WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alexey Kistenev v. Domains by Proxy, Inc. / Craig Pratka
Case No. D2010-1803
1. The Parties
The Complainant is Alexey Kistenev of Tomsk, Sovetskaya, Russian Federation.
The Respondent is Domains by Proxy, Inc. / Craig Pratka of Yaphank, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <torrentreactor.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2010. On October 26, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 27, 2010, GoDaddy.com, Inc. 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 28, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant did not file an amendment to the Complaint. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2010. A formal Response was not filed by the Respondent, however, the Respondent communicated with the Center on November 17, 2010 requesting a three member panel. The Center replied on November 18, 2010, reminding the Respondent that the Response was due on November 24, 2010, and advising the Respondent of his right to nominate a prospective panelist. On November 24, 2010 the Respondent designated five individuals as prospective panelists.
The Center appointed Luca Barbero, Ik-Hyun Seo and Richard G. Lyon as panelists in this matter on December 29, 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 an individual who operates the web site under <torrentreactor.net>, originally registered on October 20, 2003. The Complainant's site <torrentreactor.net> provides software and services designed to help users locate and download torrent files (files based on a peer-to-peer file sharing protocol initially developed by BitTorrent), including copyrighted works such as copies of software, movies, music, television shows, etc.
The disputed domain name was originally registered on June 16, 2003.
The Complainant was unsuccessful in a prior UDRP proceeding (Alexey Kistenev v. Jinsu Kim, WIPO Case No. D2008-1870) concerning the disputed domain name involving a different respondent. The Panel who rendered the decision in the prior case, also one of the Panelists in the present case, denied the Complaint finding that the Complainant failed to prove the ownership of any trademark rights in the disputed domain name but noting that, should the Complainant have subsequently obtained the required rights in the claimed TORRENTREACTOR mark, the Complainant could have been able to re-file a Complaint against the same respondent provided the relevant re-filing criteria were met.
The Complainant filed, through his company Darton Software Corporation, a United States trademark application for TORRENTREACTOR on April 27, 2009, claiming a first use in commerce on June 16, 2003, and obtained a valid trademark registration (No. 3801934) on June 15, 2010, in class 42.
The disputed domain name was registered in the name of the Respondent after the decision issued in the prior UDRP proceeding, dated March 2, 2009, and may have occurred on December 30, 2009, which is the date on which the disputed domain name was, according to the WhoIs data base, last updated.
5. Parties’ Contentions
The Complainant points out that the disputed domain name is identical to its trademark TORRENTREACTOR.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is not offering any goods or services under a name corresponding to the disputed domain name, that the Respondent is not commonly known by the disputed domain name as an individual, business or other organization and that the Respondent is not making a fair use of the disputed domain name, which is simply redirected to another web site under the domain name <allcontentaccess.com>.
With reference to the circumstances evidencing bad faith, the Complainant points out that its web site <torrentreactor.net> has been available online for many years and has grown to be in the “top 1000” sites according to the traffic rank provided by the web information company Alexa.
The Complainant highlights that users intending to access the Complainant’s web site may unintentionally enter a different Top Level Domain and accordingly visit the Respondent’s site. The Complainant also states that the Respondent is intentionally attempting to attract Internet users to his web site for commercial gain, since the web site associated with the disputed domain name is redirected and urges visitors to pay money in order to access its database.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a 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”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
As preliminary issue, the disputed domain name has been the subject of a previous complaint brought by the Complainant against another registrant.
It is now generally accepted that a transfer of a domain name from one registrant to another constitutes a new registration for purposes of paragraph 4(a)(i) of the Policy, at least for purposes of setting the dates on which registration in bad faith and rights or legitimate interest are to be calculated. See, e.g., ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., WIPO Case No. D2009-0785; BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, WIPO Case No. D2008-0882.
Therefore, since the Respondent in the present proceeding is a different individual, the Panel finds that the Complainant is not required to meet the stringent conditions for re-filing a case, because the Panel is examining a different case.
A. Identical or Confusingly Similar
The Complainant, who was unsuccessful in the prior case involving the disputed domain name due to the lack of evidence of trademark rights for TORRENTREACTOR, has wisely followed the suggestions of the Panelist in the earlier decision, filing and obtaining a U.S. trademark registration corresponding to the disputed domain name.
In comparing the Complainant’s marks to the disputed domain name with reference to TORRENTREACTOR, it should be taken 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 i.a. 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”; and Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770: “the accused domain name <chevychasebank.org> is legally identical to [c]omplainant’s trade name CHEVY CHASE BANK”.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical to the trademark 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 Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the disputed 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 the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of evidence on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed 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. 852581).
In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name, has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the disputed domain name.
The Panel notes that, as indicated by the Complainant, an Internet user who enters the disputed domain name into his browser is immediately diverted to another web site, “www.allcontentaccess.com”, which apparently offers services similar to the ones of the Complainant. The Panel finds that under the circumstances such use of the disputed domain name does not constitute a legitimate, noncommercial use of the disputed domain name under the Policy.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 the holder’s website or location or of a product or service on the holder’s website or location.
In view of the fact that the disputed domain name is identical to the earlier Complainant’s trademark TORRENTREACTOR, which is constituted by an unusual combination of the words “torrent” and “reactor”, and of the prior domain name <torrentreactor.net> registered and used by the Complainant, it can be reasonably inferred that the registration of the disputed domain name in the name of the Respondent was accomplished with the Respondent’s knowledge of the Complainant and of his web site.
Moreover, since the Respondent is pointing the disputed domain name to the web site “www.allcontentaccess.com”, where apparently competitive services with those of the Complainant are offered, it is also reasonable to infer that the Respondent targeted the Complainant with the intent to take advantage of the Complainant’s mark and to divert users to its own web site.
The Panel, therefore, finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent is attempting to attract Internet users to its web site for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s services.
As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response in this case. The sole communication sent by the Respondent to the Center was aimed at electing a three-member panel. Afterwards, no Response was filed by the Respondent. Therefore, in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146, “it is open for the [p]anel to infer a prima facie case of bad faith registration. The [p]anel also notes that the [r]espondent has used the present domain name in a commercial website. The evidence before the [p]anel indicates that the [r]espondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the [r]espondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
In view of the above, the Panel finds that the disputed domain name was registered by the Respondent and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <torrentreactor.com> be transferred to the Complainant.
Richard G. Lyon
Dated: January 12, 2011