WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AdvoCard Rechtsschutzversicherung AG v. Advocard International Limited
Case No. D2012-1384
1. The Parties
The Complainant is AdvoCard Rechtsschutzversicherung AG of Hamburg, Germany, represented by Uexkull & Stolberg, Germany.
The Respondent is Advocard International Limited of Nicosia, Cyprus, represented by Maxim Nikanorov, Germany.
2. The Domain Names and Registrar
The disputed domain names <advocard24.biz> and <advocard24.com> are registered with Regional Network Information Center, JSC dba RU-CENTER.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2012. On July 6, 2012, the Center transmitted by email to Regional Network Information Center, JSC dba RU-CENTER a request for registrar verification in connection with the disputed domain names. On July 6, 2012, Regional Network Information Center, JSC dba RU-CENTER transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 July 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2012. The Response was filed with the Center on July 30, 2012.
The Center appointed James A. Barker, Reynaldo Urtiaga Escobar and Irina V. Savelieva as panelists in this matter on August 27, 2012. 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.
On August 9, 2012, the Complainant filed a supplemental submission further addressing arguments made in the Response. On August 22, 2012, the Respondent filed a supplemental submission in response to the supplemental submission of the Complainant.
In accordance with paragraph 10(c) of the Rules, on September 13, 2012, the Panel extended the date by which the Panel was required to forward its decision to the Center to September 17, 2012.
4. Factual Background
The Complainant was founded in 1968 and is a legal expenses insurer in Germany. The Complainant has 170 employees and some 1.4 million customers. The Complainant operates websites at “www.advocard.com”, “www.advocard.info” and “www.advocard.de”. In 1987, the Complainant introduced a customer card: the “Advocard Rechtsschutzkarte” (Advocard legal protection card). The Complainant describes this card as the “passport” for quick and unbureaucratic regulation of damages in case a dispute arises. The customer cards, which are similar to credit cards, enable insured persons to show that they are insured against the burden of costs in (future) legal disputes.
The Complainant has registered marks for ADVOCARD in Germany and in the European Union, with the earliest filing dates in 1998 in various classes.
The Respondent is registered as a company in Cyprus since April 8, 2011.
The Respondent’s claimed affiliated company, European Legal Services LLC, has registered the АДВОКАРД trademark in the Russian Federation (a Cyrillic version of the ADVOCARD trademark), which has the priority date of August 7, 2008. European Legal Services LLC has also filed an application for registration of the ADVOCARD trademark in the Russian Federation on February 28, 2012.
The disputed domain names <advocard24.com> and <advocard24.biz> were registered on April 28, 2011 and May 10 2011, respectively.
5. Parties’ Contentions
The Complainant makes the allegations in paragraph 4(a) of the Policy, summarised as follows:
The disputed domain names are highly similar to the Complainant’s trademarks for ADVOCARD. The digit “24” in the challenged domain names can be disregarded as it constitutes a merely descriptive term indicating that a service is available 24 hours.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant says there is no evidence that the Respondent possesses any rights in the terms “AdvoCard” or “AdvoCard24”. Even prior use of the company name “Advocard International Limited” would not entitle the Respondent to register or use the challenged domain names because use of a business designation is circumscribed by the prior trademark rights of the Complainant which has been using them in connection with specific goods and services for many years before registration of the disputed domain names. Furthermore, use of the challenged domains in the past does not constitute a bona fide offering of goods or services as the past and also the current use of the disputed domain names by the Respondent constitutes a clear infringement of the Complainant’s trademarks and business designations.
The Complainant provides extracts from the homepage at “www.advocard24.com” to which the user is redirected when entering the disputed domain name <advocard24.biz>. The Complainant says that the site shows that the Respondent has recently started offering “emergency legal assistance” to customers in the European Union. The Respondent intends to provide potential customers with access to legal aid, e.g. in case of an accident or other conflicts requiring immediate attention. The advertised services include legal advice for an unlimited number of times in virtually all areas of law. The characteristics of the Respondent’s “legal services” are that the attorney who is supposed to be contacted by the customer is providing legal consultation on the phone. Potential customers can acquire customer cards (“Advocard European Legal Service”) which are depicted and described on the Respondent’s website. The Complainant provides copies of relevant portions of that website, which variously depicts cards with various titles. For example, the Respondent’s website depicts a card called “driver” with the following associated text: “Driver is a legal service for a car owner concerning any and all legal issues that the car owner can be faced with. Almost every fourth person has his own car, and this figure is growing every year. Now you shouldn’t worry about your car and your rights. Under the Driver Tariff Plan you will get an expert legal help regarding all and any legal issues relating to the ownership, operation and maintenance of the vehicle.”
