citizen of Ukraine.
On March 24, 2006 Respondent has applied for an Ukrainian trademark registration for “METИHBECT” for classes 6 (including common metals and their alloys), 36 (including insurance) and 42 (industrial analyses and researches), registered on June 15, 2006.
Complainant is the owner of an international trademark registration nr. 915493 for the trademark “METINVEST” registered on November 21, 2006 for classes 1 (including chemicals used in industry), 6 (including common metals and their alloys), and 39 (including transport) - amongst others – valid in the Benelux.
The Domain Name is registered on May 18, 2007.
On October 19, 2007 Complainant applied for a Benelux trademark for the trademark “METINVEST” for classes 35 (including advertising), 36 (including insurances), 42 (including analysis and industrial research) and 45 (legal services). This trademark is not yet registered since opposition has been filed against registration.
5. Parties’ Contentions
The Complainant requests the Panel to decide that he shall become the holder of the Domain Name on the following grounds.
The Domain Name is confusingly similar to the Trademark.
Respondent creates a false impression as to the endorsement of his website, and exploits the Complainant’s reputation in order to attract clients to Respondent’s home page “www.ukrrudprom.ua” and to obtain more hits.
Rights or legitimate interests
Respondent has no legitimate interests in the Domain Name. “Metinvest” is an invented word, which Respondent has chosen to create an association with Complainant. He has never used the name “Metinvest”, and uses the Domain Name only to divert internet users to Respondent’s home page, a news site focusing on the mining, iron-ore and steel industry in the Ukraine.
Respondent does not use the Domain Name for the bona fide offering of goods and services.
Complainant enjoys a worldwide reputation under the Trademark, which is used to cover the entire activity of Complainant in the mining and metals industry.
Respondent could not have ignored the Trademark, all the more as Respondent’s news site is specialized in the mining industry in Ukraine, where Complainant is the leading company in that field.
Respondent has squatted more domain names, for instance www.leman.ua, incorporating part of the trademark Leman Commodities, which belongs to Complainant’s group. Also this domain name is redirected to Respondent’s home page.
The Respondent requests the Panel to decide that the Complaint shall be denied on the following grounds.
Likelihood of confusion
The activities of Respondent are entirely different to the goods and services Complainant’s trademark is registered for. Hence, there can be no likelihood of confusion. Complainant has no international reputation in the metallurgical or mining industry. The links presented by Google have no relation to the Complainant.
Any associations with Complainant are not possible, because Complainant is an unknown enterprise without any visible activity. It is untrue that Complainant is the leading company in the mining industry in Ukraine.
Rights or legitimate interests
Since 2004, Respondent operates a news site “www.ukrrudprom.ua” covering news about the metallurgical and mining industries of Ukraine and other countries. This is not a commercial enterprise. Respondent’s website contains no commercial advertising.
“METИHBECT” is a usual short name in Russian combining “metal” and “invest”, which is widely used in the countries of former USSR. There are many domain names comprising just “metinvest” that belongs to other parties than Complainant, which shows that this word is widely used by individuals and institutions not related to each other.
After having carried out an international trademark search in March 2006 and no similar trademarks have been found, on June 15, 2006 Respondent had obtained the Ukrainian trademark registration “METИHBECT” (for classes 6 (including alloys of common metal), 36 (including insurance) and 42 (including industrial analysis and researches).
Respondent’s Ukrainian trademark has seniority over Complainant’s international trademark registration.
After June 2006, Respondent considered the creation of a similar international website devoted to the metallurgical industry in Europe. For this project Respondent registered the Domain Name. This website is still in preparation and until it is ready, internet users are redirected to “www.ukrrudprom.ua”.
Before June 2006, Complainant did not use the Trademark in Ukraine and other countries.
At the time of registering the Domain Name, Respondent was not aware of the existence of Complainant.
The fact that Respondent has registered the domain name “www.leman.ua” is not relevant for this matter. Besides, the company Leman has no relation to Complainant.
The information on “www.metinvestholding.com” is not in any way related to Complainant.
The Complainant did not try to settle this matter directly with Respondent. Respondent would have “definitely considered” that.
