WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Limited Liability Company Infomedia v. c/o Office-Mail processing center / Whois privacy services, provided by DomainProtect LLC / 1) Eurofirm Ltd. 2) Ethno Share PO, Domain Manager
Case No. D2010-1239
1. The Parties
The Complainant is Limited Liability Company Infomedia of Kyiv, Ukraine, represented internally.
The Respondent is c/o Office-Mail processing center / Whois privacy services, provided by DomainProtect LLC / 1) Eurofirm Ltd. 2) Ethno Share PO, Domain Manager of Saint Petersburg, Russian Federation, represented internally.
2. The Domain Name and Registrar
The Disputed Domain Name <ethno.com> is registered with DomReg Ltd. d/b/a LIBRIS.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2010. On July 27, 2010, the Center transmitted by email to DomReg Ltd. d/b/a LIBRIS.com a request for registrar verification in connection with the Disputed Domain Name. On August 3, 2010, DomReg Ltd. d/b/a LIBRIS.com 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 August 10, 2010, 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 August 12, 2010. 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 Respondent of the Complaint, and the proceedings commenced August 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response September 6, 2010. The Response was filed with the Center September 6, 2010.
The Center appointed Alistair Payne, Natasha Lisman and Christos A. Theodoulou as panelists in this matter on October 14, 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. Language of the Proceedings
Although the registration agreement for the disputed domain name is in Russian, the Complainant requested that these proceedings be held in the English language and the Respondent has filed the Response in the English language and has not objected to this approach. Therefore, pursuant to its authority under paragraph 11(a) of the Rules, the Panel orders that these proceedings should be carried on in the English language.
5. Factual Background
The Complainant, a Ukrainian-based web services company, owns registered trademark 388015 in the Russian Federation for a combined device and word mark which features the word “ethno” and which is dated June 26, 2006. Since October 1, 2008, the Complainant has also been the licensee of rights to an equivalent trademark registration 96651 in the Ukraine which is owned by a director of the Complainant.
The Disputed Domain Name was registered on September 26, 2000.
6. Parties’ Contentions
The Complainant submits that it owns registered trademark 388015 in the Russian Federation for ETHNO and also owns equivalent rights in the Ukraine by virtue of a licensing arrangement. In addition it says that it has been using its ETHNO trademark in the Russian Federation and the Ukraine since at least June 2008 and has provided by way of evidence the details of two bank transfers which it alleges relate to work that it has undertaken in the Russian and Ukrainian information technology markets under its trademark developing websites, providing hosting services and selling ssl certificates. The Complainant also submits that it owns a number of domain names incorporating its ETHNO trademark, including, <ethnostyling.com>, <ethnohosting.com>, <ethnosat.com> and <ethnoservice.com> amongst others. The Complainant submits that the Disputed Domain Name is identical to its ETHNO trademark.
The Complainant further submits that the Respondent is not a legal entity or a person and has made various efforts to conceal its identity. It also says that the Respondent has owned the Disputed Domain Name for 9 years but has never used it and continues to make no use of it up to the date of filing the Complaint and only after receiving the Complaint has it attempted to put up content on the website to which the Disputed Domain Name resolves. It says that the Respondent is not known as “ethno” nor as “ethno.com” and neither is it making use of the Disputed Domain Name for a legitimate criticism site or for some other fair use purpose.
As far as bad faith is concerned the Complainant says that in holding the Disputed Domain Name passively the Respondent has acted in bad faith. It also says that the Respondent has offered the Disputed Domain Name for sale for consideration well in excess of the out-of-pocket costs involved in its acquisition. The Complainant points to a Sedo parking site page advertising the Disputed Domain Name for sale and to the Respondent’s response to the Complainant’s letter proposing to buy the Disputed Domain Name.
The Respondent’s main argument is that its registration of the Disputed Domain Name predated the filing date of the Complainant’s trademark and the incorporation of the Complainant’s organization by at least 6 years. Accordingly it could not have registered the Disputed Domain Name in bad faith.
The Respondent submits that it has never offered the Disputed Domain Name for sale and would certainly not sell it for “up to $10,000” as the Complainant has suggested. The Respondent says that it has been developing a plan over many years to use this valuable domain name for a series of business projects relating to ethnic groups which requires substantial investment. The Respondent goes on to say that the offer made to the Complainant was made by its domain name management agent without authorization and that it had no control over the automatic inclusion of the Disputed Domain Name as a domain name potentially for sale on the Sedo parking page.
The Respondent says that it has never acted in bad faith and in particular has never knowingly used the Disputed Domain Name to resolve to a parking site, has never made any reference to the Complainant’s websites or goods, has never been merely “bait” for users who were otherwise looking for the Complainant’s site and has never included links referring to sites of the Complainant or its competitors. Finally, it submits that the Complaint is an example of reverse domain name hijacking in an attempt by the Complainant to legitimize its trademark rights.
7. Discussion and Findings
The Panel has discretion under the Policy whether to accept supplemental submissions which were filed late. In this case the Panel sees no need to consider the supplemental submissions of the Complainant dated September 16, 2010 nor the Respondent’s response to this filing dated September 22, 2010.
