WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A Medium Corporation v. Marat Mukhamet
Case No. D2018-1860
1. The Parties
The Complainant is A Medium Corporation of San Francisco, California, United States of America, represented by Crowell & Moring, LLP, United States of America.
The Respondent is Marat Mukhamet of Amurskaya Oblast, the Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <mediurn.com> (“Disputed Domain Name”) is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2018. On August 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 16, 2018, 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. On the same date, the Center sent an email communication to the Parties in both English and Russian in regard to the language of the proceedings. On August 19, 2018, the Complainant requested English to be the language of the proceedings. The Respondent did not comment on the language of the proceedings.
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 in both English and Russian, and the proceedings commenced on August 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2018.
The Center appointed Mariya Koval as the sole panelist in this matter on September 25, 2018. 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 is an online publishing platform, which has been developed by Twitter co-founder Evan Williams, and was launched in 2012. The Complainant is an online resource which contains professional and amateur stories, commentaries, essays, art and other media content in the fields of culture, science, design, politics, entrepreneurship and others. Since its founding the Complainant has spent significant amounts for promotion and advertising its MEDIUM Trademark.
The Complainant owns United States Registration No. 5,015,382 in respect of classes 9, 35, 38, 41, 42, and 45, registered on August 9, 2016.
The Complainant operates the domain name <medium.com> containing its MEDIUM Trademark for promotion of its services.
According to the current record, the Disputed Domain Name was registered on July 29, 2018. According to Annex C of the Complaint the Disputed Domain Name resolved to a website, landing page of which contains a fraudulent offer of a distribution (commonly known as an “airdrop”) of Ethereum (cryptocurrency) with a high rate of return. The Disputed Domain Name is currently inactive.
5. Parties’ Contentions
The Complainant contends that the Disputed Domain Name is virtually identical to its famous MEDIUM Trademark and that the mere alteration of “medium” to “mediurn” does not alleviate any similarity between the Disputed Domain Name and the Complainant’s MEDIUM Trademark. The Complainant also notes that the MEDIUM Trademark was both famous and distinctive at the time when the Respondent registered the Disputed Domain Name.
The Complainant further contends that the Respondent is not commonly known by the name “Medium”, as a legal entity or otherwise and that the Respondent has not been licensed or otherwise authorized by the Complainant to use its MEDIUM Trademark, including use in the Disputed Domain Name.
The Complainant asserts that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods and services, moreover the Respondent defrauds the Internet users and causes them to believe that they are participating in an airdrop of cryptocurrency Ethereum sponsored by the Complainant.
The Complainant further claims that the Respondent registered and is using the Disputed Domain Name in bad faith in view of the landing page for the website to which the Disputed Domain Name resolves appears much like the Complainant’s website and in view of the Respondent in each page of the website associates itself with the Complainant’s MEDIUM Trademark.
The Complainant next argues that the Respondent registered the Disputed Domain Name solely for the purpose of intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s MEDIUM Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the fake products and services offered on the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or 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 by the Respondent in bad faith.
6.1. Language of Proceedings
The Registrar affirmed that the language of the Registration Agreement for the Disputed Domain Name is Russian.
Pursuant to paragraph 11 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.
The Complaint has been submitted in English and the Complainant requests that English be the language of this proceedings grounding its request on that the Respondent appears to be very familiar with the English language since the Disputed Domain Name resolves to a website containing exclusively English language content.
According to paragraph 10(c) of the Rules the Panel shall ensure that the administrative proceeding takes place with due expedition.
The Panel takes into consideration that the Respondent, in spite of receiving the Center’s notice of the proceeding and the language of the proceedings in both English and Russian, did not file any submissions regarding the language of the proceeding, did not file a response and does not in any way participate in this proceeding.
The Panel also considers that in view of the content of the website under the Disputed Domain Name being completely in English, it is clear that the Respondent is well familiar with the English language.
In light of the above, the Panel considers that requesting the Complainant to translate the Complaint and all attached documents into Russian would result in unreasonable additional expenses for the Complainant and substantial delay of this proceeding.
Having considered all the circumstances of this case, the Panel concludes under paragraph 11(a) of the Rules that the language of this proceeding shall be English.
