WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Invest Komfort Spółka Akcyjna Sp. k. v. Ros Jygashvili, Parol Consulting Ltd./Whois Agent, Whois Privacy Protection Service, Inc.
Case No. D2015-0717
1. The Parties
The Complainant is Invest Komfort Spółka Akcyjna Sp. k. of Gdynia, Poland, represented by JWP Patent & Trademarks Attorneys, Poland.
The Respondents are Ros Jygashvili, Parol Consulting Ltd. of Wilmington, Delaware, United States of America; and Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America, self-represented.
2. The Domain Name and Registrar
The disputed domain name <invest-komfort.com> (the “Disputed Domain Name”) is registered with Domainsite.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2015. On April 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 22, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 23, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on the same day.
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 Respondents of the Complaint, and the proceeding commenced on April 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2015. The Response was filed with the Center on May 19, 2015.
The Center appointed Nick J. Gardner as the sole panelist in this matter on May 27, 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.
On June 2, 2015, the Complainant sent to the Center an unsolicited further filing.
4. Factual Background
The Complainant is a Polish company. It builds, develops and sells properties, in particular apartments.
On March 12, 2008, the Disputed Domain Name was registered. As at the date of this decision a website associated with the Disputed Domain Name (the “Respondents’ Website”) contains a substantial amount of material almost all of which is in Polish. It contains an English header as follows:
“Invest-Komfort.com The Association of The Persons Injured by Invest Komfort S.A.”
and contains a disclaimer text at the foot of the home page which reads as follows:
“Legal disclaimer. The information contained in this Web site is for general audience in sole purpose to reveal and publish trickery, dishonest and illicit practises and actions of the Polish developer Invest Komfort S.A. as well as to form a community of customers affected by forementioned practises to exchange opinions and undertake common legal actions. This domain name and web site is NOT for sale, as never was before.
Every and each next try of bribery will be prosecuted. Any changes and modifications of this website not approved by the admin require legal sentence of the US court of justice mailed with registered mail to the post address of the domain owner.”
Further facts appear under section 5., below.
5. Parties' Contentions
The Complainant says it is the owner of the following trademarks registered with the Polish Patent Office: word/device mark INVEST KOMFORT, No. R.186212, applied for on February 27, 2004 and registered on January 5, 2007; word mark INVEST KOMFORT, No. R.207815, applied for on February 9, 2007 and registered on April 29, 2008; and word/device trade mark INVEST KOMFORT, No. R.207816, applied for on February 9, 2007 and registered on April 29, 2008.
This Complaint arises out of a dispute between the Complainant and a Mr. Pawlak. The Complainant says that Mr. Pawlak previously owned the Disputed Domain Name and operated a website at it through which he presented what the Complainant says are a series of defamatory allegations about the Complainant and its business. An associated company of the Complainant, Invest Komfort S.A., commenced legal proceedings before a District Court in Gdańsk, Poland, against Mr. Pawlak and filed an application for prosecution of Mr. Pawlak for slander and defamation, inter alia through this website. The Complainant says that the Regional Court in Gdańsk on March 30, 2012 found Mr. Pawlak guilty of the above crimes.
The Complainant says the Disputed Domain Name is still being used in relation to a webpage which contains material concerning the Respondent’s views as to the Complainant and its business. The Complainant says this material includes allegations such as that:
- the Complainant installs “bugs” in each flat in the buildings built by the Complainant in order to spy the owners of the apartments for Belarusian mafia;
- keys to the apartments were copied by the Complainant and apartments were visited by unknown people who searched apartments, and suggestions that some owners of the apartments had health problems after such imaginary visits;
- false suggestions that there are many criminal investigations pending against the Complainant, even though there are none;
- offensive, vulgar vocabulary used against particular people associated with the Complainant;
- unsubstantiated, false allegations that judges in the proceedings against Mr. Pawlak were bribed and that the Complainant’s representatives are well known mafia lawyers.
The Complainant says that this material is wholly untrue and is defamatory of the Complainant and that its case in this regard has been upheld by courts in Poland. The Complainant’s evidence includes details of the legal proceedings in Poland, as referred to above.