The Complainant says that, in essence, the Respondent advertises services that are identical to those for which the Complainant´s trademarks are registered. The Respondent has copied not only the well-known trademark and business designation “AdvoCard” but also imitates essential features that are characteristic of the Complainant´s business model for “AdvoCard”. Thus, the Respondent is deliberately taking a free ride on the high profile of the Complainant that the latter has built up with his own efforts over decades. The Complainant says that the Respondent knew or must have known of the Complainant’s services before registering the disputed domain names.
For somewhat similar reasons, the Complainant says that the disputed domain names have been registered and used in bad faith by the Respondent.
In its supplemental submission, the Complainant responds to what it says are unexpected factual assertions of the Respondent. The Complainant provides a copy of a trademark search for “Advocard” in Kazakhstan, the Russian Federation, and Ukraine. According to this search, the term “Advocard” is protected as a trademark only in class 5 and only in Ukraine. Among other things, the Complainant contests that the Respondent is well-known in the Russian Federation, Ukraine and Kazakhstan; that it renders legal services in its own name, and that it has 45,000 clients, and the other matters which the Respondent asserts are facts about its business. The Complainant says that the Respondent’s assertions in this respect are hard to verify as the Respondent can only be contacted by regular mail at its address in Cyprus. The Complainant submits that the Respondent has been founded for the sole justification of furnishing a justification for the use of the term “Advocard”. The Complainant says that it cannot confirm the actual existence of the legal service providers the Respondent says it uses in the Russian Federation, the Ukraine and Kazakhstan. The Complainant points out that the date of the incorporation of the Respondent in Cyprus more or less corresponds with the registration date of the disputed domain names, and that the Respondent provides no explanation as to why it is incorporated in Cyprus when it does no business there.
The Complainant’s supplemental submission says that, even if the Respondent’s claimed trademarks are in force, a mark which is registered in the name of “European Legal Service LLC” does not show that the Respondent has rights or legitimate interests. The Respondent has not shown its connection to that entity nor that it is, as it claims, the successor of several Russian entities which developed the Respondent’s claimed business idea in 2006. For these and other reasons detailed in the supplemental submission, the Complainant challenges the validity of the Respondent’s claimed marks.
The Response is summarised as follows:
The Respondent does not deny that the disputed domain names are similar to the Complainant’s marks. The Respondent says that its domain names have a “different geographical sphere of influence”.
The Respondent says that it has rights or legitimate interests in the disputed domain names. In this respect, the Respondent provides evidence of its incorporated company name, with its certificate of incorporation in Cyprus in April 2011. The Respondent says it is the successor of several Russian companies which started their activities in 2006 in the area of legal advice on the phone. The Respondent says that it is a very well-known legal assistance operator in the Russian Federaion, Ukraine and Kazakhstan. It renders legal services in its own name. The Respondent’s services can be purchased by clients through the purchasing of a plastic card – the Advocard. The Respondent currently counts 45,000 clients, with annual turnover of $30 million USD, and with 200 employees between the Respondent and its affiliates. The Respondent has 6 offices in the 3 above named countries and continues to broaden its presence in the Russian speaking market.
In relation to its business activities, the Respondent’s affiliated law company, European Legal Services LLC, which has been in operation since 2007, has registered a Cyrillic trademark corresponding to “Advocard” in Russian, with a filing date of August 7, 2008. In this respect, the Respondent provides a (untranslated) copy of a registration certificate. The Respondent says that it can therefore rely on this trademark application, because it was not filed solely to bolster the disputed domain name registrations.
The Respondent also provides evidence that a claimed affiliated company, European Legal Services LLC, has also filed an application for registration of the ADVOCARD trademark in the Russian Federation on February 28, 2012.
The Respondent denies that the relevant public will associate the disputed domain names with the Complainant, as the Complainant acts as an insurer and solely for the German market. The Complainant does not provide legal advice for third parties. The Complainant is able to provide insurance for legal costs because of the German legal system which provides fixed legal fees. This makes legal fees predictable for an insurer which is not the case in other jurisdictions such as USA, UK, the Russian Federation or Ukraine. This narrows the scope of the Complainant’s activity to Germany by the nature of its own business. On the other hand, the Respondent operates in jurisdictions where the legal mark is open for all entrepreneurs (at least in civil and administrative cases).
