WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LLC «Vocord SoftLab» v. Perfect Privacy, LLC / Dmitry Zavarikin
Case No. D2018-2734
1. The Parties
The Complainant is LLC “Vocord SoftLab” of Moscow, Russian Federation, represented by Andrey Ostanin, Russian Federation.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America / Dmitry Zavarikin of Moscow, Russian Federation, self-represented.
2. The Domain Names and Registrar
The disputed domain names <facematica.com>, <vocord.com>, and <vocord.net> are registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2018. On November 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 29, 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.
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 December 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2018. On December 24, 2018, the Respondent requested a four-day extension in which to submit its Response, pursuant to paragraph 5(b) of the Rules. The Response was filed with the Center on December 31, 2018. The Complainant submitted a supplemental filing to the Center on January 5, 2019. On January 17, 2019, the Respondent submitted a supplemental filing to the Center.
The Center appointed Adam Taylor, David E. Sorkin, and David H. Bernstein as panelists in this matter on February 11, 2019. The Panel finds that it was properly constituted. Each member of 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 Respondent registered the disputed domain names <vocord.net> on August 18, 1999, and <vocord.com> on August 24, 1999.
In 1999, the Respondent incorporated a number of Russian companies of which he was the 100 percent owner including ZAO Vocord Telecom. 1 ZAO Vocord Telecom registered <vocord.ru> on December 6, 1999.
From 1999, the Respondent used the disputed domain names <vocord.net> and <vocord.com> for websites promoting his above-mentioned wholly-owned companies, all of which were involved in the development and supply of voice technology software.
At some point thereafter – the dates and details are unclear – a third party (“the Partner”) acquired an interest in some of the Respondent’s companies. This may have occurred around 2006, when the Respondent entered into an employment contract with ZAO Vocord Telecom.
On March 23, 2010, the Complainant was incorporated, with the Respondent as the majority shareholder and the Partner as the minority shareholder.
The Complainant owns Russian registered trade mark no. 427459 for VOCORD in classes 9, 37, 38, 42, and 45, filed in January 11, 2010, by one of the Respondent’s wholly-owned companies and registered January 31, 2011. This trade mark was assigned to the Complainant in 2015.
In 2011, the Complainant acquired all of the shares in ZAO Vocord Telecom.
The Complainant owns a Russian registered trade mark no. 630148 for FACEMATICA, priority date December 12, 2016, registered September 13, 2017, in classes 9 and 42.
The Respondent registered <facematica.com>, <facematica.ru>, and <facematica.ai> on August 1, 2017.
The Respondent sold his shareholding in the Complainant to the Partner at some point in July or August 2018.
On July 20, 2018, the managing director of the Complainant emailed the Respondent offering to buy the disputed domain name <vocord.com> as well as <vocord.ai> and <facematica.ai> at cost. The Respondent responded on July 24, 2018, suggesting discussion of the terms of a buy-out of these domain names. The Respondent sent a further email on July 26, 2018, saying that transfer would be technically difficult and proposing to retain the domain names subject to certain conditions including a 50-year licence and payment of RUB 100,000.
On or about July 30, 2018, the Judicial Division for Civil Cases of the Moscow City Court ordered that “Tulopova LN” transfer the domain name <facematica.ru> to the Complainant.
At the time of Complaint notification, the disputed domain name <facematica.com> resolved to a webpage under construction, the disputed domain name <vocord.com> contained information about “Vocord” companies, and the disputed domain name <vocord.net> resolved to a website featuring pay-per-click links.
5. Parties’ Contentions
A summary of the Complainant’s contentions is as follows:
The disputed domain names are identical and/or confusingly similar to the Complainant’s registered trade marks.
The disputed domain name <vocord.com> is also identical to the domain name <vocord.ru>, which the Complainant has used since 1999.
The Respondent lacks rights or legitimate interests in the disputed domain names, which have been registered and are being used in bad faith.
The Complainant and/or ZAO Vocord Telecom (which is 100 percent owned by the Complainant) have supplied computer software under the name “Vocord” since 1999. ZAO Vocord Telecom supports this claim by the Complainant.
While the Respondent registered the domain name <vocord.ru> in the company name ZAO Vocord Telecom on December 6, 1999, he registered the disputed domain names <vocord.net> and <vocord.com> in his personal name but concealed it behind a privacy service for the purpose of sale to the Complainant.
As a result of the Respondent’s access to the Complainant’s email system as an employee and co-owner, the Respondent later registered the disputed domain name <facematica.com> for sale to the Complainant, along with <facematica.ru> and <facematica.ai>, again in his personal name but concealed behind a privacy service.
A court case in Russia required that <facematica.ru> be transferred from the Respondent to the Complainant.
