WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
win.rarGmbH v. Win Road Assistance Repairs Pvt. Ltd.
Case No. D2015-0398
1. The Parties
The Complainant is win.rarGmbH of Berlin, Germany, represented internally.
The Respondent is Win Road Assistance Repairs Pvt. Ltd. of Mumbai, Maharashtra, India, represented internally.
2. The Domain Name and Registrar
The disputed domain name <winrar.com> is registered with BigRock Solutions Pvt Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2015. On March 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 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 March 13, 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 March 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for filing a Response was April 5, 2015. On April 2, 2015 the Respondent submitted a request for an extension to file a Response. The due date filing a Response was extended to April 9, 2015. The Response was filed with the Center on April 9, 2015. The Complainant filed a supplemental filing on April 16, 2015. The Respondent filed a supplemental filing on April 21, 2015.
The Center appointed Adam Taylor, Paul M. DeCicco and The Hon Neil Brown Q.C. as panelists in this matter on May 12, 2015. 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.
4. Factual Background
Because the facts in this case are somewhat complicated, and because timings are important, the Panel considered that it would be helpful to set out a slightly more detailed factual summary than normal in this part of the decision.
The Complainant, a German company, distributes data compression software known as “WinRAR” under licence from Eugene and Alexandar Roshal, developers of the software. The Complainant and its predecessors have traded under this name since 1996. The Complainant has trading partners in some 80 countries worldwide. The Complainant’s own websites are at “www.win-rar.com” and “www.rarlab.com”.
The Complainant is the exclusive licensee of a number of trade marks for WINRAR owned by Eugene Roshal including International Registration no. 834821 for the word WINRAR, registered June 24, 2004, in class 9. The Complainant itself owns Indian trade mark no. 1526245 for the word WINRAR filed January 25, 2007, in class 9.
The disputed domain name was registered on August 29, 2006. The Respondent says that the disputed domain name was registered by the Respondent’s predecessor, a partnership in Mumbai, India, which had allegedly been trading under the name “Win Road Assistance Repairs” since September 1, 2005, offering vehicle maintenance and repairs.
The Respondent, an Indian company, was incorporated by the partners of the motor business on December 22, 2006 and allegedly took over that business.
The Respondent claims that, on February 15, 2007, it “entered into a partnership with some people to expand [its] business” under the name “WINRAR”.
The Respondent owns an Indian trade mark no. 1536350 filed March 2, 2007, for the term WINRAR plus device in class 37 (“garage repairs and installation services”).
The Complainant has not supplied any archive screenshots showing how the disputed domain name was used as a website in 2006 / 2007. However, according to the findings in a previous case which concerned the disputed domain name, discussed further below, until September 2007 the website at the disputed domain name “focused on zip software, free downloads, file converters and other products”. The panel added that, in October 2007, the complainant in that case ascertained that the respondent “was using a parking service under which the disputed domain name resolved to a website page containing advertising links and listings.”
There is evidence of a number of complaints by the Complainant’s customers in the period from April to September 2007 concerning alleged use of the disputed domain name for a website which was offering unauthorised versions of the Complainant’s products and/or for phishing.
On November 30, 2007 Eugene Roshal filed a UDRP case against the Respondent seeking transfer of the disputed domain name. See Eugene Roshal v. Win Road Assistance Repairs Pvt. Ltd, WIPO Case No. D2007‑1768 (“the Roshal Case”).
On January 4, 2008, a panel found bad faith in F. Hoffmann-La Roche AG v. Comdot internet services private limited/PrivacyProtect.org, WIPO Case No. D2007-1637 concerning the domain name <xenical‑al.com> registered in 2004. This was the first in a series of 17 UDRP decisions finding bad faith on the part of two companies Comdot Internet Services Private Limited and Compsys Domain Solutions Private Limited. These companies share a registered address and a common director with the Respondent (Vanita Sehgal).