The Respondent denies that it acted in bad faith. It is an international company that conducts its business activities in a number of jurisdictions, namely in the Russian Federation, Ukraine, and Kazakhstan. The Respondent’s services are exclusively legal services as can be seen from its website at the disputed domain name <advocard24.biz>. This business concept has been autonomously developed by the Respondent’s founders.
The Respondent says that its legal services differ considerably from the legal expenses insurance provided by the Complainant. The principal business of the Complainant is insurance, not legal consultancy. The Complainant’s marks do not enjoy legal protected in the jurisdictions in which the Respondent has registered marks. The Complainant conducts its business exclusively within Germany and its official website is only in German. This means that only German-speaking customers can have interest and an access to the services rendered by the Complainant.
The Respondent asks for a finding of reverse domain name hi-jacking against the Complainant.
In its supplemental submission, the Respondent claims that the statements made by the Complainant about how the Respondent is structured or whether it makes sense to have its address in Cyprus do not answer the relevant question as to bad faith. The Respondent challenges what it sees as the Complainant’s “futile logic”. The Respondent says that “Sure enough that the Respondent is a counterpart to all its clients subscribed for the Advocard-Service, and the European Legal Service is a Respondent’s subcontractor rendering a legal advisory part of the service.” The Respondent says that it is reluctant to deliver records or documents demonstrating names and the amount of its clients or its turnover now, since the Complainant has not done the same. The Respondent says that it would be ready to do so on request.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names were registered and are being used in bad faith.
These elements are discussed in turn below, immediately after a consideration of the parties supplemental submissions. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Supplemental submissions
On August 9, 2012, the Complainant filed a supplemental submission further addressing arguments made in the Response. In this submission, the Complainant variously challenges the credibility of the Respondent’s claimed business. On August 16, 2012, the Respondent filed a supplemental submission. The Respondent’s supplemental submission provides no further evidence of its claimed business. Rather the Respondent challenges the logic of the Complainant’s further arguments.
Neither the Policy nor the Rules explicitly provide for supplemental filings to be made by either party. A Panel has the discretion to admit or invite further filings under paragraphs 10(a), (b), (d), and 12 of the Rules. The Panel considers that such filings should not be admitted as a general rule. In general, previous panels have considered that such submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself. See Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited, WIPO Case No. D2010-0776.
Generally following this approach, the Panel has decided to admit both parties supplemental filings. In this case, the legitimacy of the Respondent’s business is in issue. The Complainant could not reasonably have anticipated material which it considers has no evidential basis. The Complainant’s further submission is limited. The Respondent has replied and, as such, has not been denied the opportunity to respond.
For convenience, references to “the Complaint” and “the Response” below are inclusive of the parties supplemental submissions.
B. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the first thing which the Complainant must prove is that the disputed domain names are identical or confusingly similar to a trademark in which it has rights. The Complainant’s trademark rights are not relevantly in dispute. Neither does the Respondent challenge the similarity between the disputed domain names and the Complainant’s ADVOCARD mark.
The Respondent does argue that the Complainant’s mark has a different geographical sphere of influence. However, while it may be relevant to the matters further below, this argument is not relevant to the basic question to be addressed under paragraph 4(a)(i).
As such, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [the Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.” (Policy, paragraph 4(c)).
In this case, the Respondent claims, in effect, that it is making a bona fide offering of services in connection with providing legal advice and it is known by the term “Advocard” as its company name.
As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (Second Edition), paragraph 2.1, the burden is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see also, e.g. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.)
The Complainant has established prima facie case against the Respondent. The Complainant provides various evidence of the business it conducts in connection with its mark, including details of spending on advertising; customer recognition; and market share relative to other German companies. This evidence is indirect and the Complainant could have provided more (particularly having regard to the Complainant’s claimed size). Nevertheless, the Panel is in little doubt that the Complainant is a substantial company with a long-standing reputation.
Against this, the Respondent makes the following essential claims:
- The Respondent’s business name is “Advocard International”, as incorporated in April 2011. As evidence, the Respondent provides its certificate of incorporation.
