WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Maxym Polyakov v. Bogdan Nechiporenko, Makc Belevskiy
Case No. D2019-0026
1. The Parties
The Complainant is Maxym Polyakov of Menlo Park, California, United States of America (“United States”), represented by Mapa Trademarks, Spain.
The Respondents are Bogdan Nechiporenko of Kiev, Ukraine and Makc Belevskiy of Zaporozhye, Ukraine.
2. The Domain Names and Registrars
The disputed domain name <max-polyakov.host> is registered with NameCheap, Inc. (“NameCheap”), and the disputed domain name <max-polyakov.xyz> is registered with Eranet International Limited (“Eranet”), and NameCheap and Eranet are jointly referred to as the “Registrars”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2019. On January 4, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On January 4 and 8, 2019, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants and providing the contact details. In response to a request for amendment by the Center, the Complainant filed an amended Complaint to the Complaint on January 18, 2019.
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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on January 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2019. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on February 11, 2019.
The Center appointed Assen Alexiev as the sole panelist in this matter on February 20, 2019. 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 Maxym Polyakov is the founder of the companies Noosphere Ventures Inc. and Eos Data Analytics Inc.
The Complainant is the owner of European Union trademark MAX POLYAKOV with registration No. 017135187, filed on August 22, 2017 and registered on December 18, 2017 for services in International Classes 35 and 42.
The disputed domain name <max-polyakov.xyz> was registered on March 26, 2017, and the disputed domain name <max-polyakov.host> was registered on June 4, 2018. The website at the disputed domain name <max-polyakov.xyz> is entitled “THE UNOFFICIAL MAXIM POLYAKOV FAN SITE”, and contains strong criticism against the Complainant. The website at the disputed domain name <max-polyakov.host> appears to be identical or very similar in design and content.
This is not the first proceeding under the Policy in respect of the disputed domain name <max-polyakov.xyz>. On January 24, 2018, the Complainant filed a complaint with the Center in respect of this disputed domain name. With a decision dated March 27, 2018, in Maxym Polyakov v. zhuhaiyingxunkejiyouxiangongsi / Nechiporenko Bogdan, Bogdan Nechiporenko, WIPO Case No. D2018-0147 (the “ WIPO Case No. D2018-0147”), that complaint was denied.
5. Parties’ Contentions
The Complainant describes itself as a well-known and respected businessman and philanthropist, interested in promoting science and technology on a global scale, and acknowledged as Companion of Honour by the Fédération Aéronautique Internationale at their 111th General Conference held in Lausanne, Switzerland in 2018.
The Complainant submits that it has been trading under the business name MAX POLYAKOV for many years. Under this business name, the Complainant has founded the companies Eos Data Analytics Inc. and Noosphere Ventures Inc., among others. On this basis, the Complainant submits that it has common law rights in the MAX POLYAKOV trademark.
The Complainant states that in late 2018 a Ukrainian court has issued a judgment against the Respondents whereby it found that on the basis of a copyright transfer agreement dated June 28, 2010, the Complainant had acquired the intellectual property rights over “Max Polyakov”, “Maxim Polyakov”, and other similar objects. These intellectual property rights included the exclusive right to use the objects of intellectual property and the right to authorize and prohibit their use by other persons. The court also found that when registering the disputed domain names, the Respondents had improperly used the objects of the Complainant’s intellectual property rights, and had violated the copyright of the Complainant under Art. 50 of the Ukrainian Law “On Copyright and Related Rights”. The court also concluded that the use by the Respondents of the words “max polyakov” when registering the disputed domain names was unlawful. In addition to this copyright infringement, the court also found that the Respondents had placed unsubstantiated and inaccurate negative information in relation to the Complainant on the websites at the disputed domain names.
The Complainant submits that the disputed domain names reproduce the Complainant’s MAX POLYAKOV trademark in its entirety, and are identical to this trademark.
According to the Complainant, the Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents are not affiliated with the Complainant and have not been commonly known by or associated with the name “Max Polyakov”; they have chosen and used domain names that contain the Complainant’s MAX POLYAKOV trademark without the Complainant’s permission. The Respondents have been using the disputed domain names to defame and slander the Complainant, linking it to the porn industry and accusing it of bribery. The Complainant maintains that websites at the disputed domain names damage the Complainant’s image in the market and have a negative impact on its business, which means that these websites have commercial objectives.