The Respondent should have transferred the disputed domain names <vocord.net> and <vocord.com> to the Complainant in light of a July 2006 employment contract between the Respondent and ZAO Vocord Telecom.
The Respondent was fired as ZAO Vocord Telecom general director in 2013 but remained an employee until July 2018 with access to email.
ZAO Vocord Telecom paid the hosting costs for the disputed domain name <vocord.com>.
The Respondent blocked the disputed domain name <vocord.com> on September 23, 2018.
A summary of the Respondent’s contentions is as follows:
The Respondent initially used the disputed domain names <vocord.net> and <vocord.com> in connection with various companies wholly owned by him. The Respondent could not have registered the disputed domain names <vocord.net> and <vocord.com> with a strategy of selling them to the Complainant as the Complainant was not incorporated until 2010. The Respondent did not offer these domain names for sale until the Complainant made a purchase proposal to the Respondent.
Furthermore, the trade mark relied upon was not registered until 2011.
Accordingly, the disputed domain names <vocord.net> and <vocord.com> could not have been registered in bad faith.
The disputed domain name <vocord.ru> was transferred into the name of ZAO Vocord Telecom because the company operated exclusively in the Russian market.
The 2006 employment contract does not affect the Respondent’s ownership of domain names previously registered by the Respondent. In any case, the Complainant is not a party to this contract.
The present case is a complicated internal corporate dispute between the former co-owners to which the UDRP does not apply.
The Complainant has never asked the Respondent to transfer the disputed domain name <facematica.com>. The Respondent did not conceal his name when registering the disputed domain name <facematica.com> as individual names are personal data, which are not required to be disclosed. The Respondent is willing to transfer the disputed domain name <facematica.com> to the Complainant in return for payment of the cost of registration and of his expenses directly related to the administration of this domain name.
The 2018 correspondence between the Parties was part of a negotiation relating to the sale of the Complainant’s shares and not “unfair extortion” by the Respondent.
The Respondent was not a party to the court decision concerning <facematica.ru> as he was removed from the case.
The Complainant’s case is based on infringement of the rights of ZAO Vocord Telecom, which is a separate legal entity to the Complainant.
The Respondent retains ZAO Vocord Control and intends to use the disputed domain names <vocord.net> and <vocord.com> in connection with this company, which has operated from 1999 to date.
The Respondent has personally paid for registration and renewal of the disputed domain names <vocord.net> and <vocord.com> for 19 years.
The foregoing constitutes rights and legitimate interests on the part of the Respondent in the disputed domain names <vocord.net> and <vocord.com>.
The Respondent has never used the disputed domain names abusively. Until sale of his stake in the Complainant in 2018, the Respondent used the disputed domain names to post information in relation to the companies operating under the “Vocord” brand.
The registration of a domain name in the name of an individual is not a sign of bad faith, even if an enterprise is the “ultimate beneficiary of use”.
Before the dispute with the Complainant, the disputed domain names <vocord.net> and <vocord.com> were used for the website of the Complainant. After the sale of his stake in the Complainant, the Respondent temporarily suspended operation of the Complainant’s website until the outstanding issues with the Respondent’s former partners were resolved. The circumstances show that the Respondent behaved in good faith and did not use the disputed domain names to create confusion with the Complainant’s trade mark.
Even if the Respondent had used the disputed domain name in bad faith, the Complaint must still fail because of the requirement under the Policy to prove both registration and use in bad faith.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights;
the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
the disputed domain name have been registered and are being used in bad faith.
A. Supplemental Filings
Each party has made an unsolicited supplemental filing.
Section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that UDRP panels have repeatedly affirmed that the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response, e.g., owing to some “exceptional” circumstance.
Neither Party has sought to justify its filing along on the lines indicated above. In any case, the Panel does not consider that the supplemental filings are material to its decision.
Accordingly, the Panel declines to admit both supplemental filings.
B. Applicability of the Policy
The Respondent has questioned the applicability of the Policy on the basis that the disputed domain names are part of a complicated business dispute between the parties.
Section 4.14.6 of the WIPO Overview 3.0 explains that, in certain instances, e.g., involving complex business or contractual disputes, panels have tended to deny the case not on the UDRP merits but on the narrow grounds that the dispute between the parties exceeds the relatively limited “cybersquatting” scope of the UDRP, and would be more appropriately addressed by a court of competent jurisdiction.
The Panel has had regard to The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470, cited by the Respondent, where the panel concluded that the dispute was not a cybersquatting case but, rather, a breach of contract and breach of fiduciary dispute between former partners and that it was misguided to attempt to shoehorn such a dispute into a proceeding to address cybersquatting. The Panel said that that alone justified denial of the complaint but that, in any case, the complainant had plainly failed to establish bad faith in the circumstances of that case.
