WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Conversbank Public Joint Stock Company v. Alexei Vostrikov / none, Alexey Litvin / Vostrykov Alexiy P.
Case No. D2012-1437
1. The Parties
The Complainant is Conversbank Public Joint Stock Company of Kyiv, Ukraine, represented by Andriy S. Parkhomenko, Ukraine.
The Respondent is variously described as Alexei Vostrikov of Riga, Latvia and none, Alexey Litvin of Kyiv, Ukraine and Vostrykov Alexiy P. of Moscow, Russian Federation.
2. The Domain Names and Registrars
The disputed domain names, <conversbank.com> (the “First Domain Name”) and <konversbank.com> (the “Second Domain Name”) (together the “Domain Names”), are registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2012. On July 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 17, 2012, the Registrar transmitted by email to the Center its verification response confirming that “Alexei Vostrikov” is listed as the registrant of the First Domain Name and that “none, Alexey Litvin” is listed as the registrant of the Second Domain Name. The Registrar also provided the contact details for those registrants. The registrant and contact information for the Domain Names differed from the named Respondent and contact information in the Complaint in that the original Complaint identified the registrant of the Domain Names as “Vostrykov Alexiy P of Moscow”.
The Center sent an email communication to the Complainant on July 20, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amendments to the Complaint on July 26, 2012 and July 30, 2012.
The Center verified that the Complaint together with the amended Complaints 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 July 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2012. No formal Response in the prescribed form has been filed, but the Center has received a number of email communications from Alexei Vostrikov, which the Center has forwarded to the Panel and which are set out in full in Section 5B below. Nothing has been heard from the named registrant of the Second Domain Name.
The Center appointed Tony Willoughby as the sole panelist in this matter on August 29, 2012. 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.
Having read the papers in the case, the Panel decided that he needed further information from the parties and on September 3, 2012 issued to the parties a procedural order seeking clarification of a number of matters relating to the history of the Domain Names. Replies to that procedural order were received by the Center on September 5, 2012 (from the Complainant) and on September 6, 2012 (from the Respondent, Alexei Vostrikov).
Those responses will be addressed below in greater detail, but they do enable the Panel to decide a preliminary point, namely whether the Panel should treat the named registrants of the Domain Names as one (notwithstanding their differing names and contact details), thereby enabling the Panel to deal with the Domain Names in the one Complaint (paragraph 3(c) of the Rules).
The Complainant contends that Mr. Vostrikov and Mr. Litvin are one and the same person, inviting the Panel to come to the same conclusion given that Mr. Vostrikov admits that he registered both the Domain Names and claims ownership of both the Domain Names notwithstanding that the Second Domain Name is held in the name of Mr. Litvin (or, to be precise, “none, Alexey Litvin”). Mr. Vostrikov asserts that he does not know who Mr. Litvin is. He states that earlier in the year the Second Domain Name was stolen from him and that he is in discussions with the Registrar in an effort to recover it.
This is a dispute as to fact, which the Panel is unable to resolve on the evidence before him. The Panel simply does not know whether Mr. Vostrikov and Mr. Litvin are one and the same; nor does he know whether Mr. Vostrikov can fairly claim to be the beneficial owner of the Second Domain Name. In the result, the Panel declines to deal with the Second Domain Name in this decision and will proceed to a decision solely in respect of the First Domain Name. Henceforth the Panel will refer to Mr. Vostrikov as the “Respondent”. Moreover, for completeness it should be stated that the responses to the Panel’s procedural order confirm that the Respondent is the same person who is identified in the original Complaint as Vostrykov Alexiy P. of Moscow.
4. Factual Background
The Panel has had some difficulty in deciphering the facts from the papers before him. This stems largely from the fact that while English is the language of these proceedings (and neither party has sought to agree an alternative), English is clearly not the first language of either party, many of the exhibited documents are either in Ukrainian or Russian and to the extent that some of them have been translated, the quality of those translations is, to say the least, variable.
Nonetheless, and in the absence of any challenge from the Respondent, the Panel makes the following factual findings.
The Complainant is a financial institution incorporated in Ukraine. It was incorporated in 2006 under the name of Partner Bank and changed its name to Conversbank in March 2010.
The Respondent registered the First Domain Name on December 3, 1999.
