WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vertu Corporation Limited v. Alexander Misior, Luxov Media Company
Case No. D2015-0212
1. The Parties
The Complainant is Vertu Corporation Limited of Hampshire, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Stobbs IP Limited, United Kingdom.
The Respondent is Alexander Misior, Luxov Media Company of Saint-Petersburg, Russian Federation ("Russia").
2. The Domain Name and Registrar
The disputed domain name <vertu-replica.com> is registered with FastDomain, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 9, 2015. On February 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on February 20, 2015.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2015. The Center received an informal communication from the Respondent on February 25, 2015. The Respondent did not file a formal Response. The Center informed the Parties of the commencement of the Panel appointment process on March 24, 2015.
The Center appointed Edoardo Fano as the sole panelist in this matter on April 9, 2015. 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant bought the brand VERTU in 2012 from Nokia Co., which created the brand VERTU in 1998 in relation to luxury mobile phones. The Complainant operates in more than 60 countries, including Russia, the Respondent's country.
The Complainant owns several trademark registrations for VERTU, among which:
- Community Trademark Registration No. 002486603, applied for on December 3, 2001;
- International Trademark Registration No. 759086, registered on June 7, 2001, designating the Russian Federation among other countries.
The Complainant provided evidence in support of the above.
The disputed domain name <vertu-replica.com> was registered on June 9, 2014. At the time of filing of the Complaint, the disputed domain name resolved to a website where counterfeit VERTU phones are offered for sale.
5. Parties' Contentions
The Complainant states that the disputed domain name <vertu-replica.com> is confusingly similar to its trademark VERTU.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorised by the Complainant to register the disputed domain name or to use its trademark within the concerned website, nor is the website offering bona fide goods for sale.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith, since it was registered with the only purpose to disrupt the business of the Complainant and attracting Internet users for commercial gain by creating confusion with the Complainant's trademark.
The Respondent has made no reply to the Complainant's contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences by the panel, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark VERTU both by registration and acquired reputation and that the disputed domain name <vertu-replica.com> is confusingly similar to the trademark VERTU.
Regarding the addition of the generic word "replica", the Panel notes that it is now well established that the addition of generic terms to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the word "replica" does not therefore prevent the disputed domain name from being confusingly similar to the Complainant's trademark. To the extent that one could argue that "replica" mitigates the confusing similarity between the disputed domain name and the trademark, the Panel notes prior UDRP panels have not found such arguments persuasive. See Chopard International S.A. v. Vladimit Kozlov, WIPO Case No. D2007-1544.
It is also well accepted that a generic Top-Level Domain ("gTLD") suffix, in this case ".com", may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant's trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a Response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that "for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] web site or location."
Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant's trademark VERTU in the field of mobile phones is clearly established and the Panel finds that the Respondent knew that the disputed domain name <vertu-replica.com> was confusingly similar to the Complainant's trademark at the time of registration. This is also confirmed by the fact that the word added to the Complainant's trademark VERTU in the disputed domain name, namely "replica", refers to supposedly counterfeit phones bearing the Complainant's trademark VERTU.
The Panel further notes that the disputed domain name is also used in bad faith since the Respondent is trying to attract Internet users to its website by creating likelihood of confusion with the Complainant's trademark VERTU in order to sell counterfeit mobile phones bearing the Complainant's trademark VERTU, an activity clearly detrimental to the Complainant's business. The Panel has little doubt that the products sold under the disputed domain name are counterfeit as the website refers to them as "replica" vertu phones and offers them at a substantially lower price than the genuine article.
The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order both to disrupt the Complainant's business, in accordance with paragraph 4(b)(iii) of the Policy, and to attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For all 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 <vertu-replica.com> be transferred to the Complainant.
Date: April 20, 2015