On March 5, 2008, the complaint in the Roshal Case was rejected on grounds that the Respondent had demonstrated that it was commonly known by the disputed domain name under paragraph 4(c)(ii) of the Policy based on various documents produced by the Respondent showing that “Winrar” had been the trading name of a partnership known as “Win Road Assistance Repairs” since 2005.
Screenshots produced by the Complainant show that, at various times during February and March 2008, the website at the disputed domain name being used as a parking page with links relating to zip, file converters and other kinds of software.
Archive.org screenshots produced by the Respondent show extracts from motor services-related websites at the disputed domain name at various times starting from May 2008.
On September 25, 2008, an Indian company was incorporated under the name “Winrar Softwares Private Limited”. Ms. Vanita Sehgal was named as one of the directors.
Ms. Sehgal owns the following Indian trade marks filed in by her in 2009 (“the 2009 Trade Marks”):
- no. 1850490 for “Winrar.Toolbar” (stylised) filed August 13, 2009, in class 42 (“design and development of computer hardware and software”);
- no. 1850491 for “Winrar.Toolbar” (stylised) filed August 13, 2009, in class 35 (“advertising, business management, business administration, office functions);
- no. 1890707 for “Winrar.Software” (stylised) filed December 2, 2009, in class 39 (“transport; packaging and storage of goods/ travel arrangement”); and
- no. 1890708 for “Winrar.Software” (stylised) filed December 2, 2009, in class 42 (“design and development of computer hardware and software”).
The Complainant has produced screenshots showing that, at least during the period 2012-2014, there were websites at the disputed domain name which were devoted entirely to offering free downloads of what was purportedly the Complainant’s software. It is not in dispute that this version of the website was presented only to Internet users outside India and Germany.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions:
The disputed domain name is identical to the Complainant’s trade mark.
The Complainant is amongst the top data compressing software providers worldwide, with trading partners in some 80 countries and 100 million downloads per year via the Complainant’s own websites at “www.win‑rar.com” and “www.rarlab.com”
The Complainant owns registered trade marks as well as common law rights in the trade mark WINRAR. The Complainant has made substantial investment in advertising its brands including through its website.
The refiled complaint should be permitted because, soon after the Roshal Case and without the Complainant’s authority, the Respondent used the disputed domain name for a website with links to downloads of the Complainant’s own software.
The Respondent cannot show legitimate interests in the disputed domain name given that it used the disputed domain name to promote the Complainant’s software in order to divert business from the Complainant in bad faith.
The Respondent’s use of the disputed domain name to offer the Complainant’s software intentionally created a likelihood of confusion with the Complainant’s trade mark. This ran contrary to the Respondent’s claim in the Roshal Case that it had registered the disputed domain name to further and expand its own motor repair services business which, so the Respondent had asserted, was unconnected with the Complainant’s business. The website has confused the Complainant’s customers and provided them with a poor experience, thereby irreparably damaging the Complainant’s reputation. The Respondent has taken unfair advantage of the decision in its favour in the Roshal Case. The Respondent has no legitimate rights in the disputed domain name or else it would have used it only to further its own business. The above activities constitute registration and use of the disputed domain name in bad faith.
The applications for the 2009 Trade Marks and the incorporation of a company to carry out a software business following the Roshal Case are intended solely to try and demonstrate legitimate interests in the disputed domain name and are also further evidence of bad faith, again contradicting the Respondent’s claims in the Roshal Case. The Respondent should not be able to rely on such filings as constituting rights or legitimate interests.
Two companies associated with the Respondent, Compsys Domain Solutions Private Limited and Compdot Internet Services Private Limited, have been found to have registered and used domain names in bad faith in a total of at least 19 UDRP cases.
In Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company v.Venkateshwara Distributor Private Limited, NAF Claim Number No. FA0912001299746, a trade mark of Vanita Sehgal for HPD RIVERS was said to have been applied for in bad faith in connection with the domain name <hpdrivers.com>. Ms. Sehgal is therefore involved in a pattern of registering trade marks, as well as domain names, in bad faith.