The Complainant further notes that the freedom of speech and expression is legally protected, but it is not an unqualified right and must be balanced by a legal protection to the reputation, privacy, and trademarks of others. The Respondents have the right to promote their lawful views about the Complainant, but not via websites that carry the name of the Complainant against its will. The Respondents have violated the Ukrainian legislation and cannot claim the right to free speech to avoid the transfer of the disputed domain names to the Complainant, as the websites at the disputed domain names are defamation websites that damage the Complainant’s business. The Complainant argues that the Respondents are motivated by personal grievances and have made offensive and slanderous allegations against the Complainant with an intention to tarnish the Complainant’s business and reputation and to damage and disrupt its business.
The Complainant asserts that the Respondents have acted in bad faith in the registration and use of the disputed domain names. They have taken the Complainant’s name and trademark with the desire to get the attention of Internet users who may be initially confused and assume that the disputed domain names may lead to official websites of the Complainant. According to the Complainant, the Respondents knew of the Complainant’s name and trademark at the time of registration of the disputed domain names, and registered them with the intention to damage the Complainant’s reputation. By choosing the Complainant’s MAX POLYAKOV trademark as the only feature of the disputed domain names, the Respondents have created a situation where at least some users will be attracted to their websites and will then be subjected to a strong attack on the Complainant, including allegations that it is corrupt and in breach of the law and other allegations clearly designed to damage the Complainant in the eyes of its customers and potential buyers as well as in the eyes of the public. In the Complainant’s submission, that conduct amounts to bad faith registration and use of the disputed domain names. The Complainant refers to the conclusions in the Ukrainian court judgment, which found that the information posted on the websites at the disputed domain names is untrue and negatively affects the honor, dignity, and business reputation of the Complainant.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the Respondents have registered and are using the disputed domain names in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondents, in compliance with the Rules, paragraph 2(a), and the Respondents were given a fair opportunity to present their case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”
In this proceeding, the Respondents have not used the opportunity provided to them under the Rules and have not submitted a substantive Response addressing the contentions of the Complainant and the evidence submitted by it.
A. Consolidation of the proceedings
The Complainant requests the consolidation of the proceedings in respect of the two disputed domain names with the argument that there appears to be only one real person who controls the two disputed domain names, since the websites to which the two disputed domain names resolve have identical content.
As discussed in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where a complaint is filed against multiple respondents, panels look at whether the domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in the content or layout of the websites corresponding to the disputed domain names, and any naming patterns in the disputed domain names.
This Panel is satisfied that these factors are present in this proceeding. The websites associated to the disputed domain names indeed look very similar, if not identical, and the two disputed domain names differ only in the TLD in which they are registered. It also appears that a consolidation of the proceedings in respect of the two disputed domain names would contribute to procedural efficiency, and neither of the Respondents has objected to the Complainant’s consolidation request. Therefore, the Panel decides to consolidate the proceedings in respect of the two disputed domain names.
With the present Complaint, the Complainant argues that it should be allowed to refile its Complaint in respect of the disputed domain name <max-polyakov.xyz>. According to the Complainant, certain legally relevant developments have occurred since the issuance of the decision in WIPO Case No. D2018-0147, and these developments justify the acceptance of a refiled Complaint. The Complainant states that it has filed a lawsuit against the Respondents in Zavodskyi District Court of Zaporizhzhya, Ukraine, and the subject-matter of this lawsuit were the disputed domain names. On October 25, 2018, the court issued its judgment (the “Ukrainian court judgment”), by which it ordered the Respondents to stop the violation of the intellectual property rights of the Complainant, declared that the use of the disputed domain names and the associated websites by the Respondents was unlawful, prohibited the Respondents to register and utilize the disputed domain names and any other Internet resources incorporating “Max Polyakov” and “Maxym Polyakov” without the permission of the Complainant, and declared that all the information posted on the websites at the disputed domain names was unreliable and discredited the honor, dignity, and business reputation of the Complainant.
As discussed in section 4.18 of the WIPO Overview 3.0, a refiled case is one in which a newly-filed UDRP case concerns identical domain names and parties to a previously-decided UDRP case in which the prior panel denied the complaint on the merits. As the UDRP itself contains no appeal mechanism, there is no express right to refile a complaint; refiled complaints are exceptional. Panels have accepted refiled complaints only in highly limited circumstances such as when the complainant establishes that legally relevant developments have occurred since the original UDRP decision.
In the refiled Complaint, the Complainant has clearly indicated its position that the Ukrainian court judgment would justify the acceptance of the refiled Complaint. The Center has initially assessed the situation and has accepted that the grounds for acceptance of the refiled Complaint pleaded by the Complainant prima facie justify its acceptance by the Center. It is however up to the Panel to ultimately determine whether the preliminarily-accepted refiled Complaint should proceed to a decision on the merits.
