WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Crocs, Inc. v. Матвеева Анжела Геннадьевна / Matveeva Angela

Case No. DUA2020-0015

1. The Parties

The Complainant is Crocs, Inc., United States of America (“United States” or “U.S.”), represented by Kestenberg Siegal Lipkus LLP, Canada.

The Respondent is Матвеева Анжела Геннадьевна / Matveeva Angela, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <crocs.com.ua> is registered with Hosting Ukraine LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2020. On May 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 29, 2020, 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 June 12, 2020 providing the registrant and contact information disclosed by the Registrar. The Complainant filed an amended Complaint on June 12, 2020 in this regard.

On June 12, 2020, the Center sent an email communication to the Parties indicating the registration agreement for the disputed domain name is Russian, and inviting the Parties to submit their preference as to the language of the proceeding. On June 12, 2020, the Complainant submitted a translation of the Complaint in Russian and requested that English be the language of the proceeding. The Respondent did not submit any comments on the language of the proceeding.

The Center verified that the Complaint satisfied the formal requirements of the .UA Domain Name Dispute Resolution Policy (the “.UA Policy”) the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”).

In accordance with the .UA Rules, paragraph 4(c), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 17, 2020. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was July 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2020.

The Center appointed Taras Kyslyy as the sole panelist in this matter on July 17, 2020. 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 .UA Rules, paragraph 7.

4. Factual Background

The Complainant is an enterprise engaged in the manufacture and distribution of footwear and other apparel, having sold about 630 million pairs of shoes in about 90 countries since 2002. The Complainant owns registered trademarks for CROCS in various countries, including International registration No. 873725, registered on November 23, 2005, and inter alia designating Ukraine.

The Complainant has engaged in significant advertising and promotion of its CROCS trademarks, including on the Internet and other media.

The disputed domain name was registered on April 14, 2008. The Respondent used to be the Complainant's authorized reseller of goods bearing the Complainant's trademark, however this relationship was terminated in 2014. The Respondent continued to use the disputed domain name without the Complainant's permission to redirect to a website offering for sale various styles of footwear and accessories. At the time of the Decision, the disputed domain name directs to an inactive website.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s CROCS trademark in its entirety. The country code Top-Level Domain (“ccTLD”) “.com.ua” does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar.

The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s first use and first registration of its CROCS mark predates any use the Respondent may have made of the disputed domain name as a trade name, domain name, mark, or common name. The Respondent lost any right to utilize the disputed domain name once the business relationship between the Parties ended in 2016, and after it refused to transfer the disputed domain name to the Complainant, as previously agreed upon. The continued use cannot be considered use in connection with a bona fide offering of goods or services, since distributors and resellers using the manufacturer’s mark in a domain name must use the associated website only in connection with the trademarked products, which is not the case. The Respondent clearly aims to monetize the disputed domain name by selling products on the website, the Respondent’s activities do not fall under a legitimate noncommercial use. The Respondent is not commonly known by the disputed domain name and the Respondent is no longer authorized to use or register a domain name, which incorporates the Complainant’s CROCS mark.

The disputed domain name is being used in bad faith. Since the termination of the business arrangement concerning the disputed domain name in October 2014, the Respondent has been using the disputed domain name in bad faith. Upon termination of the business relationship, the Complainant advised the Respondent that it must cease to use the disputed domain name by October 2014. The Respondent stopped responding to the Complainant and continued to use the disputed domain name, which now redirects to another domain name that uses a significant amount of intellectual property belonging to the Complainant. The Respondent is diverting the Complainant’s customers or potential customers to the website, which the disputed domain name resolves to, where Respondent obtains commercial benefits through the sale of products bearing reproductions of the Complainant’s trademarks. The disputed domain name is connected to a website that is made to look like the Complainant’s official website, which strongly indicates bad faith. The Respondent is actively using the website to intentionally misdirect and attract for commercial gain Internet users searching for the Complainant’s authorized goods and services by creating a likelihood of confusion with Complainant’s mark to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location. The Respondent’s refusal to transfer the disputed domain name post-termination of the resale business arrangement was solely done to prevent the Complainant from registering the relevant domain name and was likely preserved for the purpose of selling the disputed domain name for valuable consideration in excess of any out of pocket expenses.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceedings

The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the .UA Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement (which shall be in English, Russian or Ukrainian), subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.