The Complainant has received complaints from potential customers who downloaded software from the Respondent’s website which was identified as malware and, as a result, published negative reviews of the Complainant’s product and/or stopped using the software. This has irreparably damaged the Complainant’s reputation.
The Respondent’s adoption of its corporate name, on which it claimed the disputed domain name is based, was intended to circumvent the UDRP and without any intention of carrying out legitimate business under that company name. It has failed to file annual returns since 2007 and is liable to be struck off the register.
The following is a summary of the Respondent’s contentions:
The Respondent registered the disputed domain name because it was a shortened version of long business name: “WIN” for Win, “R” for “Road”, “A” for Assistance and “R” for repairs.
On February 15, 2007, the Respondent “entered into a partnership with some people to expand their business” under the name “WINRAR”.
The Respondent’s trade mark no. 153650 gives the Respondent exclusive rights over the trade mark WINRAR in India. Any objection thereto must be taken up with the competent authority.
The Respondent has no knowledge of the Complainant’s alleged trading activities.
The Complainant owns registered trade marks in classes 9 and 35 but the Respondent has a trade mark for class 37. The Complainant should address any trade mark issues to the relevant authority. For so long as it holds its trade mark, the Respondent has full rights to hold and use the disputed domain name.
The Respondent’s rights were clearly established in the Roshal Case.
A director of the Respondent filed for trade marks nos. 1850490 and 1850491 “knowing the devious ways of the [C]omplainant”.
The disputed domain name is not identical or confusingly similar to the Complainant’s trade marks. It is identical to the Respondent’s trade mark and its trading name.
The Respondent has been commonly known the name “WINRAR”. The board of the Respondent’s shop is headed “WINRAR TYRE PLUS”. The name “Winrar” also appears on advertising leaflets, business cards, invoices, letterhead, cheques, bank account, bank statement. Accordingly the Respondent is conducting an active business and its name was not designed to circumvent the UDRP without any intention to carry out a legitimate business. The Respondent operated a genuine website at the disputed domain name for Winrar Garage since 2008.
The Respondent’s business is “very local in nature” and so the Respondent allows other advertisers onto its website as is normal practice on the Internet. As traffic from outside India was of no benefit to the Respondent, it decided to allow partial use of its site by advertisers offering the Complainant’s actual software, not counterfeit versions. The Complainant does not provide commission to resellers when users upgrade to its paid software; instead the Complainant allows resellers to bundle its free software with a toolbar or other software. There are hundreds of such sites. The Complainant, not the Respondent, has derived all revenue from the sale of the software. A few months ago the Respondent stopped advertising the Complainant’s software and the loss of revenue must have prompted the Complainant to file this case.
The Respondent has never contacted the Complainant offering to sell the disputed domain name. It was the Complainant’s representative who has contacted the Respondent.
The Respondent has not disrupted the Complainant’s business or sought to do so. The parties are in no way competitors.
The Respondent reiterates that it registered the disputed domain name to expand its own business, not to block the Complainant or create a likelihood of confusion with the Complainant’s marks.
The Complainant is guilty of reverse domain name hijacking (“RDNH”). The Complainant has contacted the Respondent with different offers for the disputed domain name, which have failed, and now it is again resorting to the UDRP when there are no fresh grounds.
6. Discussion and Findings
A. Refiled Complaint
The Previous Case (referred to above) concerned the same respondent as in this case but the complainant was Eugene Roshal, the Complainant’s licensor, and not the Complainant itself. However, given the close relationship between the respective complainants, the Panel considers that this proceeding should be treated as a refiled complaint. See, e.g., HomeAway, Inc. v. Timothy Hall (aka Tim Hall), WIPO Case No. D2015-0211, where the panel took a similar approach.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.4, expresses the consensus view that:
“… [a] refiled case may only be accepted in limited circumstances. These circumstances include when the complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of natural justice or of due process has occurred, or that there was other serious misconduct in the original case (such as perjured evidence). A refiled complaint would usually also be accepted if it includes newly presented evidence that was reasonably unavailable to the complainant during the original case.