The Panel has reviewed the grounds pleaded by the Complainant for acceptance of the refiled Complaint and is satisfied that new developments have indeed occurred since the original UDRP decision in WIPO Case No. D2018-0147. The Ukrainian court judgment was issued after the decision in WIPO Case No. D2018-0147 in a court proceeding between the Complainant and the Respondents, and the disputed domain names were its subject-matter. However, these new developments are not legally relevant for the purposes of the UDRP.
In the previous WIPO Case No. D2018-0147, the Complainant had asserted having common law rights in the name MAX POLYAKOV. However, the Complainant had failed to provide convincing evidence for the use of his personal name for the purpose of merchandising or other commercial promotion of goods or services, and had not established the extent to which the commercial community identifies the Complainant with his companies, the extent to which the Complainant is seen by relevant media and sections of the public as the alter ego and driving force behind his companies, the extent of the personal ownership of the companies by the Complainant, the degree of personal control that the Complainant exercises over the enterprises, and the extent to which the Complainant is identified with any major achievements of the enterprises. On the basis of these considerations, the panel in WIPO Case No. D2018-0147 has concluded that the Complainant had failed to establish common law rights in his personal name.
The court judgment does not deal with the issue of whether the Complainant has common law rights in his personal name; it does not deal with trademark rights at all and does not establish that the Complainant had any trademark rights over MAX POLYAKOV in 2010 or at any specific date. The basis of the Ukrainian court judgment is a certain copyright transfer agreement dated June 28, 2010, between the Complainant and an undisclosed third party, which has not been submitted as evidence in this proceeding, and on this basis the Ukrainian court has found that the Respondents have infringed the copyright of the Complainant.
In view of the above, the Panel does not accept the refiled Complaint in respect of the disputed domain name <max-polyakov.xyz>. Furthermore, the Complainant has not pleaded or shown any irregularity in the ruling of the panel in WIPO Case No. D2018-0147.
A. Identical or Confusingly Similar
The disputed domain name <max-polyakov.host> reproduces the MAX POLYAKOV trademark in its entirety with the addition of a hyphen between the words “max” and “polyakov”. This hyphen may be considered to have no particular significance for the purposes of comparison on the basis that spaces are not permitted in domain names for technical reasons and it is therefore common practice to substitute a space with a dash or hyphen character. Therefore, the Panel finds that the disputed domain name <max-polyakov.host> is confusingly similar to the MAX POLYAKOV trademark.
B. Rights or Legitimate Interests
The Complainant contends that the Respondents have no rights or legitimate interests in respect of the disputed domain name <max-polyakov.host>, as they are not affiliated with the Complainant, have not been commonly known by or associated with the name “Max Polyakov”, and the Complainant has not given them permission to use the MAX POLYAKOV trademark. The Complainant also asserts that the Respondents’ use the disputed domain name to defame and slander the Complainant, linking it to the porn industry and accusing it of bribery. In support of its contentions, the Complainant refers to the Ukrainian court judgment.
The Respondents have not submitted a Response in this proceeding. They have not brought to the attention of the Panel any arguments or evidence and have not denied the contentions of the Complainant.
As indicated under section 4 above, the disputed domain name resolves to a website containing a lot of criticism against the Complainant. As noted under Section 2.6 of the WIPO Overview 3.0, “a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark”.
On the basis of the above, the Panel finds that the Complainant has established that the Respondents do not have rights and legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
This Panel accepts that the only trademark rights of the Complainant that are relevant to the present dispute under the Policy are the Complainant’s rights that arise from the registration of the MAX POLYAKOV trademark discussed in section 4 above. This trademark was applied for on August 22, 2017 and registered on December 18, 2017, and the disputed domain name <max-polyakov.host> was registered on June 4, 2018.
Accordingly, the disputed domain name <max-polyakov.host> was registered several months after the registration of the MAX POLYAKOV trademark; it is confusingly similar to this trademark and the Respondents do not deny that they had knowledge of the Complainant at the time of registration of this disputed domain name. The content of the associated website clearly shows that it targets the Complainant. These circumstances, combined with the fact that the Respondents have not brought to the attention of the Panel any arguments or evidence that may lead to a different conclusion, satisfy the Panel that the Respondents have registered and used the disputed domain name <max-polyakov.host> in bad faith under the Policy.
Therefore, the Panel finds that the Respondents have registered and used the disputed domain name <max-polyakov.host> in 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 <max-polyakov.host> be transferred to the Complainant.
The Complaint in respect of the disputed domain name <max-polyakov.xyz> is denied.
Date: April 3, 2019