However, as noted by previous .UA panels, paragraph 11 of the .UA Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the .UA Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., Chewy Inc v. Rostislav Karyi / Ростислав Карый, WIPO Case No. DUA2020-0003).

In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties.

The Complainant has submitted a request that the language of the proceedings be English and has also provided a translation of the Complaint into Russian. The Complainant contends that the Respondent must be familiar with the English language since (i) the website at the disputed domain name contains products bearing the trademark, CROCS, and despite having no authority to do so, the CROCS logo/banner is displayed at the top of the website (redirecting to <topshoes.com.ua>), suggesting to be associated with the Complainant, which is based in the United States; (ii) portions of the website are in the English language.

The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present her objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known her preference but did not do so. The Panel also notes that the Respondent was authorized reseller of the Complainant for years and most likely had an ability to communicate with the Complainant in English.

The Panel also notes that the Complainant provided Russian translation of the Complaint and finds that substantial additional expense and delay would likely be incurred if the annexes to the Complaint had to be translated into Russian.

Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.

B. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in its registered trademark.

The Panel finds that ccTLD “.com.ua” in the disputed domain name is viewed as a standard registration requirement and may be disregarded for the purposes of the confusing similarity test. The same approach was also applied by previous .UA panels (see, e.g., AB Elecrolux v. Name Servis, Александр Шевчук, WIPO Case No. DUA2020-0011).

The Panel finds that in the present case the disputed domain name incorporates the Complainant's trademark in its entirety with no additional terms, which is sufficient to find identity.

Considering the above the Panel finds the disputed domain name is identical to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the .UA Policy.

C. Rights or Legitimate Interests

While the overall burden of proof in .UA proceedings is on the complainant, the Panel recognizes that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. (see, e.g. LEGO Juris A/S v. Anton Obrezkov, WIPO Case No. DUA2020-0001).

Noting the facts and allegations listed above, the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.

Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.

The Panel finds that the Respondent lacks any right to use the disputed domain name after the cease of its business relations with the Complainant. Further commercial use of the disputed domain name cannot be considered as bona fide offering of goods and services to demonstrate rights or legitimate interests in the disputed domain name as provided by paragraph 4(c)(i) of the .UA Policy.

Such commercial use of the disputed domain name also cannot be considered as legitimate noncommercial or fair use of the disputed domain name to demonstrate rights or legitimate interests in the disputed domain name as provided by paragraph 4(c)(iii) of the .UA Policy.

The Panel finds that the Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest according to paragraph 4(c)(ii) of the .UA Policy.

Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

D. Registered or Used in Bad Faith

The Panel finds that in the present case by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to her 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 her website or location or of a product on her website or location. Such use of the disputed domain name is considered as bad faith according to paragraph 4(b)(iv) of the .UA Policy. Existence of previous business relations do not preclude a finding of bad faith, since the use of the disputed domain name continued after the business relations ended and the Respondent refused to transfer the disputed domain name to the Complainant. The same approach was also applied by previous .UA panels (see, e.g., Володимир Михальчук v. Олександр Шев’яков, WIPO Case No. DUA2020-0008.

The Panel finds that although at the time of this decision, the disputed domain name resolves to inactive webpage, its previous bad faith use by the Respondent makes any good faith use of the disputed domain name implausible. Thus, the current passive holding of the disputed domain name does not change the Panel’s findings above.

Considering the above, the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the .UA Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the disputed domain name <crocs.com.ua> be transferred to the Complainant.

Taras Kyslyy
Sole Panelist
Date: July 31, 2020