WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RoboForex (CY) Ltd v. Ekaterina Zhiltsova
Case No. D2016-0902
1. The Parties
Complainant is RoboForex (CY) Ltd of Limassol, Cyprus, represented by Merico Legal, Italy.
Respondent is Ekaterina Zhiltsova of Chelyabinsk, the Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <anti-roboforex.com> (the "Disputed Domain Name") is registered with Gandi SAS (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 9, 2016. On May 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 10, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 24, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 14, 2016.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on June 27, 2016. 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
Complainant is a company operating in the sector of the financial markets offering services on the foreign exchange ("forex") market. Complainant is the holder of inter alia the following registered trademarks, containing the verbal element "roboforex":
European Union trademark registered with the EUIPO under No. 012033461 in classes 9, 35, 36, 38 and 41 on December 26, 2013;
, Russian Federation trademark, registered with the National State Register of Trademarks and Service Marks of the Russian Federation under No. 513115 in classes 35 and 36 on May 14, 2014.
The Disputed Domain Name has been registered since April 22, 2014. Respondent has been using the Disputed Domain Name to refer to a website, criticizing Complainant's services. Upon notice of the Complaint, Respondent started using the Disputed Domain Name to refer to a website offering torrent files for download.
5. Parties' Contentions
Complainant considers the Disputed Domain Name to be confusingly similar to trademarks and service marks in which it claims to have rights. Complainant argues that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the Disputed Domain Name. Complainant claims that the Disputed Domain Name was registered and used in bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i. the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. 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.
The Panel will deal with each of these requirements in turn.
A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has established that there is a ROBOFOREX trademark in which it has rights. The trademark has been registered and used in the European Union and the Russian Federation.
The Disputed Domain Name, <anti-roboforex.com>, reproduces Complainant's trademark ROBOFOREX, adding the prefix "anti" and a hyphen. The Panel is of the opinion that the mere addition of a prefix and a hyphen to a complainant's trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi, WIPO Case No. D2012-1395, where the domain name <karenmillenoutlet-australia.com> was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing, WIPO Case No. D2012-0783, where the domain name <belstaffjackenoutlet.info> was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva / Contactprivacy.com, WIPO Case No. D2007-1168, where the domain name <download-limewire-now.com> was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word "download" because users typically download complainant's software).
The Panel considers that the prefix "anti" does not otherwise affect the Panel's assessment under this element despite being a negative or pejorative term. See paragraph 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.
Accordingly, Complainant has made out the first of the three elements of the Policy that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant has the burden of establishing that the respondent has no rights or legitimate interests in respect of the disputed domain name.
It is well established under the Policy that it is sufficient for a complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the respondent. See Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent's registration and use of the Disputed Domain Name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed or that Respondent made a good faith use of the Disputed Domain Name (infra).
Respondent did not reply to Complainant's arguments and decided not to take part in the administrative proceedings. This also serves as an indication of the absence of rights or legitimate interests in the Disputed Domain Name.
Therefore, the Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Disputed Domain Name, which has not been rebutted by Respondent. Accordingly, Complainant has made out the second of the three Policy elements.
C. Registered and used in bad faith
Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
In the present case, it is inconceivable that Respondent was unaware of Complainant and its trademark rights when it registered the Disputed Domain Name. The Disputed Domain name includes Complainant's ROBOFOREX trademark in its entirety, and the Disputed Domain Name used to refer to a website, containing a reproduction of Complainant's figurative trademark. As a result, it is apparent that Respondent had Complainant in mind when registering the disputed domain name. Therefore, the Panel finds that Respondent must have had knowledge of Complainant and its rights at the moment it registered the Disputed Domain Name, which suggests bad faith.
Respondent has been using the Disputed Domain Name to criticize Complainant's services, while reproducing Complainant's figurative trademark without prior authorization. Complainant submits that Respondent's criticism contains false information. By failing to respond to the Complaint, Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate. The Panel also took note of the fact that, upon notice of the Complaint, the Disputed Domain Name has been used to refer to a website offering (potentially harmful and illegal) downloads without any apparent reference to Complainant or its activities. The change of use of the website colors the Panel's view of Respondent's initial intentions in the registration and use of the Disputed Domain Name, and brings the Panel to the conclusion that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and used with the intention to unfairly damage Complainant's reputation, which demonstrates Respondent's 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 Disputed Domain Name, <anti-roboforex.com>, be transferred to Complainant.
Flip Jan Claude Petillion
Date: July 11, 2016