A re-filing complainant must clearly indicate the grounds allegedly justifying the refiling of the complaint. The provider with which such refiled complaint has been filed has responsibility for determining if, prima facie, the refiling complainant has indeed pleaded grounds which might justify entertaining the refiled complaint. An affirmative determination is a precondition for provider acceptance of the refiled complaint, and for panel determination of the refiling request and any decision on the merits. A re-filing complainant’s failure to clearly identify that its complaint is a re-filing of an earlier UDRP complaint may constitute a material omission for the purpose of any panel assessment of reverse domain name hijacking.”
Here, the Complainant has indeed asserted that the disputed domain name was the subject of an earlier UDRP decision and it has also identified potentially relevant new actions that occurred since that decision, including a significant change in use of the website at the disputed domain name. Without at this stage reaching any conclusion as to the materiality of such actions, which are discussed further below, the Panel considers that they justify the Center and Panel accepting the refiled Complaint.
B. Supplemental Filings
Both parties have made unsolicited supplemental filings.
Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 10(d) states: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Paragraph 12 states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”.
The principles which the Panel should apply in deciding whether or not to admit supplemental filings have been considered in many cases under the Policy. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003‑0447. The principles include: that additional evidence or 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 minimize 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.
Here, the Panel has decided not to admit the Complainant’s supplemental filing as it relates either to matters which the Complainant could reasonably have anticipated at the time of filing its Complaint or which are of marginal relevance to the main issues in this case. The Panel likewise disallows the Respondent’s supplemental filing which responds to the Complainant’s filing.
The Panel would add, however, that neither of the supplemental filings would have made any difference to the outcome of this case.
C. Identical or Confusingly Similar
The Complainant has rights in the mark WINRAR by virtue of its Indian registered trade mark for that term. The disputed domain name is identical to the trade mark, disregarding the domain name suffix.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
D. Rights or Legitimate Interests
As a preliminary matter, the Respondent claims that it was incorporated by the members of the partnership which originally registered the disputed domain name and that it carried on the same business as the partnership. Accordingly, the Panel treats the Respondent and its predecessor interchangeably and references to the Respondent below include its predecessor unless the context requires otherwise.
Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
The Complainant has established a prima facie case of lack of rights or legitimate interests in the disputed domain name. The prima facie case has been made out by, among other things, the facts that the Respondent:
(a) has chosen to use the Complainant’s trade mark in the disputed domain name, without making any alteration, addition to or subtraction, other than the addition of the generic Top-Level Domain (“gTLD”) “.com”;
(b) has used the disputed domain name in the manner described above;
(c) has done so without any authority from the trade mark owner;
(d) has used the disputed domain name to offer the Complainant’s software following the Roshal Case; and
(d) has been associated with a series of adverse UDRP decisions against companies connected with the Respondent which undermine the claims of rights or legitimate interests previously put forward by the Respondent in the Roshal Case.
As a prima facie case has thus been made out against the Respondent, the onus has therefore shifted to the Respondent and it remains to be seen whether the Respondent has submitted appropriate allegations and evidence which, when considered with all the evidence, are sufficient to rebut the prima facie case against it. The Panel finds that Respondent has not succeeded in doing so, for reasons explained below.
In support of its case for the rebuttal of the prima facie case against it, the Respondent submitted that it has been “commonly known” by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy. The Panel has carefully weighed the Respondent’s allegations and evidence on this issue, along with the rest of the evidence in the case.
A respondent in such a situation would be well advised to present its submissions and evidence in an open and forthcoming manner. Any sign of obfuscation or lack of candour is likely to count against it.