As at November 28, 2004 the First Domain Name was being used by a Russian entity named Conversbank (Cyrillic script) Online (Annex 10 to the Complaint, being a cached page from the Internet Archive WayBackMachine of that date). The exhibited webpage features a Conversbank copyright notice dated “1989-2004”.
On April 8, 2010 the Respondent (using the name “Alex Vostrikov”) registered the Second Domain Name with Network Solutions.
On April 21, 2010 the Complainant filed an application for registration of the mark CONVERSBANK (in device format and in Cyrillic script i.e. KOHBEPCБAHK) in class 36 for a wide variety of financial services at the Ukrainian Trade Mark Registry. The application matured into a registration under number 137489 on April 11, 2011.
As at June 17, 2011 the First Domain Name was being used for a website by a company named KOHBEPCБAHK and featuring a logo replicating the Complainant’s above-mentioned registered trade mark (Annex 11 to the Complaint, being a cached page from the Internet Archive WayBackMachine of that date). The page also features text in either Russian or Ukrainian and a logo of “Convers Group”
On an unidentified date in 2011, the Complainant entered into an undated Labor Agreement with the Respondent for the supply of “consulting services on interbank IT projects” over a three year period. Paragraph 7.5 of the agreement provides that any previous agreements between the parties are null and void on the signing of this agreement.
On April 11, 2012 the First Domain Name was connected to a website featuring the Complainant’s trade mark and a notice reporting that the bank was insolvent and that senior management had stolen money from the bank.
On April 12/13, 2012 a Ukrainian militia major in the investigation department of Solomyanskyi RU GU MVS issued a decree authorizing the initiation of a criminal investigation (against persons unknown) into the hacking of the Complainant’s website (URL not identified) between April 10, 2012 and April 11, 2012 (Annex 7 to the Complaint).
On April 17, 2012 the Registrar sent an email to the Respondent (using the name Alexei Vostrikov and the email address appearing on the Registrar’s WhoIs database for the First Domain Name) thanking him for choosing the Registrar for his domain name registration services and identifying both the Domain Names and a third domain name, <conversbank.org>, which is not complained of in this administrative proceeding.
On April 21, 2012 Network Solutions acknowledged the Respondent’s request that the First Domain Name and the Second Domain Name be transferred from Network Solutions to the Registrar. This acknowledgment was communicated to the Respondent by emails addressed to him at the email address appearing on the Registrar’s WhoIs database for the First Domain Name.
On July 31, 2012 the Domain Names were connected to parking pages featuring advertising links.
5. Parties’ Contentions
The Complainant contends that the First Domain Name is identical or confusingly similar to the Complainant’s CONVERSBANK/KOHBEPCБAHK trade marks, that the Respondent, an IT consultant to the Complainant, registered the First Domain Name with knowledge of the Complainant’s trade mark rights and with the intention of damaging the reputation of the Complainant as evidenced by the <conversbank.com> webpage dated April 11, 2012 and referred to in Section 4 above. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the First Domain Name and registered and is using the First Domain Name in bad faith.
In response to the Panel’s procedural order, the Complainant states that the First Domain Name was registered “in advance of the bank’s renaming by instructions of the bank’s management”. The response continues:
“And as in 1999, awareness in the field of internet and domain security, as well as the level of development of this institution basically, in the Ukraine, was extremely low. So while the site and domain name were normally function instructions about registrations of domain name considered fully execute. In such way it was continue until Mr. Vostrikov didn’t get intention on blackmail and damage the image of the bank as well as its assets. Because the appearance of announcement on the official website of the bank essentially about its bankruptcy and appeal of the bank’s clients for immediate withdrawal of their money, as well as accusation of management of stealing customers’ money is a strong reputational and economic damage.”
In response to the question:
“Is it the Complainant’s contention that Mr. Vostrikov/Vostrykov registered those domain names in December 1999 while acting as an IT consultant to the Complainant? If that is not the Complainant’s contention, who effected those registrations and when were they acquired by Mr. Vostrikov?”
the Complainant stated:
“Domain names were registered on 3rd December 1999, in advance of the renaming of the bank by instructions of the bank’s management. And no data about information did the Mr. Vostrikov make registration himself or not.”