6.2. Substantive Matters
A. Identical or Confusingly Similar
The Complainant is the owner of the United States Registration for the MEDIUM Trademark since 2016.
The Disputed Domain Name resembles the Complainant’s registered MEDIUM Trademark; only the last letter “m” has been changed to two letters “r” and “n”. It is relevant to note for purposes of its assessment that the letters “rn” standing side-by-side may be visually perceived as one letter “m”. The Disputed Domain Name is a plain example of “typosquatting” when the spelling of a trademark has been minimally changed by the substitution of two letters. In fact it seems as if the Respondent intentionally chose these two letters for confusing similarity with the Complainant’s MEDIUM Trademark and consequently – for deception of Internet users. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is normally considered by panels to be confusingly similar to the relevant mark for purposes of the first element.
The Panel finds that replacement of one letter by two letters in this case is insufficient to distinguish the Disputed Domain Name from the Complainant’s Trademark. The generic Top-Level-Domain (“gTLD”) “.com” is generally disregarded for the purposes of assessing confusing similarity under the Policy.
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the MEDIUM Trademark in which the Complainant has rights. Accordingly the Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has declared that it did not license or otherwise authorize the Respondent to use its MEDIUM Trademark in any manner.
The Respondent registered the Disputed Domain Name after the Complainant had acquired its trademark rights and after the Complainant’s first use of the MEDIUM Trademark. The Panel finds that there is no evidence that the Respondent, being a natural person, is known by the Disputed Domain Name, as referred in paragraph 4(c)(ii) of the Policy.
Furthermore, the Respondent was using the Disputed Domain Name for a fraud scheme, namely the landing page of the website, to which the Disputed Domain Name resolves, containing the proposition to the Internet users of distribution of Ethereum (cryptocurrency) for an exchange with a high rate of return. In fact the Respondent obviously used the Disputed Domain Name for receiving money from the website’s visitors. Such Respondent’s behavior in no way may be considered as a bona fide offering of goods and services. According to section 2.13.1 of the WIPO Overview 3.0, panels have categorically held that the use of a domain name for illegal activity (e.g. the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, to other types of fraud) can never confer rights or legitimate interests on a respondent.
The Respondent’s website landing page clearly contains indication of the MEDIUM Trademark, placed in the top of the page. Accordingly, there are no doubts that the Respondent, registering the Disputed Domain Name, had the aim to confuse the Internet users that its website is connected with the Complainant. Moreover, the landing page is very similar to the Complainant’s website. In accordance with the WIPO Overview 3.0, section 2.5 fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner.
Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the Disputed Domain Name.
In view of the above the Panel finds that the Respondent does not have rights or legitimate interests in the Disputed Domain Name and accordingly the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates the following circumstances, but without limitation, 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 [respondent] 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 online 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 website or location.
The fact that the Respondent is engaged in a fraudulent scheme by using the Disputed Domain Name evidences a clear bad faith, see e.g. OLX, Inc. v. J D Mason Singh, WIPO Case No. D2014-1037 (there is no better evidence of bad faith than a case like this where a fraudulent phishing scheme is set up with the help of a domain name that contains the trademark of a company the customers of which are being misled and deceived into believing they are dealing with the owner of the trademark).
In the absence of any explanation from the Respondent it can be concluded that the Respondent registered the Disputed Domain Name for fraudulent purposes by creating a likelihood of confusion with the Complainant’s MEDIUM Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website that constitutes the registration and use in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Moreover, in view of the Respondent has placed the Complainant’s MEDIUM Trademark on its website under the Disputed Domain Name, which at the same time differs from the Complainant’s Trademark by two last letters, it is obvious that the Respondent was well aware of the Complainant’s Trademark and by using the Complainant’s Trademark the Respondent tried to attract Internet users to his website, taking advantage of the Complainant’s reputation.
The Respondent’s use of a privacy service combined with a failure to submit a response and, as a result, to provide any evidence of good faith registration and use of the Disputed Domain Name is an additional indication of bad faith.
Accordingly, the Panel finds that the Complainant has met the requirements of paragraph 4(a)(iii) 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 <mediurn.com> be transferred to the Complainant.
Date: October 8, 2018