WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Promat GmbH v. Whois privacy services, provided by DomainProtect/ ProMat, MatLab Group; Mailadmin Ltd.; OOO “InternetCo”; Promat PO; and Domain Admin, Case No. D2010-0990
1. The Parties
The Complainant is Promat GmbH of Ratingen, Germany, represented by v. Boetticher Hasse Lohmann, Germany.
The Respondents are ProMat, MatLab Group; Mailadmin Ltd.; OOO “InternetCo”; Promat PO; and Domain Admin, all of St. Petersburg, Russian Federation.
2. The Domain Name and Registrar
The Domain Name <promat.com> is registered with DomReg Ltd. d/b/a LIBRIS.com.
3. Procedural History
The Complaint, naming ProMat, Mat Lab Group of St. Petersburg, Russian Federation as the Respondent, was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2010. On June 16, 2010, the Center transmitted by email to DomReg Ltd. d/b/a LIBRIS.com a request for registrar verification in connection with the Domain Name. On June 18, 2010, DomReg Ltd. d/b/a LIBRIS.com transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 29, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
On the same date, the Center addressed an email communication to the Complainant advising that the language of the registration agreement is Russian and inviting the Complainant to submit a translation of the Complaint in Russian or, alternatively, statements and evidence supporting the request for English to be the language of the proceeding. The Complainant filed an amendment to the Complaint on July 2, 2010, in which it named five Respondents: ProMat, MatLab Group; Mailadmin Ltd.; OOO “InternetCo”; Promat PO; and Domain Admin, all of St. Petersburg, Russian Federation. In addition, the amendment to the Complaint requested that the language of the proceeding be English. The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced July 5, 2010. In the same communication, the Center invited the Respondents to submit comments on the language of the proceedings. In accordance with the Rules, paragraph 5(a), the due date set for Response was July 25, 2010.
On July 23, 2010, the Center received three responses: one on behalf InternetCo, submitted by Peter Maximov; the second on behalf of Mailadmin Ltd., submitted by Alexey Smirnov; and the third on behalf of Promat PO, submitted by Valentina Makarova.
On August 10, 2010, the Complainant submitted an unsolicited Supplemental filing in reply to the Respondent’s Response and, on August 16, 2010, an unidentified Respondent sent an email communication to the Center requesting that the Complainant’s Supplemental filing not be entered into the case record and urging the Panel to specifically address the procedural issue of unsolicited Supplemental filings.
The Center appointed Luca Barbero, Natasha Lisman and David E. Sorkin as panelists in this matter on September 22, 2010. The Panel finds that it was properly constituted. Each member of 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 Promat GmbH, a fully owned subsidiary of Promat International N.V. and part of the Etex group of companies. The Complainant is the owner of trademark registrations for PROMAT in more than 120 countries of the world, including the following International registrations, duly extended to the Russian Federation: Nos. 424653 of July 16, 1976, in classes 17 and 19; 623137 of April 30, 1994, in classes 2, 17 and 19; 707587 of October 9, 1998, in classes 1, 2, 17, 19 and 42; and 707588 of October 9, 1998, in classes 1, 2, 17, 19 and 42.
The Complainant is furthermore the registrant of numerous domain names consisting of or including the mark PROMAT, such as <promat.eu>; <promat.biz>, <promat.co.uk> and <promat.ru>.
Respondent Mailadmin registered the Domain Name <promat.com> on August 9, 2000. In its response to the Center of July 18, 2010, the Registrar identified the domain as a “shared ownership domain” with three principals: OOO InternetCo; Mailadmin Ltd (lead manager of the project); and Promat PO.
5. Parties’ Contentions
The Complainant points out that Promat GmbH produces and distributes high quality products for passive fire protection and high temperature insulation worldwide under the trademark PROMAT since 1958, being present, today, in more than 34 countries around the world. The Complainant highlights that the sales of PROMAT products worldwide amounted to 124 million Euro in 1999 and raised to 319 million Euro in 2009. The Complainant informs the Panel that PROMAT products are distributed in Russia through the Complainant’s local sales department in Moscow, with an annual turnover of 3.6 million Euro in 2009, as per the Affidavit of the Managing Director of Promat GmbH attached to the Complaint.
The Complainant states that also the trade name Promat is protected in Russia under Art. 8 of the Paris Convention, as it has been used in Russia for several years.
The Complainant contends that Domain Name <promat.com> is identical to the trademark PROMAT in which Complainant has rights as it reproduces the trademark in its entirety.
With reference to rights or legitimate interests in respect of the Domain Name, the Complainant states that the Respondent has not been commonly known by the name Promat, cannot show any rights prior to those of the Complainant regarding such term and has never been granted by the Complainant any rights to use its PROMAT trademarks. The Complainant also states that the Respondents are not making a legitimate non-commercial or fair use of the Domain Name and that, in view of the Complainant’s numerous trademark registrations and of the fame, goodwill and notoriety associated with PROMAT trademarks, it is impossible to conceive of a circumstance in which the Respondents could legitimately use the Domain Name.