- The Respondent is a well-known legal assistance operator in the Russian Federation. It is the successor of “several” Russian companies which commenced operating in 2006;
- The Respondent has 45,000 clients, and 6 offices in the Russian Federation, Ukraine and Kazakhstan;
- In the Russian Federation, the Respondent’s affiliated company is European Legal Services LLC;
- European Legal Services LLC registered a mark in Cyrillic which corresponds to “Advocard”. That mark was registered in 2008 in the Russian Federation. European Legal Services LLC also filed an application for a latin analog of “Advocard” as a mark in the Russian Federation in 2012. As evidence of both claims, the Respondent provides an untranslated certificate. The Respondent does not provide evidence of having other registered marks, or evidence of its relationship with European Legal Services LLC.
From this evidence, the Respondent claims it is undertaking a legitimate business in connection with the disputed domain names. However, on balance, the majority of the Panel finds that the overall circumstances suggest that the Respondent has sought to take unfair advantage of the Complainant’s ADVOCARD mark. This is for the following reasons:
Firstly, apart from the certificates of its incorporation in Cyrpus and of a mark it claims is registered in the Russian Federation (for which an untranslated certificate is provided), the Respondent offers little evidence to support its assertions that it is in business, or has the associations it claims with other business entities. The Respondent’s offer in its supplemental submission to provide such evidence if requested by the Panel, is hollow. The Respondent has had every opportunity to do so in the Response. Neither did the Respondent provide such evidence in its supplemental submission.
The Respondent claims an “affiliation” with European Legal Services LLC, which it says is the registered owner of a relevant Cyrillic mark in the Russian Federation. However, the Respondent provides no evidence to support the claim that it is affiliated with the owner of this mark. Neither does the Respondent explain what this “affiliation” comprises or how this affiliation may give it rights in a mark. In this respect, the majority of the Panel disagrees with the dissenting opinion. Previous WIPO panels have found against parties who claim, but do not establish, trademark rights they do not directly own: see e.g. Caleel+Hayden L.L.C. v. Jaye Pharmacy, WIPO Case No. D2001-1475. The majority takes a similar approach as it is unclear about the actual name, legal status, purpose, and relationship of European Legal Services LLC vis-à-vis the Respondent. In this vein, the majority notes that the Respondent’s own website at the disputed domain names refers under its “company history” section to “European Law Service” rather than to European Legal Services LLC. Further, on page 6 of its Response, the Respondent makes reference to “affiliated domestic law firms incorporated and acting in the Russian Federation, Ukraine and Kazakhstan under the trade name European Legal Service”. In its supplementary submission, Respondent asserts that “European Legal Service is a Respondent’s subcontractor rendering a legal advisory part of the service”. In light of these inconsistencies, the majority is uncertain about whether European Legal Services LLC is in fact a legally incorporated company, a service, a trade name, an alter ego, or an association of law firms.
Secondly, there is no dispute that the Complainant has trademark rights which substantially pre-date any registrations of the Respondent (even assuming that the Respondent had established rights in a mark – which in this case it has not). That these registrations are not in the Russian Federation, Ukraine, or Kazakhstan is not relevant. The fact that the Complainant has registered rights in Germany and the European Community does nothing to demonstrate, on its own, that the Respondent has rights in other jurisdictions.
Thirdly, the Complainant’s mark appears to be highly distinctive. It does not appear to have a dictionary meaning. While the Complainant did not explain the origin of its mark, it appears to be a term coined by the Complainant itself more than 20 years ago (perhaps as a play on the terms “advocate” and “card”). As such, it does not seem to be a term that others would legitimately choose using unless seeking to create the impression of being associated with the Complainant. Expedia Inc. v. Venta, Leonard Bogucki, WIPO Case No. D2001-1222.
Fourthly, <advocard24.com> was registered in April 2011, and <advocard24.biz> in May 2011. The Respondent was registered as a company in April 2011. In the circumstances of this case, it seems more than coincidental that the Respondent’s company was registered almost contemporaneously with the disputed domain names. The inference, in combination with the other circumstances of this case, is that the Respondent’s company registration was designed to create an appearance of legitimacy for its registrations of the disputed domain names.
Fifthly, the Respondent claims to be operating a business on a generally similar principle to the Complainant’s (a “card” which demonstrates and entitlement to legal-related costs - in the case of the Complainant, insurance for legal costs; in the case of the Respondent, insurance for legal advice). The Complainant was operating in business substantially prior to the Respondent. The Respondent’s use of confusingly similar domain names to operate in a similar field of business suggest that the Respondent was seeking to take advantage of the Complainant’s pre-existing reputation.
