WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pivovary Staropramen s.r.o. v. Super Privacy Service LTD c/o Dynadot / Pinar Arslan

Case No. D2021-1555

1. The Parties

The Complainant is Pivovary Staropramen s.r.o., Czech Republic, represented by Kestenberg Siegal Lipkus LLP, Canada.

The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States”) / Pinar Arslan, Turkey.

2. The Domain Name and Registrar

The disputed domain name <prahabystaropramen.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2021. On May 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2021, the Registrar 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 May 20, 2021, 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 amended Complaint on May 20, 2021.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2021.

The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on June 30, 2021. 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.

4. Factual Background

The Complainant, Pivovary Staropramen s.r.o., is headquartered in Prague, Czech Republic, and has been engaged in the production and sale of alcoholic beverages, namely beer, since the 19th century. It is a member of the Molson Coors Beverage Company group.

The Complainant owns several trademark registrations for STAROPRAMEN in connection with beer, glass wear and other goods, including the following:

United States Trademark Registration No. 1829955 STAROPRAMEN, registered on April 5, 1994; and

Canadian Trademark Registration No. TMA609725 STAROPRAMEN, registered on May 7, 2004.

The Complainant also owns the <staropramen.com> domain name registered in 1999. Since its registration the Complainant uses this domain name and website to provide information about its longstanding history and advertise its STAROPRAMEN marks and products.

The disputed domain name <prahabystaropramen.com> was registered on February 2, 2021. On April 23, 2021, the Complainant sent notices to the Registrar and SEDO.Com LLC / SEDO GmBH, the parking company that the Respondent used in its attempt to sell the disputed domain name.

Pursuant to the Complainant’s request made in accordance with the SEDO IP Complainant Procedure, the disputed domain name is currently inactive. Prior to the Complainant’s request, the disputed domain name was being offered for sale for USD 988.00.

5. Parties’ Contentions

A. Complainant

The Complainant is the second largest beer producer and innovation leader in the Czech Republic and has been involved in the production and sale of beer since 1869. It is an important Czech beer exporter and the STAROPRAMEN brand is available in more than 35 countries all over the world. Accordingly, the Complainant has developed considerable goodwill in the STAROPRAMEN marks which are famous and have been for decades.

The Complainant claims that the disputed domain name is confusingly similar with the trademark STAROPRAMEN in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.

More specifically, the Respondent has no connection nor affiliation with the Complainant, who has never licensed or otherwise permitted the Respondent to use its trademark or to register any domain name including the above-mentioned trademark. The Respondent has no property rights or legitimate interest in STAROPRAMEN or in the disputed domain name because the Respondent is not commonly known by that name.

The Respondent selected the disputed domain name with the intention to take advantage of the Complainant’s reputation by registering a domain name fully containing the Complainant’s trademark and trade name with the intent to attract Internet users for commercial gain.

As mentioned above, the Complainant delivered cease and desist letters to the Registrar and the hosting company SEDO, as a result of which SEDO was compliant in deactivating the website to which the disputed domain name resolves pursuant to their IP Policies and the Respondent did not respond to the complaints made to SEDO or the Registrar.

Finally, the Complainant requests the Panel to issue a decision ordering that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6 Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has proved that it has rights in the trademarks mentioned in paragraph 4 above (Factual Background).

As noted in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. Therefore, the test involves a side-by-side comparison of the disputed domain name <prahabystaropramen.com> and the trademark STAROPRAMEN to assess whether the mark is recognizable within the disputed domain name.

The disputed domain name includes de Complainant’s trademark in its entirety and “praha” in English means “Prague”. As the Complainant’s trademark is clearly recognizable in the disputed domain name, the addition of the geographic term “praha” and the word “by” does not prevent a finding of confusing similarity under the first element, as noted in section 1.8 of WIPO Overview 3.0.

For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”, as it is viewed as a standard registration requirement, as noted in section 1.11.1 the WIPO Overview 3.0.

The Panel finds that the disputed domain name is confusingly similar with the trademark STAROPRAMEN in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following non-exclusive defenses:

(i) before any notice to it of the dispute, the respondent’s 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 respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

There is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests therein.

Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other circumstances to suggest that the Respondent has rights or legitimate interests in the disputed domain name.

Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name, but rather that it intends to use the disputed domain name for the purpose of deriving unfair monetary advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name may relate is an official site of the Complainant.

As established in section 2.5 of WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.” Here, the nature of the disputed domain name carries a risk of implied affiliation.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled.

C. Registered and Used in Bad Faith

The Panel is satisfied that the Respondent must have been aware of the Complainant’s trademarks mentioned in paragraph 4 above (Factual Background) when it registered the disputed domain name on February 2, 2021.

The Complainant has submitted evidence to support its claim that the trademarks mentioned in paragraph 4 above are widely known and were registered and used many years before the Respondent registered the disputed domain name.

Likewise, the Respondent registered the disputed domain name years after the Complainant registered the <staropramen.com> domain name in 1999, which it continues to use to advertise its STAROPRAMEN mark and products.

The Respondent when registering the disputed domain name on February 2, 2021, has targeted the Complainant’s trademark STAROPRAMEN, with the addition of the geographical term “praha” and the word “by” with the intention to confuse Internet users and capitalize on the fame of the Complainant’s name and marks for its own monetary benefit.

The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0).

The fact that the disputed domain name currently points to an inactive website, on the basis of the “passive holding” doctrine, does not avoid a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, supra).

The failure of the Respondent to answer the complaints made by the Complainant in its cease and desist letters to the Registrar and SEDO.Com LLC / SEDO GmBH, (the parking company that the Respondent used in its attempt to sell the disputed domain name for USD 988.00, and as a result of which SEDO was compliant in deactivating the website to which the disputed domain name resolves) provides a further indication that the Panel considers useful to confirm Respondent’s bad faith in terms of the Policy.

The Panel finds that the Respondent has registered and uses the disputed domain name in bad faith.

7. Decision

For 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 <prahabystaropramen.com> be transferred to the Complainant.

Miguel B. O'Farrell
Sole Panelist
Date: July 5, 2021