The Panel notes the following:
The Respondent’s evidence of use of “Winrar”
The evidence produced by the Respondent does not show clear and consistent use of the name reflected in the disputed domain name, namely “Winrar”. Some of the documents refer to “Winrar” alone. Others refer to “Winrar” as part of a larger name, e.g., “Winrar Tyres”. There is an alleged shop sign bearing the name “Winrar Tyre Plus”. The Respondent has not explained these variations in name. Some of the documents allegedly on printed company letterhead contain spelling errors such as “panting” and “repaits”. In one of the documents, there is an unusually large gap between the name “Winrar” and the address.
Furthermore, the Respondent has produced no evidence indicating that it is commonly, i.e., generally, known by the name “Winrar” in the sense that a meaningful number of people know it by that name. There is no evidence of turnover, marketing spend, website visitor statistics or anything else indicative of a significant level of business.
The February 2007 “partnership”
The Respondent claims that, on February 15, 2007, it “entered into a partnership with some people to expand [its] business” under the name “WINRAR”. The Respondent does not identify the “people” or give any detail of the nature of the partnership or explain exactly how the business was to be expanded or indeed whether it was in fact expanded. Was the alleged expansion referable to the alleged motor services business or perhaps its later move into software? The Respondent’s claims here are vague and unsupported.
The Respondent’s 2007 trade mark
The Respondent relies heavily on its 2007 trade mark for WINRAR in class 37. However, as explained in paragraph 2.7 of WIPO Overview 2.0, a respondent’s registration of a trade mark corresponding to the disputed domain name will not suffice to establish rights or legitimate interests if the overall circumstances demonstrate it was obtained primarily to circumvent the application of the UDRP.
The Panel suspects that the trade mark was indeed applied for in bad faith in light of the fact that the Respondent’s director later applied for the 2009 Trade Marks, which the Panel has concluded below were likely to have been intended to circumvent the UDRP, and has indeed registered a company as part of the same design.
The Panel also notes that the Respondent appears to have engaged in a pattern of registering trade marks intended to evade the UDRP. In particular it has not specifically denied (and so effectively admitted) its connection with another UDRP case, raised by the Complainant, where the panel appeared to conclude that a registered trade mark for HPD RIVER owned by the Respondent’s director and invoked by the respondent in defence of the domain name <hpdrivers.com> had been applied for in bad faith. See Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company v.Venkateshwara Distributor Private Limited, supra.
The Respondent’s use of the disputed domain name
As shown in section 4 above, there is no evidence of the Respondent’s use of the disputed domain name for a website relating to motor services until May 2008 – after the decision in the Roshal Case and some two years after the disputed domain name was first registered. This is despite the Respondent’s claim in the Roshal Case, and in this one, that it registered the disputed domain name to further and expand its motor services business. The Respondent has not explained the reason for the delay.
Paragraph 4.5 of WIPO Overview 2.0 expresses the consensus view that UDRP panels may undertake limited factual research into matters of public record to see how the disputed domain name may have been used in the relevant past. The Panel did indeed visit the website and found that it redirects to a website at “www.winrarindia.in”, comprising just a “Welcome to Winrar” banner with some images of motor tools, a navigation bar and a Google search box on the home page. The “Services” page states:
“Specialists in: Computerised Wheel Alignment & Wheel Balancing & Tyres.
All Imported and Indian Car
- Denting Painting,
- Accident Job,
- Car Servicing AC work”
The “Wheel Alignment” page contains three photographs of a wheel balancing machine. The “Customer” page says: “THANK YOU FOR VISITING. THIS PAGE IS UNDER CONSTRUCTION.” The “Contact Us” page contains the Respondent’s name, address and email address but no telephone number.
So, all in all, a somewhat minimal website.
Strikingly, not one of the documents produced by the Respondent, including alleged advertising pamphlets and business cards, refers to the actual domain name / website itself, i.e., “www.winrar.com”, which one might have expected if the Respondent had genuinely registered the disputed domain name for use in conjunction with a motor services business, as it claims.