Finally, the distinctiveness of the Complainant’s mark, the long standing nature of its business, and the similarity of the services purportedly offered by the Respondent, suggest strongly that the Respondent was well-aware of the Complainant’s rights when it registered the disputed domain names. Further, as a company incorporated on April 8, 2011 in Cyprus, which is an EU country since 2004, the Respondent ought to have known the Complainant's AdvoCard Community Trademark (registered on November 6, 2002) which is valid and enforceable in all EU Member States. The Complainant is well-known as a result of the continuous use of its AdvoCard mark in the German market for 22 years. The Russian Federation, Ukraine and Kazakhstan, where the Respondent claims to offer services under the disputed domain names, are geographically proximate to the Complainant’s targeted markets.
Each of these circumstances militate against a finding that the Respondent is making a bona fide offering of goods and services, for the purpose of paragraph 4(c)(i) of the Policy. In relation to the circumstances described in paragraph 4(c)(ii), the Respondent provides no real evidence of being “commonly known” by the disputed domain names. The Respondent’s evidence of its company name registration does little to support a case to this effect.
Prior panels have made findings against respondents in comparable circumstances, in which there was evidence that a respondent’s trademark registration was obtained primarily to circumvent the application of the UDRP. See e.g. Chemical Works of Gedeon Richter Plc v. Covex Farma S.L., WIPO Case No. D2008-1379. The Respondent’s company registration, and its claimed mark, do not sufficiently establish rights or legitimate interests, having regard to the circumstances outlined above. Those circumstances are highly suggestive that the Respondent claimed the registrations to bolster its case against the Complainant, rather than in connection with a legitimate business enterprise.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Bad faith may be demonstrated where the evidence indicates that the Respondent registered and used the disputed domain name primarily with a view to taking unfair advantage of the Complainant’s registered trademark rights and reputation. See e.g. SingTel Optus Pty v. Xnet, WIPO Case No. D2004-0734. In this connection, and for similar reasons to those outlined above, the Panel finds that the disputed domain names were registered and have been used in bad faith.
E. Reverse Domain Name Hijacking
The Respondent has sought a finding of “reverse domain name hijacking” against the Complainant. This is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. It follows from the Panel’s findings in favor of the Complainant that such a claim cannot succeed.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <advocard24.biz> and <advocard24.com>, be transferred to the Complainant.
James A. Barker
Reynaldo Urtiaga Escobar
Irina V. Savelieva
Date: September 17, 2012
With due respect to the distinguished fellow Panelists, the Dissenting Panelist must dissent to the conclusions and decisions the Majority has reached in this matter.
Identical or Confusingly Similar
Since the Respondent does not challenge the similarity between the disputed domain names and the Complainant’s ADVOCARD mark, and such similarity is in fact present, the Dissenting Panelist agrees with the Majority analysis that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names.
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.
A respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy.
It is generally accepted that the burden of proof under paragraph 4(c) of the Policy lies on the Complainant. Since the Complainant is then often required to prove a negative, requiring information that is primarily within the knowledge of the Respondent, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. In this instance the Dissenting Panelist finds that the Complainant has provided prima facie evidence that the Respondent lacks rights and legitimate interests in the disputed domain names.
However, the Respondent has provided evidence that it does have rights and legitimate interests in the disputed domain names. In such circumstances the Panel must weigh all the evidence, with the burden of proof always remaining on the Complainant.
Firstly, the Respondent has provided evidence of registration for the АДВОКАРД trademark in the Russian Federation, a Cyrillic version of the ADVOCARD trademark, by one of its affiliate companies, European Legal Services LLC. This registration has a priority date of August 7, 2008 and clearly predates these proceedings or any notice of these proceedings. The Dissenting Panelist finds that on balance there is evidence that the Respondent is in fact associated with its affiliate company, European Legal Services LLC (even if the Respondent did not provide further evidence for this although the Respondent expressed readiness to do so if required) since the Respondent was able to provide documents related to the registration of the АДВОКАРД trademark and documents related to the application to register the ADVOCARD trademark in the Russian Federation. As the registration of the АДВОКАРД trademark clearly precedes any notice of these proceedings and therefore was not registered to circumvent the current UDRP proceedings, the Dissenting Panelist finds that the existence of such trademark in the Russian Federation can confirm existence of rights and legitimate interests of the Respondent in the disputed domain names.
