WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DBG Group Investments, LLC v. Viktor Masurkevich
Case No. D2017-1159
1. The Parties
The Complainant is DBG Group Investments, LLC of Dallas, Texas, United States of America, represented by Vorys, Sater, Seymour and Pease, LLP, United States of America.
The Respondent is Viktor Masurkevich of Makeeva, Ukraine, self- represented.
2. The Domain Names and Registrar
The disputed domain names <ecoquest-air.com> and <ecoquestair.com> are registered with Center of Ukrainian Internet Names (UKRNAMES).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2017. On June 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 26, 2017, 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. Pursuant to the Complaint submitted in English and the Registrar’s confirmation that Russian is the language of the registration agreement, on June 26, 2017 the Center requested Parties to submit their comments on the language of the proceeding. On June 28, 2017, the Complainant submitted its request for English to be the language of the proceeding, by reference to the Complaint. The Respondent submitted its comments on the language of the proceeding on June 29, 2017 requesting Ukrainina as the language of the proceeding, and asserting that it leased the disputed domain names to a third party. On July 3, 2017, the Complainant submitted its comments on the Respondent’s contention that the disputed domain names are leased to the third party.
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 the Respondent of the Complaint, and the proceedings commenced on July 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2017. On July 19, 2017 the Respondent filed a request for extension of the deadline for submission of the Response. On July 21, 2017 the Complainant submitted its comments on the Respondent’s request for extension asking the Center to deny it or at least significantly shorten the extension. Finally, the Response was filed with the Center on July 24, 2017.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on August 10, 2017. 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 acquired the majority of EcoQuest International’s assets in 2009, including the ECOQUEST mark. The Complainant uses the ECOQUEST mark through its subsidiary and licensee, Vollara, which provides air and water purification systems, healthy home products, including indoor purifiers.
The Complainant is an owner of the US trademark registration for the ECOQUEST word mark (No. 3062066), registered on February 28, 2006 for goods and services in class 35. The trademark registration was renewed for the period of 10 years on October 19, 2016.
The disputed domain name <ecoquestair.com> was registered on August 10, 2010, whereas the disputed domain name <ecoquest-air.com> was registered on July 9, 2014.
The websites hosted at the disputed domain names are identical and offer water and air purifiers.
The Complainant and its affiliates brought an action against the business “Ecoquest Air Repair” in Texas state court for trademark infringement and cybersquatting. On January 13, 2016, the court granted a default judgment against Ecoquest Air Repair awarding money damages and transfer of the <ecoquestair.com> domain name.
5. Parties’ Contentions
Firstly, the Complainant contended that the disputed domain names are confusingly similar to the ECOQUEST mark as they both contain it in its entirety. According to the Complainant, the mere addition of the word “air” after the ECOQUEST mark in the disputed domain names or the use of an additional hyphen in one of them does not undermine the confusing similarity. Moreover, the Complainant submitted that the word “air” is obviously related to the Complainant’s business of selling, among other products, air purifiers.
Secondly, the Complainants argued that the Respondent does not have rights or legitimate interests in the disputed domain names, as it is not using them in connection with a bona fide offering of goods or services. The Complainant emphasized that the Respondent has never been authorized or licensed by the Complainant or its subsidiaries to use their marks or to sell their products. The Complainant pointed out that the websites hosted at the disputed domain names offer substantially similar and/or counterfeit products. Additionally, the Complainant contended that it owns the FRESH AIR BY ECOQUEST mark which is explicitly used by the Respondent on the websites. The Complainant also claimed that the Respondent has never been legitimately (and commonly) known by the name “EcoQuest”.
Thirdly, the Complainant asserted that the disputed domain names were registered and are being used in bad faith. In particular, the Complainant contended that the Respondent was using the ECOQUEST mark and selling substantially similar and/or counterfeit products in order to confuse the Internet users with the Complainant’s business. The Complainant emphasized that the Respondent had included a “News” section on the websites hosted at the disputed domain names containing information unrelated to the Respondent’s offerings and its own purported business – each of which predates the registrations of the domain names altogether. The Complainants also noticed that the websites claim a copyright date of 2005, years before either <ecoquestair.com> or <ecoquest-air.com> were registered.
Firstly, in the communication of June 29, 2017, the Respondent stated that “domain names are leased to a third party, which is connected to me only by making rent payments for their use”.
Secondly, in the Response, the Respondent introduced itself in the following way: “Ecoquestair.com is a popular world-famous resource with a seven-year history, where innovative air cleaning products are being sold and which are shipped all over the world. One more important part of the brand - repair services for the cleaning products. Ecoquestair.com – is an integral name which is associated by customers with a complex approach which consists in selling and repairing of various innovative air cleaning products purchased in different places.” The Respondent also added that “All stated for domain Ecoquestair.com as argumentation should be considered as same for the domain Ecoquest-air.com”.
Thirdly, the Respondent asserted that the Complainant had not proven that the disputed domain names were confusingly similar to the Complainant’s mark. According to the Respondent, each of the disputed domain names include “a combination of three words, which symbolize the brand regarding selling and repairing of progressive air cleaning products through the world market and the word “air” is an integral part of this brand”. The Respondent also emphasized that there were a few trademark registrations for the ECOQUEST mark worldwide which did not belong to the Complainant. Moreover, the Respondent submitted that the Complainant’s mark was registered only in the United States in class 35, whereas the Respondent served customers from all around the world offering various services and products in other classes, i.e. repairing. Consequently, the Respondent contended that since the Internet users had access to the Complainant’s website hosted at <vollara.com> only from the location of the Complainant, there was no risk of confusion between the ECOQUEST and the disputed domain names.