The Complainant contends that the Respondents are not using or preparing to use the Domain Name in connection with a bona fide offering of goods and services, that the Respondents have no apparent connection with the Domain Name and that the Respondents formerly indicated as owners of the Domain Name the companies "ProMat Matlab Group" and "Promat Servicepoint" with the sole purpose to evoke the wrong impression of an entitlement to use the Domain Name. According to the Complainant’s search through a database on international business information, no company with named Promat were found in St. Petersburg.
With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondents registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondents’ out-of-pocket costs directly related to the Domain Name.
The Complainant points out that the Respondents deliberately attempted to cover up their true identity, since the Domain Name was registered, as of December 16, 2008, in the name of Promat Servicepoint, with the postal address p.o. box 544, 197046 St. Petersburg, and then registered in the name of the PrivacyID-Service provided by the company DomainProtect LLC.
The Complainant points out that the Respondents are connected to “a group of fictitious firms located in the area of St. Petersburg, which hold a number of ".com"-domains and are regularly respondents in domain grabbing infringement proceedings and that the website www.promat.com only contains a wild card text in Russian language, advertising a business model named "sharebusiness.com". According to the information available on the web site “www.sharebusiness.com”, the project was run in the past by a company named “Mailadmin Ltd”, and is now conducted by the company “FirmaOnline Ltd”. The Complainant states that the mentioned companies do not evoke any genuine Russian trade or service and were Respondents in the WIPO proceedings, including Argenta Spaarbank NV v. Argenta and Mailadmin Ltd., WIPO Case No. D2009-0249 (argenta.com), and Isoterm AS v. BusinessService Ltd. and FirmaOnline Ltd, WIPO Case No. D2009-1376 (<isoterm.com>).
The Complainant emphasizes that the Respondents claim to offer inter alia services in regard to trademark registration and protection and to work out business concepts for enterprises and websites, while in reality they register a large number of domains composed of well-known trademarks, protected in favor of a third party, some of which have been offered for sale for thousands of Euro.
As to the Respondents’ awareness of the Complainant’s prior rights, the Complainant states that, since the originally named Respondent, ProMat, Matlab Group, boasts of using professional search engines and "run[ning] express-checks to see that our partners haven't registered already known trade marks”, and having employees and partners which "are qualified legal advisers", it can reasonably be inferred that they were fully aware of the Complainant’s prior rights in the trademark PROMAT at the time of registering the Domain Name, in light of Complainant's worldwide business activities, especially in Russia, under the designation Promat.
All three Respondents which submitted responses conceded that they do not dispute that the Domain Name is identical to Complainant’s trademark.
Respondent Mailadmin Ltd (“Mailadmin”) challenges the Complainant’s other contentions and states that it is the owner of a Russian trademark Registration for PROMAT since 2002. Furthermore, it asserts that both “Promat Matlab Group” and “Promat Servicepoint”, which were indicated as owners of the Domain Name in the past, were unregistered simple partnerships. Mailadmin points out that it has a legitimate interest in the Domain Name as it aims to “capitalize on the public and academic interest to the obscene swear words in the Russia multicultural tradition” under the URL http//vse.promat.com and that it is also “planning to publish at his site “www.vse-promat.com” the monthly books of anecdotes and funny stories in which the obscene lexicon is substituted by the grammar equivalents, in order to show that folklore texts can be commercially successful and attractive even without spoiling the Russian language with the swear words”. Among the Russian language exhibits submitted with Mailadmin’s response is a business plan, certified by the General Director of Mailadmin and dated January 1, 2009, for a project entitled “ПРОМАТ (PROMAT)”. This document names A. Smirnov as the project manager.
Mailadmin also states that it is developing several projects, including the use of the Domain Name in the form of establishing email address and for rendering the FTP services, and it is also planning to allow a Russian company named Promat to use as an administrator the sub-domain at spb.domain.com. Mailadmin denies that the Domain Name was registered in bad faith as it was not aware of the Complainant’s trademark. It also denies to have ever offered domain names for sale and states that, even though the Complainant may demonstrate that this Respondent was linked to the domain names, such domain names were corresponding to descriptive terms. Mailadmin also states that there cannot be any likelihood of confusion with the services rendered by the Complainant since Mailadmin’s activity and trademark regard different classes.
Respondents OOO “InternetCo” (“InternetCo”) and Promat PO support the positions expressed by Mailadmin Ltd and both state that they have been provided a license to use the Domain Name by Mailadmin Ltd.
