WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nicolas Gaiardo, A.V., Warning Trading Ood v. Anonymousspeech, Anonymousspeech
Case No. D2015-0575
1. The Parties
The Complainants are Nicolas Gaiardo, A.V. and Warning Trading Ood of Sofia, Bulgaria, represented internally.
The Respondent is Anonymousspeech, Anonymousspeech, of Tokyo, Japan.
2. The Domain Name and Registrar
The disputed domain name <warningtrading.com> is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed in French with the WIPO Arbitration and Mediation Center (the "Center") on April 1, 2015. On April 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 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. The Center sent an email communication to the Complainants on April 7, 2015 confirming that the Registration Agreement for the disputed domain name was English, and inviting the Complainants to submit evidence of an agreement between the Parties that the language of proceedings should be French; or submit the Complaint translated into English; or submit a request for French to be the language of proceedings. On April 8, 2015, the Complainants filed a request that the proceedings be suspended for a period of 30 days. The proceedings were suspended accordingly. On May 8, 2015, the Complainants filed a request that the proceedings be suspended for a further period of 30 days. The suspension was extended accordingly. On May 19, 2015, the Complainants filed an amended Complaint in English, and requested the reinstitution of the proceedings. On May 19, 2015, the Center sent a notice of reinstitution of the proceedings.
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 May 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 10, 2015.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on June 12, 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.
4. Factual Background
The Complainant Warning Trading Ood, seated in Bulgaria, holds the French combined trademark No. 411,5662, WT WARNING TRADING, registered with a priority date as of September 4, 2014 in classes 36, 41 et 45 of the Nice Classification. It notably carried out its activities of "assisting victims of financial criminal organizations" under the domain name <warning-trading.com>.
The Respondent registered the disputed domain name <warningtrading.com> on February 5, 2015. The website attached to the disputed domain name displays content heavily criticizing the Complainants and their activities and reproduces the Complainants' names, trademark and corporate identity on numerous occasions, including with pictures of the Complainants.
5. Parties' Contentions
The Complainants argue that the disputed domain name is identical to the WT WARNING TRADING trademark held by Warning Trading Ood. They consider that the Respondent has no rights or legitimate interests in the disputed domain name, which is merely used to denigrate the Complainants and their activities. In reproducing the Complainants' trademark and corporate identity on numerous occasions, as well as displaying pictures of the Complainants, the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Pursuant to paragraph 4(a) of the Policy, the Complainants must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainants have 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.
Prior to ruling on the merits, the Panel first has to assess a preliminary question, namely the language of the proceedings.
A. Language of the proceedings
In accordance with paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
In the present case, notwithstanding their knowledge that the Registration Agreement was in English, the Complainants initially filed their Complaint in French. Following the communication of the Center sent on April 7, 2015, the Complainants requested the proceedings to be suspended twice, namely on April 8, 2015 and May 8, 2015, arguably in an effort to settle the case. On May 19, 2015, the Complainants filed a translation of their Complaint in English and requested the proceedings to be reinstituted.
The Panel notes that the Respondent, in default, did not make any submissions on the issue of the language of proceedings. In light of the Complainants' submission of a Complaint translated into English, the Panel considers there no reason to deviate from the standard position set forth in paragraph 11(a) of the Rules, namely, that the language of proceedings shall be that of the Registration Agreement. The Panel has rendered its decision in English accordingly.
B. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainants have to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights.
The Complainant Warning Trading Ood proves to be the holder of the trademark WT WARNING TRADING.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629).
Such happens to be the case here. The mere deletion of the graphic WT element of the Complainants' combined trademark, which is generally not taken into account when assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, and the omission of the space between the words "warning" and "trading" fail to mitigate the clear similarity between the disputed domain name and the trademark.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
C. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainants have to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in a domain name "would require complainant to prove a negative, a difficult, if not impossible, task." Thus, in that decision, the panel opined that "[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion." Following that decision, subsequent panels developed a consensus view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to demonstrate its rights or legitimate interests in the domain name. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
In the present case, the Complainant Warning Trading Ood is the owner of the WT WARNING TRADING trademark. The Complainants have no business or other relationships with the Respondent. As a result, the Panel finds that the Complainants have made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
Consequently, it was up to the Respondent to demonstrate rights or legitimate interests by showing, among other circumstances, any of the following elements (see paragraph 4(c) of the Policy):
(i) Before any notice to it of the dispute, the Respondent used or made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The Respondent is commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the case at hand, the Respondent did not respond to the Complainants' allegations and therefore did not rebut the Complainants' prima facie case, failing to invoke any circumstances that could demonstrate any rights or legitimate interests in the disputed domain name.
The Respondent had the opportunity to rebut the Complainants' allegations by providing the Panel with evidence as to the allegations contained on its website. The Respondent chose not to do so and has to bear the consequences of its default. In light of the Panel's finding under the first element, namely that the disputed domain name is confusingly similar to the Complainants' trademark, the Panel adopts the view of prior UDRP panels, who have found that "the right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark." (See paragraph 2.4 of the WIPO Overview 2.0.) Accordingly, the holding of a website obviously used to portray the Complainants in a negative way, heavily criticizing their activities in what the Complainants assert to be a defamatory manner, as the Respondent does here through a domain name that is identical or confusingly similar to the Complainants' trademark, is not considered by this Panel as a legitimate interest.
In light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
D. Registered and Used in Bad Faith
In accordance with paragraph 4(a)(iii) of the Policy, for a complaint to succeed, the panel must be satisfied that the domain name has been registered and is being used in bad faith.
Bad faith requires a respondent to be aware of the complainant's trademarks. In the present case, there is no doubt that the Respondent was fully aware of the Complainants' trademarks when it registered the disputed domain name considering the content of the website at the disputed domain name focusing on the Complainants' activities, appearing to denigrate them.
The Complainants provide ample evidence that the disputed domain name was registered with the sole purpose of defaming the Complainants and their activities. The website attached to the disputed domain name reproduces the Complainants' name and corporate identity on numerous occasions, including various pictures. In this Panel's view, the Respondent's sole purpose in registering and using the disputed domain name, apparently to defame the Complainants via a domain name that is identical or confusingly similar to the Complainants' trademark, is not good faith registration and use.
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 <warningtrading.com> be transferred to the Complainant Warning Trading Ood.
Date: July 7, 2015