6. Discussion and Findings
Language of the proceedings
According to the Regulations, Article 16, the Panel can decide that the proceedings will be conducted in English. Because Complainant has no knowledge of the Dutch language it requested to conduct these proceedings in English. Respondent did not object to this request and submitted his Response in English as well. The Panel therefore decides that these proceedings will be conducted in English.
Legal grounds for transfer
In order for Complainant to obtain transfer of the Domain Name – as far as relevant for these proceedings – it must prove (Regulations Article 2.1) that:
“(a) a domain name is identical or confusingly similar to:
I. a trademark, or trade name, protected under Dutch law in which the
complainant has rights;
II. a personal name registered in a Dutch municipal register of persons
(‘gemeentelijke basisadministratie’), or a name of a Dutch public legal entity or a name of an association or foundation located in the Netherlands under which complainant undertakes public activities on a permanent basis; and
(b) the domain name holder has no rights to or legitimate interests in the domain name; and
(c) the domain name has been registered or is being used in bad faith.”
A. Identical or Confusingly Similar
Complainant has not invoked any trade name which is protected under Dutch law. Complainant has exclusively relied on its trademark registration and trademark application.
Complainant has shown that it has one trademark registration for “Metinvest” which is protected under Dutch law. This is the international trademark registration nr. 915493 dated November 21, 2006 for classes 1 (including chemicals used in industry), 6 (including common metals and their alloys) and 39 (including transport) which is valid for the Benelux as well.
Complainant’s Benelux trademark application for the word METINVEST cannot be relied upon since it has not yet been registered (Benelux Treaty for Intellectual Property, Article 2.19 (1)).
There is no question for purposes of the Regulations, Article 2.1 sub a, that the Domain Name is identical to the Trademark.
In addition the Panel observes that both Respondents’ news site to which the Domain Name is currently linked (covering developments in the Ukrainian mining industry) and Respondent’s international website, which Respondent alleges to have under preparation and which will cover news on the European mining industry, are at least related to the goods in class 6 for which Complainant has registered the Trademark. Therefore, the Panel finds it sufficiently likely that the relevant public which is interested in the mining industry may assume that there is a certain relationship with Complainant, e.g. one of endorsement or sponsorship.
B. Rights or Legitimate Interests
Pursuant to the Regulations, Article 3.1, Respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:
“(a) before having any notice of the dispute, the domain name holder made 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;
(b) the domain name holder as an individual, business or other organisation is commonly known by the domain name;
(c) the domain name holder is making a legitimate noncommercial use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish or otherwise damage the relevant trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation located in the Netherlands.”
In this respect Respondent has asserted that:
(a) his activities are non-commercial;
(b) at the time of registration of the Domain Name he was unaware of Complainant;
(c) the name “metinvest” is commonly used in connection with the mining industry in the countries of the former USSR;
(d) the name “metinvest” is not exclusively related to Complainant, given that there are other parties using “metinvest” also in there domain names, in which respect Respondent refers for example to the Russian company “Metalloinvest” that uses the domain name “metinvest.ru” and “metinvest.com”;
(e) none of the Google-references to “metinvest” relate to Complainant;
(f) he has the Ukrainian trademark registration for “METИHBECT” dated 15 June 2006, which has seniority over Complainant’s international trademark registration dated November 21, 2006;
(g) after that, he conducted preparations to launch a news site on the European metallurgical industry, which Respondent attempts to demonstrate by a 1-page contract with a website designer dated December 21, 2006 and a couple of print outs of the website’s design;
(h) partly due to under-performance of the designer group hired by Respondent, the preparations have been delayed and until the website will be put into operation internet users are redirected to “www.ukrrudprom.ua”.
The Panel is unable to conclude from these assertions whether or not Respondent has a legitimate interest in the Domain Name. To enable such a conclusion additional fact finding would be required, as far as relevant here in particular as to whether:
- Respondent’s activities indeed are non-commercial (the fact that Respondent has registered the Ukrainian trademark seems to suggest that Respondent intends to use the Domain Name in the course of trade);
- Respondent indeed made preparations to use the Domain Name in a bona fide manner (e.g., the Panel is unable to assess whether the 1-page contract indeed is an existing contract and the Panel is unable to assess what the date is of the print outs for the website’s).