Respondent InternetCo also points out that it is making legitimate use of the Domain Name as it is using the sub-domain so.promat.com - which is intended to mean “sopromat”, a contraction of “Soprotivleniye materialov” [Russian for “material resistance”] – for a scientific project, to offer local academicians and researchers access to the sub-domain, and to test the interest of the public in visiting sites created within sub-domain zones. . It also states that the Complainant has failed to prove that its trademark PROMAT is well-known in Russia and attaches to its Response the result of a telephone survey conducted in June 2010 of 100 randomly selected persons in an unidentified geographic area, only 1% of whom associated the word “promat” («промат») with an international or foreign company. InternetCo concludes that the Respondents were not aware of the existence of the Complainant’s trademark and that the Complainant could not claim for exclusivity of its rights in the mark PROMAT, since at least three other companies named “Promat” were found according to Federal Tax Service of Russian Federation and the Moscow Yellow Pages. In addition, InternetCo asserts a claim of reverse domain name hijacking against the Complainant, basing it primarily on the allegation that the Complainant is trying to tarnish the business reputation of all the Respondents.
The Respondent Promat PO points out that it is an interregional public association created in 2009 which chose not to apply for registration as a legal entity and that it has a legitimate interest in respect of the Domain Name as it set up a virtual forum at folks.promat.com aiming to keep alive a community of people of St.Petersburg or Leningrad. Among Promat PO’s exhibits are the minutes of its organizational meeting of December 9, 2009, which identify A. Smirnov as a founding member and describe the organization’s mission as “creation of favorable conditions for the cultural and business communication between the Russian and Slovak peoples” by means of, inter alia, the study of the causes and effects of the use of obscenity in the Russian society.” Promat PO denies that it had ever been aware of the existence of the trademark PROMAT before receiving notification of the Complaint. Promat PO also urges the Panel to make a finding of reverse domain name hijacking.
6. Discussion and Findings
The language of proceeding.
Pursuant to Paragraph 11 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the language of WIPO domain name dispute proceedings is typically the language of the relevant domain registration agreement but the Panel has the authority to conduct proceedings in a language other than that of the registration agreement when fairness requires. Thus, in situations where for instance (a) the Complainant would be disadvantaged by proceeding in the language of the registration agreement; (b) the Complainant would be prejudiced by undue expense, delay, or complication; or (c) the Respondent is able to communicate in the Complainant’s language but the Complainant is unable to communicate in the Respondent’s, the Panel may accept the Complainant’s choice of language to ensure fairness and efficiency.
In the case at hand, the Complainant has submitted a request for English to be the language of the proceeding and the Respondents have not opposed the Complainant's request, and, in fact, have replied in English, but for some annexes in Russian. The Panel, therefore, determines that the language of the proceeding be English, without, however, requiring the Respondents to submit translations of any of their Russian-language exhibits.
Unsolicited Supplemental filing
Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case (see, inter alia,, De Dietrich Process Systems v. Kemtron Ireland Ltd., WIPO Case No. D2003-0484, Credit Europe Bank N.V. v. Peter Yu, WIPO Case No. D2010-0737).
According to many UDRP Panel decisions, additional submissions should be, nevertheless, admitted only in exceptional circumstances, such as where they reflect newly discovered evidence not reasonably available to the submitting party at the time of its original submission or to rebut arguments by the opposing party that the submitting party could not reasonably have anticipated.
Since none of the above circumstances are present in the case at hand, the Panel opts not to consider the Supplemental filing of the Complainant.
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of the International registrations for PROMAT Nos. 424653 of July 16, 1976, in classes 17 and 19; 623137 of April 30, 1994, in classes 2, 17 and 19; 707587 of October 9, 1998, in classes 1, 2, 17, 19 and 42; and 707588 of October 9, 1998, in classes 1, 2, 17, 19 and 42.
The Respondents appropriately do not contest that the Domain Name is identical to the mark PROMAT. A comparison of the two should take into account the well-established principle that the generic top level domain may be excluded from consideration as being a merely functional component of a domain name. See inter alia, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 “the specific top level of the domain name such as ‘.net’ or ‘.com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 “the accused domain name <chevychasebank.org> is legally identical to Complainant’s trade name CHEVY CHASE BANK”.
In view of the above, the Panel finds that the Complainant has proven that the Domain Name is identical to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondents have no rights or legitimate interests in respect of the Domain Name. The Respondents may establish a right or legitimate interest in the Domain Name by demonstrating, in accordance with paragraph 4(c) of the Policy, any of the following:
(i) before any notice to the Respondents of the dispute, their 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 Respondents (as individuals, business, or other organization) have been commonly known by the Domain Name, even if they have acquired no trademark or service mark rights; or
(iii) the Respondents are making a legitimate non-commercial 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.