Accordingly, the evidence adduced by the Respondent has not convinced the Panel on the balance of probabilities that its belated motor services-related website is genuine rather than one assembled to support the Respondent’s claims to have registered the disputed domain name for a motor services business. The Panel tends to support the latter interpretation.
In contrast, the evidence shows that from a much earlier point, at least April 2007, the disputed domain name was being used for a parking page with sponsored links relating to exactly the kind of specialist software distributed by the Complainant. The Respondent fails to address this usage of its site.
And, from at least 2012 until a few months ago, the Respondent devoted the website to an offering of the Complainant’s own software. The Respondent has given a vague explanation for the latter, claiming that because its business was local in nature it decided to allow “partial” use of its site by “advertisers” offering the Complainant’s software. By this, it apparently means that website visitors from India were shown the motor services-related website and visitors from other countries were shown the site offering the Complainant’s software. The Complainant asserted, and the Respondent did not deny, that visitors from Germany were also shown the motor services-related website; on the assumption that this is so, the Panel draws the inference that this may well have been because the Respondent wanted to conceal from the Complainant, located in Germany, the use of the disputed domain name and the Respondent’s site to offer the Complainant’s own software.
The parties disagree as to whether the Respondent was offering the Complainant’s software or a counterfeit version thereof. The Panel is not in a position to judge. However, what is clear to the Panel is that the Respondent’s response raises more questions than it answers. The Respondent has not identified the alleged advertisers, let alone supplied the date or details of any advertising agreement – in contrast to the significant number of documents produced in relation to other aspects of the case. The Panel therefore doubts the involvement of alleged third party advertisers but, even if there was some such arrangement, the Respondent would remain responsible for the use of its site.
In any case, the Respondent has failed to explain why, despite its claim in the Roshal Case that it registered the disputed domain name to further and expand its motor services business and that the parties were in no way competitors, it later chose to make the somewhat unusual leap from motor services to distribution of the Complainant’s comparatively niche software product. Even if the Respondent did in fact consider that its business was “local” and that it wanted to use its domain name / website to attract business from users abroad, the fact that the Respondent or its “advertisers” selected the Complainant’s software as the subject matter for that venture can only have been because the Respondent intended to capitalise on the identity of the disputed domain name with the Complainant’s name / trade mark.
At the very least, such a misuse of the disputed domain name to trade on the Complainant’s mark seriously discredits the Respondent’s claim to have rights or legitimate interests in the disputed domain name.
The incorporation of “Winrar Softwares Private Limited” and the 2009 Trade Marks
The incorporation of Winrar Softwares Private Limited in 2008 and the registration of the 2009 Trade Marks for “Winrar Software” and “Winrar Toolbar” by the Respondent’s director following the Roshal Case do not assist the Respondent. In the Panel’s view, those steps were likely to have been intended to circumvent the UDRP by projecting a veneer of respectability over the Respondent’s proposed offering of the Complainant’s software under the disputed domain name, which comprised the Complainant’s unadorned name and trade mark.
17 adverse UDRP decisions against Respondent-connected entities
The Respondent issues a blanket denial regarding the 17 adverse UDRP decisions but it makes no serious attempt to deny its connection with the respondents in those cases or to otherwise escape culpability. Of course the Respondent’s involvement in those cases is not dispositive here but it does call the Respondent’s credibility seriously into question. The decision in the Roshal Case makes no mention of these other cases, which is not surprising as 14 of them post-dated the decision in the Roshal Case; and the three which pre-dated it all came after the complaint. Clearly, at the time of the earlier decision, neither the panel nor the complainant in the Roshal Case had any reason to be aware of any of these cases or of the Respondent’s connection with them.
The Panel must use its discretion and decide whether, on the balance of probabilities, the Respondent has satisfactorily explained and evidenced its claim that it has genuinely used the name “Winrar” in connection with motor services and that it is commonly, i.e., generally, known by that name.