The Panel has carefully considered whether to reject this Complaint on the basis that it too is part of a wider business dispute between former partners. However, while the Panel is loath to get embroiled in the complicated background facts, the Panel has concluded that in the particular circumstances of this case it can in fact apply the Policy.
- In the case of the disputed domain names <vocord.net> and <vocord.com>, because the relevant facts relating to the registration of those disputed domain names in 1999 are relatively clear and undisputed; and
- In the case of the disputed domain name <facematica.com>, because the Respondent has not contested the Complainant’s relevant assertions, which prima facie constitute bad faith on the part of the Respondent.
C. Identical or Confusingly Similar
The Complainant has established rights in the marks VOCORD and FACEMATICA, respectively, by virtue of its registered trade marks referred to in section 4 above.
Disregarding the domain name suffixes, each disputed domain name is identical to one of these trade marks.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
D. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
<vocord.com> and <vocord.net>:
It is unnecessary to consider the second element in relation to these disputed domain names, given the Panel’s conclusion under the third element below.
The Complainant has asserted that the Respondent lacks rights or legitimate interests in this disputed domain name and so the burden of production has shifted to the Respondent to provide evidence demonstrating that it does possess such rights or legitimate interests. However, the Respondent has made no effort to do so. Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name <facematica.com> and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy in respect of this domain name.
E. Registered and Used in Bad Faith
<vocord.com> and <vocord.net>:
The Complainant’s case is that the Respondent registered the disputed domain names <vocord.com> and <vocord.net> in 1999 for sale to the Complainant. However, the Complainant was not incorporated until 2010, a fact which is fatal to the Complainant’s contention.
The Complainant further observes that it now owns 100 percent of the shares in ZAO Vocord Telecom and that this company “supports” the Complainant’s claim. If by this the Complainant means to imply that the Respondent somehow registered the disputed domain name in bad faith vis-à-vis this company, then the Complainant fails here too.
First, ZAO Vocord Telecom is not a complainant in this proceeding.
In any case, and whether or not ZAO Vocord Telecom or indeed any other relevant corporate entity, had already been incorporated, it is plain that the Respondent registered the disputed domain names <vocord.com> and <vocord.net> in the context of a new business which he intended to operate through wholly-owned companies. Whatever the Respondent’s precise reason for registering the disputed domain names in a personal rather than a corporate name, sale to one of his own wholly-owned companies in a trade mark-targetting manner seems the least likely motive. In short, this scenario lacks the typical hallmarks of cybersquatting intent.
Accordingly, on the basis of relatively clear undisputed facts at the time of registration in 1999, the Panel considers that the Complainant has failed to establish registration in bad faith. This is fatal to the Complainant’s case because, under the Policy, the Complainant is required to prove registration as well as use in bad faith.
It is therefore unnecessary, and in any case it would have been inappropriate, for the Panel to assess the details of the complicated business dispute which arose years later, after the Partner became involved in the Respondent’s business.
The disputed domain name <facematica.com> was registered much later, in 2017. The Complainant says that by then the Respondent had a diminished role within the business but that he remained an employee with access to the Complainant’s email system, as a result of which he became aware of the Complainant’s plans in relation to the “Facematica” brand. And that the Respondent registered the disputed domain name for sale to the Complainant accordingly.
As explained above, the Panel would have been reluctant to delve into these details. However, crucially, the Respondent had not denied the Complainant’s claims or put forward any alternative explanation for his selection of the disputed domain name <facematica.com>. In fact, he says little about this domain name other than to offer to sell it to the Complainant in return for the cost of registration plus payment of his expenses directly related to the administration of this domain name.
In view of the Respondent’s non-denial, the Panel considers that it is in position to conclude that the Respondent registered the disputed domain name primarily for sale to the Complainant in accordance with paragraph 4(b)(i) of the Policy.
The Panel thus concludes that the Complainant has established the third element of the Policy in relation to the disputed domain name <facematica.com> but not in relation to the disputed domain names <vocord.com> and <vocord.net>
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, <facematica.com>, be transferred to the Complainant. The Complaint is denied in relation to the disputed domain names <vocord.com> and <vocord.net>.
David E. Sorkin
David H. Bernstein
Date: February 20, 2019
1 There is some ambiguity in the corporate documents supplied to the Panel as to whether or not incorporation of ZAO Vocord Telecom pre-dates or post-dates registration of the disputed domain names <vocord.net> and <vocord.com>. It appears more likely than not that incorporation occurred around a month later – in September 1999. In any case, as explained in section 6E below, it would have made no difference to the outcome of this case if the company had in fact pre-dated registration of these disputed domain names.