WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Julia Lack v. Fundacion Private Whois, Domain Administrator / Artem Metlev
Case No. D2013-0935
1. The Parties
The Complainant is Julia Lack of Sioux Falls, South Dakota, United States of America, represented by Berlin Evgeny of Moscow, Russian Federation.
The Respondents are Fundacion Private Whois, Domain Administrator of Panama, Panama / Artem Metlev of Moscow, Russian Federation (hereinafter collectively referred to as the “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <molitvoslov.com> is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2013. On May 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant information for the disputed domain name which differed from the named Respondent in the Complaint. The Complainant filed an amendment to the Complaint on June 6, 2013.
The Center verified that the Complaint together with the amendment to 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 with the amendment to the Complaint, and the proceedings commenced on June 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2013. On June 9 and June 16, 2013, the Respondent sent email communications to the Center. The formal Response was filed with the Center on June 20, 2013, and on June 22, 2013, the Respondent sent a clarification by email to the Center.
On June 25, 2013 a third party called Mr. Danilov sent an email communication to the Center stating that he is the “person who registered Domain Name molitvoslov.com in 2005 on behalf of [the Complainant]”. On June 27, 2013, the Respondent replied.
On July 1, 2013, the Complainant filed a Supplemental Filing by email with the Center, and the Respondent replied on the same date. On July 5, 2013, the Complainant sent three email communications to the Center, to which the Respondent replied on the same date.
The Center appointed Alfred Meijboom as the sole panelist in this matter on July 5, 2013. 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 was the holder of the disputed domain name <molitvoslov.com> (hereinafter the “Domain Name”) until November 26, 2012.
When the Complaint was filed, on May 25, 2013, the Domain Name was held by the Respondent.
5. Parties’ Contentions
In short, the Complainant states that:
- On March 30, 2005 the Domain Name was registered by Mr. Danilov on behalf of the Complainant.
- The Domain Name was transferred to the Complainant on February 8, 2008.
- The Complainant holds the unregistered service mark “molitvoslov.com”.
- Evidence of this unregistered trademark right can be found in:
- The duration of the use (eight years);
- The distinctiveness of the word “molitvoslov” and the fact that it is not descriptive for the Complainant’s business. The Complainant has used the website linked to the Domain Name for religious education and discussion and for providing information by displaying photos taken by the Complainant, her own culinary recipes, flash book etc. The Complainant has received an income through online commercial advertising.
- From October 2009 to November 2012 the number of unique visitors was 4,175,109. In November 2012 the website was visited by 246,595 unique visitors.
- The Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has not granted the Respondent permission to use the “molitvoslov.com” name. The Respondent hijacked the Domain Name in November 2012. Ever since he uses the website content and design created by the Complainant. He does not conduct any activities on the website, except for placing extra commercial advertisements which brings him financial gain.
- The Domain Name was registered and is being used in bad faith. Bad faith can be established by the following facts:
- The Respondent knew or ought to have known that the Domain Name was in use and had been used for many years in connection with an active website;
- The Respondent obtained ownership of the website through improper means;
- The Respondent has disrupted the legitimate business activities of the Complainant, depriving it of access to the Domain Name and the website created by the Complainant;
- The Respondent illegally uses the design and content created by the Complainant in connection with the Domain Name in order to obtain unlawful revenues from the website.
The Respondent disputes that the Complainant holds unregistered rights in the word “molitvoslov”. He states that “molitvoslov” is a transliteration to the English language of a Russian word which in English means “prayer book”. It is a generic and commonly used word. The word does not fulfill the function of identification and individualization because it is descriptive for the activities of the Complainant. Furthermore, the Respondent contests that the Domain Name has been used in relation to the rendering of commercial services and distribution of products by the Complainant. The Respondent claims that as a result thereof the designation “molitvoslov” cannot be a trademark. Lastly, the Respondent disputes that the Complainant had used the Domain Name since eight years, because at first the Complainant was no more than the administrative contact and she acquired the Domain Name not before 2008.
The Respondent claims that he does not need to obtain permission from the Complainant in order to use the word “molitvoslov” in the Domain Name, as the word is generic and commonly used and the Complainant does not hold any unregistered rights in it. The Respondent has provided prints of the current website linked to the Domain Name, which is not identical or similar to the Complainant’s website. The Respondent states that “in any circumstances the design issues are not the subject of proceedings under the UDRP procedure”. According to the Respondent he provides information of a religious nature and was carrying out this activity before receipt of the Complaint. The Respondent asserts that he is making a legitimate noncommercial and fair use of the Domain Name, without intent for commercial gain.
The Respondent denies that he hijacked the Domain Name in November 2012. He states that he acquired the Domain Name from an individual on January 29, 2013. The Respondent contests that the Domain Name was registered and is being used in bad faith. He acknowledges that he uses banners on the website, but he states that that is no evidence of bad faith. He has no intention of selling the Domain Name, he is not a competitor of the Complainant and he does not disrupt the Complainant’s business since the Complainant has none, according to the Respondent. The Respondent puts forward that he has not registered the Domain Name in an attempt to attract for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark.
The Respondent requests the Panel to deny the remedy requested by the Complainant.