Fourthly, the Respondent claimed that the Complainant had not proven that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent emphasized that the Complainant had not even pointed any product which was supposed to be counterfeited. Moreover, according to the Respondent, all his products were sold legally on the websites hosted at the disputed domain names and they did not violate anyone’s rights. The Respondent asserted that the Complainant’s position that it allegedly sold the Complainant‘s products as a representative of the Complainant had not been proven as well since it offered for sale products by different brands. The Respondent also claimed that similarity of its products to the Complainant’s products was only a result of operating in the air purification industry. Moreover, the Respondent presented products offered under the disputed domain names which had absolutely no relation to the Complainant. The Respondent concluded that the business based on the said websites constituted bona fide offering of goods and services.
Lastly, the Respondent denied bad faith allegations made by the Complainant. It claimed that “only legitimate products are being sold within Ecoquestair.com and the list of such products is much longer then Complainant’s one”. The Respondent further asserted that it had not used the Complainant’s FRESH AIR BY ECOQUEST mark on it websites but only a generic phrase “fresh air”. The Respondent emphasized that the disputed domain names had neither been registered for the purpose of renting nor selling. It was also not supposed to confuse or mislead the Internet users.
6. Discussion and Findings
(i) Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “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.”
The Complaint was filed in English. The Complainant requested English to be the language of the administrative proceeding. The Complainant asserted that the disputed domain names, the websites that they resolve to and the ECOQUEST mark are in English. Thus, the Complainant finds that it would be
unfairly disadvantaged by being forced to translate to Russian or Ukrainian not only the
Complaint, but also the relevant content of the websites. The Respondent requested Ukrainian to be the language of the proceedings. The Response was filed in English.
Given the fact that the websites hosted at the disputed domain name are entirely in English and the Respondent presented a good knowledge of English during the proceedings, the Panel finds that it is appropriate to allow the proceeding to be conducted in English as per paragraph 11(a) of the Rules.
(ii) Merits of the Case
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
A. Identical or Confusingly Similar
The disputed domain names <ecoquest-air.com> and <ecoquestair.com> contain the Complainant’s ECOQUEST mark in its entirety with addition of a generic word “air”. One of them includes also a hyphen.
In the Panel’s opinion, the mere addition of the generic word “air” does not serve to distinguish the disputed domain names from the Complainant’s mark. On the contrary, as the ECOQUEST mark is used in the air purifiers industry, this may even increase confusion of the Internet users who may think that the disputed domain names are owned by the Complainant or its authorized representative which is not the case. For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the suffix “.com” may be disregarded as being simply a necessary component of a generic Top-Level Domain (LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o., WIPO Case No. D2012-0607).
Therefore, the Panel finds that the disputed domain names are confusingly similar to the ECOQUEST mark and as a consequence, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition [“WIPO Overview 3.0”], section 2.1 and cases cited therein).
In the Panel’s opinion, the Complainant made a prima facie case. In particular, it presented screenshots from the websites that the disputed domain names resolve to and the website hosted at www.vollara.com” which prove that the products offer there are substantially similar. For example, the indoor purifier FreshAir Eco Box Cube which can be found under <ecoquest-air.com> and <ecoquestair.com> looks like the indoor purifier Airfresh Cube by Vollara and mirror the latter’s description (use of “ActivePure Technology, Certified SpaceTechnology™”). It substantiates the Complainant’s assertion that the websites hosted at <ecoquest-air.com> and <ecoquestair.com> offer either counterfeited goods or Vollara’s original products without its consent, while making the impression that they come from a legitimate source. The Panel also recognizes that the Complainant has neither authorized nor licensed the Respondent to use its mark. The Complainant has also no business relationship with the Respondent – the Respondent is not a reseller or distributor of the goods offered by the Complainant. Furthermore, the Respondent admitted that it also offered products at the websites which were not affiliated with the Complainant, which is not a bona fide offering under the circumstances. (See WIPO Overview 3.0, section 2.8.1).
The Respondent did not satisfy the said burden of production. The Respondent did not present any arguments nor evidence demonstrating the source of goods sold on his websites or rebutting the complainant’s contentions.
Thus, the Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
Paragraph 4(b) of the Policy gives non-exhaustive illustrations of bad faith registration and use, including the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”
Firstly, there is a clear contradiction in the Respondent’s submission regarding the purpose of registering the disputed domain names. At the beginning he clearly stated that the disputed domain names were rented and he only receives remuneration for them. This contention was not developed in the Response in which the Respondent alleged that the disputed domain names were not registered in order to be sold, rented or to harm anyone’s business. Given the above, the Panel finds that registration of the domain names confusingly similar to the ECOQUEST mark was made in bad faith.
It is equally clear to this Panel that the disputed domain names were also used in bad faith. As deliberated above, the Complainant substantiated its claims in relation to the goods sold at the Respondent’s websites – they are presented in a way to confuse the Internet users as to their source. The Respondent did not even try to explain the fact that the websites claim a copyright date predating its registration. The Respondent also failed to discuss its connection to company EcoQuest Air Repair mentioned on both websites which was ordered by the American court to transfer the domain name <ecoquestair.com> to the Complainant and Vollara LLC. The above circumstances justify the finding that the disputed domain names were used in bad faith.
In the light of above, the Panel decides that paragraph 4(a)(iii) of the Policy is satisfied.
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 names, <ecoquest-air.com> and <ecoquestair.com> be transferred to the Complainant.
Date: August 26, 2017