The present registrant of the Disputed Domain Name is, according to the information disclosed by the Registrar, a Ros Jygashvili of a company called Parol Consulting Ltd. based in Delaware, USA. That company has filed a Response (see below). The Panel does not know what if any is the connection between this organisation and Mr. Pawlak.
The Complainant’s case can be summarised as follows.
a) The Disputed Domain Name is identical to its INVEST KOMFORT trade mark.
b) The Respondents do not have any rights or legitimate interests in the Disputed Domain Name.
c) The Respondents use the Disputed Domain Names in bad faith as use of what is in substance the Complainant’s name to attract Internet users to even a legitimate criticism site is not fair. In this case the site in question is not even legitimate as the material it contains is defamatory and untrue.
The Response submitted by Parol Consulting Ltd. is short and makes the following points:
It is not subject to the jurisdiction of anywhere except the Delaware Courts. The text of the disclaimer on the Respondents’ Website (see above) is referred to.
The INVEST KOMFORT trade marks belong to Invest Komfort S.A. not the Complainant Invest Komfort S.A s.k.
Invest Komfort S.A. only carries on business in Poland although customers which have been “tricked” by it come from all over the world.
The Response then simply quotes the Policy and says “the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark(s) or service mark(s) at issue”. The Response then goes on to set out paragraph 4(a)(iii) of the Policy verbatim.
Beyond the above points the Response contains no further material and does not respond to many of the Complainant’s allegations.
6. Discussion And Findings
(i) Preliminary Issues
Identity of Respondents
The Panel notes this is a case where one of the Respondents (Whois Agent, Whois Privacy Protection Service, Inc.) appears to be a privacy or proxy registration service while the other Respondent (Ros Jygashvili, Parol Consulting Ltd.) appears to be the substantive Respondent. The Panel in this case adopts the approach of most UDRP panels, as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.9, as follows “[m]ost panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant”. Accordingly this decision refers to both Respondents. It is not in practical terms necessary to distinguish which Respondent was responsible for specific acts.
The Respondents also dispute that they are subject to any jurisdiction other than the Delaware courts. It is the function of the Panel to decide this dispute in accordance with the Policy and the Rules. So far as the Panel is concerned the evidence establishes that the Respondents as the registrant of the Disputed Domain Name are parties to an agreement which contractually binds them to the Policy and the Rules. The Respondents have been duly served with the Complaint in accordance with the relevant applicable requirements and the Panel concludes this proceeding is properly constituted and it is able and required to proceed to render a decision.
Although this Complaint arises out of what appears to be primarily a Polish dispute, and the content of the Respondents’ Website is almost entirely in Polish, there is no dispute that the language of this proceeding is English. Given the language of the Registration Agreement for the Disputed Domain Name is English and absent any agreement to the contrary between the parties the Panel agrees that English is the correct language of these proceedings and the Panel proceeds accordingly (see paragraph 11 of the Rules).
Complainant’s Further Filing
In view of the Panel’s decision on the merits (see below) the Panel does not need to consider the Complainant’s further filing of June 2, 2015 or decide on its admissibility. Had the Panel needed to refer to this filing it would have provided the Respondents an opportunity to respond, which would have added unnecessary cost and delay to this proceeding.
(ii) Substantive Issues
Given the arguments and positions taken in the Complaint and Response, the Panel will proceed on the assumption that the Respondents’ Website comprises a criticism site containing complaints about the Complainant and its business. That much seems clear and not in dispute. The question of whether such content is true or false, and whether it is defamatory under any applicable laws, are not issues suitable for determination under the Policy. The Panel will assume, in the Respondents’ favour (and only for the purposes of this proceeding) that the content is either true or at least represent the Respondents’ genuinely held beliefs. Having made this assumption the Panel does not need to consider further the content of the Respondents’ website, or to request translations of the content. The Panel also does not need to consider the Polish proceedings relied upon by the Complainant.
The question for the Panel is whether the Complaint should succeed, given the stated assumption.