The Respondent’s registration of a company in Cyprus does nothing to evidence either rights and legitimate interests in the disputed domain names or any lack thereof. Cyprus is often seen as a territory of convenience where companies are registered that conduct business on the territory of the former Soviet Union. This may be for various reasons, including tax implications. The place of registration of a company in any case has no bearing on where the company conducts its business. The Dissenting Panelist thus finds the argument of the Complainant that the Respondent is conducting business on the territory of European Union as unsubstantiated.
Secondly, the existence of trademarks of the Complainant on the territory of Germany and the European Union does nothing to demonstrate its rights to the same trademark in other jurisdictions. Consequently the Respondent (or any other third party) is able to register the relevant trademarks in other jurisdictions. It is not the Panel’s role in these proceedings to question the legitimacy of trademark registrations in various jurisdictions.
Thirdly, while the Complainant’s mark is distinctive, it consists of a combination of two words – almost a “play on words” (advocat vs advocard). The Dissenting Panelist in this regard notes that the same ‘play on words’ also works in Russian language (адвокат vs адвокард). While unlikely, it is neither completely certain that the Respondent would not be able to come up with the same trademark as that of the Complainant. The Complainant does not show whether its trademark is in fact known outside of Germany therefore any benefit from the likelihood of confusion that the Respondent may be seeking to achieve with the Complainant’s trademark (if any) is limited and such course of action would be unlikely since the Complainant and the Respondent operate in different geographical markets.
Fourthly, the registration of the company in Cyprus by the Respondent cannot be said to have been done only in order to create appearance of legitimacy of the disputed domain names. This could have been the case if the company was registered after the Respondent had notice of these UDRP proceedings. However the company was registered in April 2011, which is more than a year before the Respondent had any notice of the UDRP proceedings. The Dissenting Panelist finds it extremely unlikely that the Respondent would go to extra expense in registering a Cyprus company simply in order to provide appearance of legitimacy for its registrations of the disputed domain names in case any UDRP proceedings arise at a later date.
Fifthly, the Dissenting Panelist finds that while both services provided by the Complainant and the Respondent are similar in that they are related to the legal profession, the real nature of the businesses do differ. The Complainant provides insurance for future legal costs. The Respondent provides legal advice over the phone and as such not in the legal costs insurance business. While the distinction is not major, it does not follow from this that the Respondent is attempting to seek advantage from the Complainant’s reputation.
Finally, the Dissenting Panelist finds that registration of a company in Cyprus by the Respondent does not automatically suggest that the Respondent should have been aware of the Complainant’s trademarks and rights associated with them. This is especially true since the Respondent is conducting business not on the territory of Germany or the European Union, but on the territory of the Russian Federation, Ukraine and Kazakhstan, which are markets geographically and linguistically different to the Complainant’s German market.
The Dissenting Panelist also draws inferences that the Respondent has rights and legitimate interests in the disputed domain names from the fact that the disputed domain names point to a well-developed website of the Respondent that clearly lists the services that the Respondent offers as well as other information. Registration of a Cyprus company and trademark registration (and application) in the Russian Federation further provide evidence that the Respondent has rights and legitimate interests in the disputed domain names.
These circumstances persuade the Dissenting Panelist to find that the Respondent is making a bona fide offering of goods and services, for the purpose of paragraph 4(c)(i) of the Policy.
There is no evidence to suggest that the Respondent has registered the Cyprus company (if at all relevant) and obtained trademarks in the Russian Federation to circumvent the current UDRP proceedings. Further the trademark АДВОКАРД of the Respondent’s affiliate, European Legal Services LLC, confers rights and legitimate interests in the disputed domain names since it was registered around 4 years prior to these UDRP proceedings. Thus the Dissenting Panelist finds the Majority analysis that the Respondent has engaged in the above activity to circumvent these UDRP proceedings as unsubstantiated due to the timings of the Respondent’s actions which all precede the current UDRP proceedings.
For these reasons, the Panel finds that the Complainant has not established its case under paragraph 4(a)(ii) of the Policy.
Registered and Used in Bad Faith
Since the Complainant has not established its case under paragraph 4(a)(ii) of the Policy, it is not necessary for the Dissenting Panelist to analyse the requirement contained in paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Dissenting Panelist would deny the Complaint.
Irina V. Savelieva
Date: September 17, 2012