As indicated above, the Respondent has not filed a formal Response, but has sent to the Center the following emails:
July 18, 2012. “Hello there, I would like to know why my domain names has been locked and transferred to a holding account? Best regards, Alexei”
July 19, 2012. “I have a proof of everything: emails/receipts from Network Solutions and Name.com (Credit cards and Paypal). I paid for this domains using my credit cards (my name on the cards). Those domains has been transferred by me from my account at Network Solutions to my account to Name.com. I’ve been using Network Solutions services for 14+ years. In May 2012, my e-mail server has been compromised by Ukrainian hackers*. And almost all of my domains has been stolen. I was able to prove my ownership and Network Solutions & Name.com returned those domain names to me. Let me know if you need any assistance from me. Best regards, Alexei”. [* He identifies Alexey Litvin (named by the Registrar as the registrant of the Second Domain Name) as one of the hackers.]
July 26, 2012. “Hi there, I’ve been thinking about this and I came up with the thought that I don’t really care about those domain names. I do believe that guys who want to take over those domains has much more power and money. Thank you. Best regards, Alexei”
August 16, 2012. The Respondent sent to the Center copies of his email communications in April 2012 with Network Solutions and the Registrar demonstrating that he is the owner of the Domain Names and a third domain name, which is not included in this administrative proceeding, <conversbank.org>.
In response to the Panel’s procedural order the Respondent denies that he registered the First Domain Name on the instructions of the Complainant. He points out that the Complainant was not in existence in 1999. He says that he registered the First Domain Name (and <conversbank.org>) in 1999 on behalf of the management of another Conversbank, a Russian legal entity.
In response to a question relating to the Second Domain Name, he states “I considered registration of domain name <konversbank.com> in my name on 8 April 2010 as logical because them [sic] I have been acting as an IT consultant to Conversbank in Ukraine (existing since January 2010 as mentioned above)”. He then goes on to state that it was stolen from him by Ukrainian hackers and is in discussion with the Registrar with a view to recovering it.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the First Domain Name, the Complainant must prove each of the following, namely that:
(i) The First Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the First Domain Name; and
(iii) The First Domain Name has been registered and is being used in bad faith.
B. Respondent Consent
It could be said that the terms of the Respondent’s email dated July 26, 2012 and reproduced at Section 5B above amount to a consent to transfer the First Domain Name. Certainly, it seems clear that the Respondent has no intention of contesting this proceeding.
Different panels have approached this issue in a variety of ways ranging from a belief that there is no need for the panel to review the elements required to be proved under paragraph 4(a) of the Policy, but simply order transfer, to a belief that it is nonetheless incumbent upon the panel to be satisfied that all the elements of paragraph 4(a) have been proved, if the Complaint is to succeed. This Panel reviewed a number of the cases on the topic in Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320. More recently, the topic has been aired again in Merck KGaA v. c/o whoisproxy.com Ltd / Galib Gahramanov, G Domains, WIPO Case No. D2011-1271 and BT España Compañia de Servicios Globales de Telecomunicaciones, S.A.U. v. Lorraine Harris, Inland trader Ontiyent, S.L., non organization WIPO Case No. D2012-0893.
For the reasons given in Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320 and adopted by the panel in BT España Compañia de Servicios Globales de Telecomunicaciones, S.A.U. v. Lorraine Harris, Inland trader Ontiyent, S.L., non organization WIPO Case No. D2012-0893, this Panel prefers to proceed to a decision as normal and particularly in light of the stricture in paragraph 4(a) of the Policy, “In the administrative proceeding, the complainant MUST [emphasis added] prove that each of these three elements are present.”
In light of the decision below, it is noteworthy that if the Panel had treated this case as a “Respondent Consent” and had adopted the short-cut route favoured by the panel in Merck KGaA v. c/o whoisproxy.com Ltd / Galib Gahramanov, G Domains, WIPO Case No. D2011-1271, the result would have been very different, but not in line with this Panel’s reading of the requirement of paragraph 4(a) of the Policy.
C. Identical or Confusingly Similar
The First Domain Name comprises an anglicised version of the Complainant’s name and trade mark, CONVERSBANK, and the generic top-level “.com” domain suffix. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the suffix.