The Panel further notes that it is satisfied with the Registrar’s confirmation of ownership of the Disputed Domain Name and to proceed on the basis of the Complainant’s Complaint and amendment to the Complaint and the Response filed by the Respondent to that document.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns a registered trademark in the Russian Federation which comprises a prominent propeller-like device element and the word mark ETHNO underneath it. The Ukrainian trademark for which it has obtained license is in identical form. The Complainant does not have a plain word mark registration for ETHNO and has put no evidence of usage rights in ETHNO as an independent word mark before the Panel. Therefore the Panel must consider whether the Disputed Domain Name is confusingly similar to the Complainant’s combined device and word mark.
While panel approaches in assessing confusing similarity between a domain name and a trademark comprising a combination device and word mark can vary, certain commonalities are apparent to this Panel. These include where a combination trademark features a prominent design with a commonly used or generic word beside it, making a literal comparison of the trademark and the relevant domain name, considering the overall impression given by the mark, taking into account as appropriate the strength of the word mark element which is being directly compared with the domain name and considering the relevant prominence of the word mark element in the context of the overall impression given by the trademark. In other instances, particularly where the word component of the relevant mark has not been disclaimed as such, panels have found it appropriate to disregard the device element, and limited the comparison to one between the textual component of the relevant mark and the alphanumeric string in the disputed domain name. This is usually said to be because such disregarded device element is generally incapable of representation in a domain name, or because the word component of the combined mark may still have some distinguishing value sufficient to convey standing rights for the purpose of the Policy or because all components of the relevant mark capable of incorporation in a domain name have been so incorporated. See e.g. RUGGEDCOM, Inc. v. James Krachefels, WIPO Case No. D2009-0130. However, the latter approach may be less common in cases in which the device element forms a particularly prominent part of the relevant trademark, and the word element is a common or dictionary term. Indeed, in cases where the word element is a common or dictionary term and not inherently distinctive, panels have noted that there may be an onus on the complainant to present the panel with compelling evidence of secondary meaning and distinctiveness through extensive use. See e.g. Dreamstar Cash S.L. v. Brad Klarkson, WIPO Case No. D2007-1943.
In this case the Complainant’s registered trademark is comprised of a prominent visual design which features below it the word “ethno”. The Panel considers that “ethno” is a Greek word that is commonly used as a prefix in the English language referring to the study and development of groups of people. Although it could be argued that “ethno” is less common as a stand-alone word in English, and the Panel does not exclude the possibility that it may be capable of distinguishing information technology services provided in the Russian and Ukrainian markets, there is no evidence before the Panel of acquired distinctiveness in relation to the Complainant’s goods and services.
While it is a prominent element in the combined trademark, in this Panel’s view the word “ethno” is no more prominent than the propeller-like device element, which the Panel notes does not conjure up any particular association with the common meaning of the term “ethno" as defined above. Considering these factors together, taking into account the Panel’s overall impression of the trademark, its assessment that the Complainant’s trademark is not even close to being a word mark registration for ETHNO or even a fancy stylized version of the word mark, and that the combined trademark evokes more than the word alone, the Panel does not on balance find that the Disputed Domain Name is confusingly similar to the Complainant’s trademark.
The Panel considers this approach and the resultant decision not to find confusing similarity in these circumstances is broadly consistent with panel decisions in cases such as Cream Holdings Limited v. National Internet Source, Inc., WIPO Case No. 2001-0964; Deutsche Post AG v N.J. Domains, WIPO Case No. D2006-001; and Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279. In those cases domain names comprising the word elements “cream”, “Post” and “Paris” were found not to be confusingly similar to combined device and word marks respectively featuring each of these word elements. Although the prefix or word “ethno” may be said to differ in some material respects from ubiquitous terms such as “post” or “cream”, and widely-recognizable geographic terms such as “Paris”, this Panel nevertheless considers there to be insufficient evidence of acquired distinctiveness on the present record to enable a finding of confusing similarity under the Policy.
As a result the Panel finds that the Complaint fails in relation to the first element of the Policy. Although it is not required to proceed to consider the other elements of the Policy the Panel notes that even had it not reached this conclusion in relation to the first element it would have denied the Complaint on the basis of its findings under element 3 (Bad faith) of the Policy, as described below.
B. Registered and Used in Bad Faith
It is an acknowledged requirement of element 3 of the Policy that the Disputed Domain Name must be both registered and used in bad faith. In this case the Respondent registered the Disputed Domain Name at least 6 years prior to the commencement of the Complainant’s organization and even longer prior to registration of the Complainant’s registered trademark in the Russian Federation or its acquisition of license rights to the Ukrainian trademark.
The Disputed Domain Name is generic in nature comprising as it does a commonly used term. The Respondent does not appear to compete with the Complainant in the same area of business and there is no evidence before the Panel to suggest that the Respondent subsequently used the Disputed Domain name in bad faith in a way which fulfills any of the requirements under paragraph 4(b) of the Policy. Accordingly, the Complainant has failed to demonstrate that the Respondent registered the Disputed Domain Name in bad faith and therefore also fails in relation to element 3 of the Policy.
For all the foregoing reasons, the Complaint is denied.
Christos A. Theodoulou
Dated: October 27, 2010