6. Discussion and Findings
According to the WhoIs-information at the time the Complaint was filed as well as at the date of this decision, Fundacion Private Whois was the registrant of the Domain Name. After the Complaint was filed Mr. Artem Metlev came forward stating that he is the owner of the Domain Name. Subsequently, Mr. Artem Metlev filed a Response. Therefore, the Panel considers both Fundacion Private Whois and Mr. Artem Metlev as respondents in this case. The Panel will refer to both respondents collectively as the “Respondent”.
Parties’ Supplemental Submissions
In previous UDRP cases it has been decided that panels as an exception may accept unsolicited supplemental submissions under paragraph 10(a) of the Rules, which provides the panels with a broad power to conduct the administrative proceeding in the manner it considers appropriate under the Policy and Rules. Whether it is appropriate to submit a supplemental submission will depend on its relevance to the issues in the case, whether the Panel considers the content of the submission essential to reaching a fair decision on the facts, and whether the submission could have been made earlier and, if so, why it was not (see inter alia, NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A., WIPO Case No. D2008-1984). Unsolicited supplemental submissions are not be used to simply reply to the Respondent’s arguments (Magnum Piering Inc., v. Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
On June 25, 2013 a third party called Mr. Danilov sent an email communication to the Center with respect to this case. Furthermore, on July 1, 2013 the Complainant filed an unsolicited supplemental submission and the Respondent replied on the same date. On July 5, 2013, the Complainant sent to the Center two more emails, to which the Respondent replied the same day. Since most of the Complainant’s supplemental submission is an effort to reargue the points made in the Complaint and the further email correspondence of Mr. Danilov, the Complainant and the Respondent, the Panel disregards such submissions in reaching a decision on the elements enumerated in paragraph 4(a) of the Policy.
Analysis of Complaint
In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Policy have been satisfied:
(i) the 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 the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Respondent contends that the Complainant has not provided sufficient evidence that it has an unregistered or common law trademark for the name “molitvoslov.com”. In short, he argues that “molitvoslov” means “prayer book”, which is descriptive for the Complainant’s activities and as a result cannot acquire distinctiveness and/or secondary meaning. Furthermore, the Respondent puts forward that the Complainant does not render commercial services and has not used the Domain Name since 2005, because she only became the owner in 2008.
To start with this last argument, it makes no difference to the Panel whether use since 2005 or since 2008 can be established by the Complainant. It is undisputed by the Respondent that the Complainant has used the Domain Name actively since 2008 and that from October 2009 to November 2012 the number of unique visitors was 4,175,109 and that in November 2012 the website was visited by 246,595 unique visitors. The Panel disagrees with the Respondent that “molitvoslov” (meaning prayer book) is purely descriptive for the Complainant’s activities such as the providing of religious information, education and discussion. Since the Complainant is personally involved in these activities and for example her photos and her own culinary recipes are displayed, the Panel believes that it is most likely that at least a substantial part of the large number of visitors identify the name “molitvoslov.com” with the information services provided by the Complainant. Therefore, the Panel concludes that the name “molitvoslov.com” has acquired distinctiveness and secondary meaning (e.g. The British Council v. Mr. Li Yen Chun, WIPO Case No. D2001-0997). Lastly, the Respondent asserts that the services provided by the Complainant do not have a commercial nature and that for that reason the Complainant cannot claim trademark rights. However, the Respondent has not disputed that the Complainant has received an income through online commercial advertising.
For all these reasons – while the matter is not entirely free from doubt – the Panel finds, on the balance of probabilities, that the Complainant has an unregistered right in the name “molitvoslov.com” for the purposes of the Policy (see Dreamstar Cash S.L. v. Brad Klarkson, WIPO Case No. D2007-1943).
The first element of paragraph 4(a) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Respondent asserts that he is making a legitimate noncommercial and fair use of the Domain Name, without intent for commercial gain. The Panel disagrees and finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name.
After acquiring the Domain Name the Respondent used the content and design of the Complainant’s website, adding his own advertisements. Only after the Complaint was filed, the Respondent created his own website, which differs from the Complainant’s site. The Respondent failed to provide the Panel with a reasonable explanation for these actions, only stating that “in any circumstances the design issues are not the subject of proceedings under the UDRP procedure”. It may be so that these proceedings are not about design issues, that does not mean that the Panel cannot take into account the actual use of the Domain Name made by the Respondent when assessing the case. The actual use made by the Respondent before the Complaint was filed clearly cannot amount to legitimate interests or give rights to the Respondent.
Therefore, the second element of paragraph 4(a) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel cannot establish whether the Respondent had anything to do with the asserted hijacking of the Domain Name. However, the Panel is convinced that the Respondent was aware of the Complainant’s activities under the name “molitvoslov.com” when he registered the Domain Name, since he copied the Complainant’s website. Subsequently, the Respondent started using the Domain Name for his own financial benefit, by placing commercial banners on the website he copied from the Complainant. This leads the Panel to the conclusion that the Respondent has registered and used the Domain Name “in an attempt to attract for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark”.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <molitvoslov.com> be transferred to the Complainant.
Date: July 23, 2013