However, taken into account that the objective of the Regulations, like the Uniform Domain Name Dispute Resolution Policy (UDRP), is to address in a time and cost effective manner, disputes arising from the abusive registration of domain names where the registrant is seeking to profit from a trademark of a third party (see e.g. Match, LP v. Bill Zag, WIPO Case No. D2004-0230), too many unresolved questions remain for the Panel to be able conclude that Respondent has no rights or legitimate interests. In addition, the fact the Respondent’s Ukrainian trademark registration “METИHBECT” appears to have seniority over Complainant’s international trademark registration for “Metinvest”, reinforces the Panel’s impossibility to grant the Complaint on the present record.
C. Registered or Used in Bad Faith
According to the Regulations, Article 3.2, any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of the domain name in bad faith:
“(a) the domain name has been registered or acquired primarily for the purpose of selling, renting or transferring it to the complainant or to the complainant’s competitors for valuable consideration in excess of the cost of registration;
(b) the domain name has been registered in order to prevent the complainant from using it;
(c) the domain name has been registered primarily for the purpose of disrupting the complainant's activities;
(d) the domain name has been or is being used for commercial gain, by attracting internet users to a website or other on-line location of the domain name holder through the likelihood of confusion which may arise with the trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation located in the Netherlands as to, for example, the source, sponsorship, affiliation or endorsement of the website or other on-line location(s) of the domain name holder or of products or services on the domain holder's website or another online location.”
Complainant has not contended that any of the above grounds have been fulfilled.
With a view to the Respondent’s assertion b through f in 6 above, the Panel is unable to conclude that the Domain Name has been registered or used in bad faith.
As to bad faith of Respondent, too many questions remain unresolved for the Panel to conclude affermatively, in particular as to:
- whether Complainant indeed has been a well known player in the Ukrainian mining industry under the name “Metinvest” before June 2006 (the Complainant has not submitted any evidence to this effect);
- if so, why Complainant has registered “Metinvest” as a trademark in numerous countries, but not in Ukraine;
- whether there is any relevant legal relationship between Metinvest Holding, LLC (as the Panel understands a Swiss company) which issued the press release mentioned in the Complaint;
- whether there is any relevant legal relationship between Complainant and the various Google-references to “metinvest” (when clicking on these Google-references, the Panel has been unable to establish such relationship);
- whether the name “metinvest” is commonly used in the former countries of the former USSR, as indeed the domain names <metinvest.ru> and <metinvest.com> used by the Russian company “Mettaloninvest” seem to indicate.
Again, given the overall purpose of the Regulations as stated above, these unresolved questions and the status of Respondent’s Ukrainian trademark registration leave the Panel no other option but on balance to deny the Complaint.
Complainant’s request for an additional submission
The Panel denies Complainant’s request to submit a response to the Response for the following reasons:
(a) under the Regulations the procedure in principle consists of a complaint and a response followed by a decision. The nature of this procedure in principle does not allow for extensive fact finding through for example witness or expert hearings. Hence, a complainant should in principle anticipate that the complaint will be its only possibility to present its arguments and to deliver evidence. For this reason a complainant should try to anticipate possible defenses of a respondent, given that there is fair chance that a respondent will defend itself and will challenge the contentions of complainant;
(b) the Panel appreciates that it may not always be possible to do so, for example because the defenses are unknown or could not reasonably be expected. However, this problem might be remedied somewhat by first trying to settle the dispute which normally would lead to communications between the parties, which may well shed a light on the arguments of the domain name registrant or his motives. Although there is no obligation for a complainant to try to settle a case prior to initiating proceedings under the Regulations, the consequence of that may be that the defenses remain unknown when submitting the complaint;
(c) in this particular case it is relevant moreover that according to Complainant the bad faith of Respondent – a citizen of Ukraine – would follow from the fact that Complainant is a well known player in the Ukrainian mining industry. It would have been logical therefore for Complainant to have already supplied evidence of this material fact in the Complaint;
(d) finally, in light of the overall purpose and framework of the Regulations for a Panel to issue the transfer of abusive domain name registrations, there should be no reasonable doubt as to the absence of rights or legitimate interests or the existence of bad faith. If, as in this case, the contentions of parties require significant additional evidence, for example through witness and/or expert hearings, civil court proceedings are more appropriate and better equipped than the present procedure.
For all the foregoing reasons, the Panel denies the Complaint.
Date: September 19, 2008