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondents’ rights or legitimate interests in respect of the Domain Name according to paragraph 4(a) (ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with prior UDRP decisions, it is sufficient that the Complainant show a prima facie case that the Respondents lack rights or legitimate interests in the Domain Name in order to shift the burden of production to the Respondents. If the Respondents fail to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).
The Panel finds that the Respondents have failed to provide in the statements and documents submitted, as summarized in the factual section, convincing circumstances and evidences that could demonstrate, pursuant to paragraph 4(c) of the Policy, that they have rights or legitimate interests in the Domain Name.
All three Respondents describe their planned uses of the domain at “promat.com” and its respective sub-domains in terms that are either so general and vague as to be implausible or border on the absurd. Thus, Mailadmin’s business plan sets forth a mission statement for the Promat project that is breathtakingly all-encompassing – “development, integration, and implementation of new technologies directed to the identification and commercialization of in the sphere of oral and written folk and/or professional creativity,” “scientific research in the area of linguistic modelling and neurolinguistic programming,” “economic analysis and development of investment projects connected with the development and implementation of scientific and applied technologies in the sphere of linguistics and mathematical methods of investigating the impact of ethno-cultural components” on the reactions of consumers to advertising,” etc. However, the business plan does not explain the connection of all this multi-faceted activity to the word “promat.” Similarly, Mailadmin’s allegations about other projects it is developing for rendering FTP services are devoid of what those projects have to do with “promat”. Mailadmin connects only one of its many broad-ranging contemplated projects to the word “promat,” which Mailadmin claims to be a contraction of the Russian про мат, which translates to “about swearing” and alleges to be planning to devote one of its sub-domains “to capitaliz[ing] on the public and academic interest to the obscene (swear) words in the Russian multicultural tradition.” At the same time, Respondent Promat PO, co-founded by an executive and representative of Mailadmin, describes the purpose of the Promat project as furthering “the cultural and business relationship between the Russsian and Slovak people by means of, among other things, “the study of … ‘obscene lexicon”. However, Respondent InternetCo, explains the word “promat” not in terms of obscenity, but, rather, a component of the word “сопромат,” which it claims to be a contraction for the Russian “сопротижление материалов» or “material resistance.” The Panel finds that these varying and farfetched explanations strain credulity, as does the suggestion that projects planned in 2009 could explain the choice of a domain name registered in 2000.
The Panel shares the views expressed in Argenta Spaarbank NV v. Argenta, Mailadmin Ltd., supra,involving the Respondent Mailadmin Ltd: “In its Response, Respondent has attempted to describe its business, including in respect of the Domain Name. In the Panel's view, this description is unclear and vague, and is not substantiated by … any reliable and relevant evidence coming from official external sources. […] Taking the above into account, the Panel is of the opinion that Respondent has not really used the Domain Name, and has no serious and legitimate business plans for its use. The evidence in the case file suggests that Respondent has engaged in the speculative registration of domain names, including such that correspond to Community trademarks and to Community trademark applications of third parties. While the good faith registration of generic words for later resale is not per se prohibited by the UDRP, the pattern of registering domain names, corresponding to such trademarks and trademark applications for speculative purposes cannot be regarded as a legitimate activity, giving rise to rights and legitimate interests for the purposes of the Policy. On this basis, the Panel finds that Respondent has failed to prove that it has rights and legitimate interests in the Domain Name”.
In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that the Respondent has registered and is using the Domain Name in bad faith:
(i) circumstances indicating that the Respondents have registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondents 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 the Respondents have engaged in a pattern of such conduct; or
(iii) the Respondents have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
The Panel finds that, in light of the Complainant’s International trademark registrations for PROMAT, duly extended to Russian Federation, since 1976, and of the amount of the Complainant’s sales worldwide, including in Russian Federation, where the Respondents are based, the Respondents were more likely than not aware of the Complainant’s trademark at the time of the registration of the Domain Name.
Since the Respondents are engaged in the speculative registration of domain names, including domain names corresponding to Community trademarks of third parties, the Panel finds that the
Respondents have registered the Domain Name in order to prevent the Complainant from reflecting its trademark in the corresponding Domain Name, being clearly engaged in a pattern of such infringing conduct.
As an additional circumstance evidencing bad faith, the Respondents’ conduct also suggests that a motive for using a domain privacy service in this instance was to increase the difficulty for the trademark owner of identifying the registrant, assessing the merits of a legal claim or Policy complaint, and contacting the registrant. See, along these lines, Advance Magazine Publishers Inc. d/b/a/ Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743.
In view of the above, the Panel finds that the Domain Name was registered and is being used in bad faith.
Due to the Panel’s findings, the request for a finding of Reverse Domain Name Hijacking is denied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <promat.com> be transferred to the Complainant.
David E. Sorkin
Dated: October 22, 2010