The Panel is not satisfied on the totality of evidence that the Respondent has done so. In the Panel’s view, the following matters, discussed in detail above, seriously undermine credibility of the Respondent’s claim to be commonly known by the name “Winrar” in connection with motor services: the gaps and inconsistencies in the documentation produced by the Respondent; the lack of evidence of any significant level of business by the Respondent; the various vague and unsupported claims by the Respondent in connection with the motor services business; the evidence of the Respondent’s tendency to engage in complex, multifaceted schemes (including registration of companies and trade marks) designed to defend the registration of domain names reflecting third party trade marks; the original, early and unexplained use of the website at the disputed domain name for sponsored links referable to the Complainant’s business compared to the belated and somewhat flimsy nature of the motor services version of the Respondent’s website; the Respondent’s use of the disputed domain name to offer the Complainant’s own software following the Roshal Case; and the Respondent’s connection with the 17 adverse UDRP cases.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
E. Registered and Used in Bad Faith
In the Roshal Case, the panel indicated that there would have been difficulties for the complainant in proving that the disputed domain name was registered in bad faith as there was no decisive evidence before that panel that the Respondent was actually aware of the complainant’s mark and that it was hard to infer that the Respondent in Mumbai, India, would necessarily have known of the fame of a Russian software compression and archiving company, which conducted a specialized business for persons in the computer industry. The panel added that bad faith use could easily be inferred, because a registrant must take responsibility for the contents of a website and the website at the disputed domain name initially diverted potential customers of the Complainant by way of click-through services.
As explained above, the Panel in this case has the benefit of significant additional evidence that was not available to the panel in the Roshal Case, including the fact of the Respondent’s connection with 17 UDRP decisions finding bad faith in the case of domain names reflecting trade marks of complainants located in multiple countries in wide range of industries, most of which involved use of the domain name for parking pages with sponsored links to goods / services competing with those of the trade mark owner.
In one of those cases, the respondent was described as “a serial cybersquatter”. See paragraph 6.60 in Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited / COMDOT INTERNET SERVICES PVT. LTD., LAKSH INTERNET SOLUTIONS PRIVATE LIMITED., PLUTO DOMAIN SERVICES PRIVATE LTD., COMPSYS DOMAIN SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1675.
The Panel notes that the Respondent has failed to address the early use of the disputed domain name for sponsored software links. In its response in the Roshal Case, the Respondent simply claimed that it had not used the disputed domain name at all prior to the motor services-related website. The Panel considers that the Respondent’s connection with the 17 adverse UDRP decisions creates a strong inference that the Respondent was very well aware of the Complainant when it registered the disputed domain name and, relatively soon thereafter, used it for a parking page with sponsored software links and that the Respondent was not as naïve as it may have appeared to the panel in the Roshal Case.
As mentioned in section 6C above, the Respondent has not convinced the Panel that its belated motor services-related website is genuine rather than one assembled to support the Respondent’s claims to have registered the disputed domain name for a motor services business.
Then there is further evidence of the Respondent’s use of the disputed domain name after the Roshal Case specifically to offer the Complainant’s software together with the associated defensive steps. While this occurred well after the registration of the disputed domain name, nonetheless it causes the Panel to question the Respondent’s bona fides as at the date of registration.
On the basis of the totality of the evidence, the Panel has concluded on the balance of probabilities that there is a serious doubt over the credibility of the Respondent’s version of events, that there was some kind of illicit scheme here (albeit that the exact details are unclear), that the Respondent was aware of the Complainant as at the date of registration of the disputed domain name and that it registered the disputed domain name in bad faith specifically to take unfair advantage of the Complainant’s rights in the WINRAR mark.
The Panel also concludes that the Respondent has used the disputed domain name in bad faith, both by means of the parking page with sponsored links to software products competing with those of the Complainant and, later, when it used the disputed domain name specifically to offer the Complainant’s software.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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 <winrar.com> be transferred to the Complainant.
Paul M. DeCicco
The Hon Neil Brown Q.C.
Date: June 2, 2015