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
(i) the Disputed Domain Name is identical to or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondents have no rights or legitimate interests in the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant relies upon three registered INVEST KOMFORT trade marks (see above). The Respondents have raised an issue as to whether the Complainant is the proprietor of the trade marks in question or whether they are owned by a different company, identified by the Respondents as Invest Komfort S.A. The Panel has reviewed the arguments and evidence provided by the Parties in particular the certificates of registration of the trade marks relied upon. Trade mark No. R.186212 is registered in the name of Invest Komfort Spółka Akcyjna but Trade Marks Nos. R.207815 and R.207816 are registered in the name of Invest Komfort Spółka Akcyjna Spolka Komandytowa which (as the Panel understands it) is the Complainant in this Complaint. Accordingly, the Panel concludes that the Complainant has produced evidence which establishes on the balance of probabilities that it is the proprietor of two of the trade marks relied upon, namely R.207815 and R.207816.
The R.207815 trade mark is for the words INVEST KOMFORT. The Panel holds that the Disputed Domain Name is confusingly similar to this trade mark, the addition of the hyphen being a trivial difference and, as is normal, the “.com” suffix being ignored for the purposes of comparison.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trade mark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
“(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 organisation) 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.”
The Complainant has not authorised, licensed, or permitted the Respondents to register or use the Disputed Domain Name or to use the INVEST KOMFORT trade mark. The Complainant has prior rights in the INVEST KOMFORT trade mark which precede the Respondents’ registration of the Disputed Domain Name. However the Respondents rely upon paragraph 4(c)(iii) of the Policy above. Its case presumably is that in operating a bona fide criticism site it falls within this category. There is no evidence before the Panel that there is any commercial activity associated with the site so the question is whether using a domain name that is in substance the Complainant’s own name for such a site is legitimate.
In this regard, noting that the Complainant is not a US entity, the Panel adopts and agrees with the view set out as “View 1” in relation to paragraph 2.4 “Can a criticism site generate rights or legitimate interests in the disputed domain name” in the WIPO Overview 2.0. View 1 is as follows: “[t]he 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. That is especially the case if the respondent is using the trademark alone as the domain name (i.e., <trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner. Where the domain name comprises the protected trademark plus an additional, typically derogatory term (e.g., trademarksucks.tld>), some panels have applied View 2 below.” In the present case no additional terminology is included within the Disputed Domain Name to indicate the Respondents’ purpose in operating a criticism website.
Accordingly, the Panel finds that the Respondents have failed to establish they have rights or legitimate interests in the Disputed Domain Name. The second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
The issue here is whether the Respondents use of what is in substance the Complainant’s name, to identify its criticism site, amounts to registration and use in bad faith.
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location. ”
The Respondents have set out the text of this paragraph verbatim and presumably relies upon each of these. In these circumstances the Panel agrees with, and adopts the view of the panel set out in Anastasia International Inc. v. Domains by Proxy Inc./rumen kadiev, WIPO Case No. D2009-1416 as follows:
“Although the Complainant in the present case makes various assertions in terms of paragraph 4(b) of the Policy, the Panel does not believe that this case fits squarely within any of the non-exclusive circumstances provided therein. [omitted] The circumstances set out in paragraph 4(b) of the Policy are non-exclusive and in the present case, the Panel has reached the view that the disputed domain name was registered and used by the Respondent in bad faith for alternative reasons.
It is clear both from the Respondent's informal communication and from the content of the website associated with the disputed domain name that the Respondent’s intention from the outset was to express on the Internet certain views that are critical of the Complainant's business practices. As noted above, this in itself is a potentially legitimate and good faith activity. Nevertheless, for that purpose, the Respondent selected a domain name which is not its own name and which the Respondent evidently was aware was identical to the Complainant’s corporate and trading name. In so doing, the Respondent would also have been aware that the disputed domain name would be likely to make a misrepresentation to the typical Internet user that any associated website was owned and operated by the Complainant and that, as the panel in Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No. D2001-0376 puts it, the disputed domain name would ‘catch by surprise’ visitors intending to reach the Complainant’s website. In the Panel’s view, the consequence is that the Respondent’s actions are tainted, no matter whether it genuinely believed the criticisms or opinions expressed on the website associated with the disputed domain name and whether it was acting out of non-commercial or, as the Complainant asserts, commercial motives.”
The present Panel concludes that the same is the case here – the Respondents have adopted what is in substance the Complainant’s name for their criticism site and that amounts to registration and use in bad faith, irrespective of the content of the site.
As a result, and applying the principles in the above noted UDRP decisions, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <invest-komfort.com> be transferred to the Complainant.
Nick J. Gardner
Date: June 10, 2015