While the Complainant’s Ukrainian registered trade mark is a device mark, the most prominent element of the device is the CONVERSBANK name, albeit in Cyrillic script (KOHBEPCБAHK). To those familiar with the Roman alphabet and Cyrillic script the Complainant’s name and trade mark will be readily recognizable in the First Domain Name.
The Panel finds that the First Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
The parties appear to be at one in contending that the Respondent registered the First Domain Name on behalf of a “Conversbank”. The parties differ as to the legal entity concerned. The Respondent contends that it was a Russian bank of that name, not the Complainant.
When first reading the papers, the Panel had thought it likely that the First Domain Name had been registered on behalf of a predecessor of the Complainant, but neither the Complaint nor the Complainant’s response to the Panel’s procedural order contains any information of any kind on how (if at all) the Complainant is associated with or has developed out of the Russian company.
Nonetheless, it is plain from the Respondent’s response to the Panel’s procedural order that the Respondent has no rights or legitimate interests in respect of the “Conversbank” name and registered the First Domain Name on behalf of the management of the Russian Bank bearing that name. Indeed, the First Domain Name was then used exclusively by that bank for some years. In July 2012 it was being used to connect to a parking page featuring advertising links.
In such circumstances, the Respondent cannot be said to have any rights or legitimate interests in respect of the First Domain Name.
E. Registered and Used in Bad Faith
As the Panel points out in the first paragraph of section 4 above, the Panel has had some difficulty deciphering the facts from the papers before him.
The difficulties facing the Panel are best exemplified by the Complainant’s response to a fundamental question put to it in the Panel’s Procedural Order.
“Is it the Complainant’s contention that Mr Vostrikov/Vostykov registered those domain names in December 1999 while acting as an IT consultant to the Complainant? If that is not the Complainant’s contention, who effected those registrations and when were they acquired by Mr Vostrikov?”
“Domain names were registered on 3rd December 1999, in advance of the renaming of the bank by instructions of the bank’s management. And no data about information did the Mr Vostrikov make registration himself or not.”
The question is an important one, because if the First Domain Name was registered by the Respondent in accordance with the instructions of the bank’s management, the First Domain Name cannot have been registered in bad faith. The Panel takes the Complainant’s answer to mean that the First Domain Name was indeed registered on the instructions of the bank’s management, but the Complainant is unable to say whether or not it was the Respondent who effected the registration.
As indicated in section 5B above, the Respondent asserts that it was he who registered the First Domain Name in 1999 and that he did so on the instructions of the management of a Russian bank named “Conversbank”, not the Complainant, which did not adopt the name until 2010.
There is nothing before the Panel to indicate that it was not the Respondent who registered the First Domain Name in 1999 and both parties are in agreement that that registration was made on the instructions of the management of a “Conversbank”. Accordingly, the Panel is not persuaded on the papers before him in this administrative proceeding that the First Domain Name was registered in bad faith, and ultimately it is for the Complainant to prove its case.
For completeness, the Panel adds that if it had been necessary to do so, the Panel would have been prepared to accept that there must have been a connection between the Russian “Conversbank” which used the First Domain Name prior to 2011 and the Complainant, the Ukrainian “Conversbank”, which seems to have used the First Domain Name between 2010 and 2012. However, any such connection as there may have been does not affect the basis upon which the Panel has decided this case, namely that on the record before him the parties appear to be at one that the original registration of the First Domain Name was made on the instructions of the management of the bank i.e. with the approval of the bank’s management and not in bad faith.
Since paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Respondent both registered the Domain Name in bad faith and is using it in bad faith, it is unnecessary for the Panel to address the use of the First Domain Name and the Complaint fails.
Finally, the Panel confirms that his decision in relation to the Second Domain Name, <konversbank.com>, is without prejudice to the filing of a future complaint under the Policy in respect of that domain name. By contrast, the filing of any future complaint under the Policy concerning the First Domain Name, <conversbank.com>, by this Complainant against this Respondent would naturally be subject to the applicable principles on refiling under the Policy (see e.g. WIPO Overview 2.0, paragraph 4.4, and cases cited therein, under which the refiling of an already-decided complaint under the Policy involving the same parties and the same domain name may be permitted only in the most limited of circumstances).
For all the foregoing reasons, the Complaint is denied.
Dated: September 12, 2012