WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Schibsted ASA v. \u041b\u044e\u0434\u043c\u0438\u043b\u0430 \u0421\u043e\u043a\u043e\u043b\u043e\u0432\u0430 / WhoisGuard, Inc. / Sergey Burunov

Case No. D2019-0137

1. The Parties

The Complainant is Schibsted ASA of Trondheim, Norway, represented by Ports Group AB, Sweden.

The Respondent is \u041b\u044e\u0434\u043c\u0438\u043b\u0430 \u0421\u043e\u043a\u043e\u043b\u043e\u0432\u0430 of \u041c\u0456\u0441\u0442\u043e of Ukraine / WhoisGuard, Inc. of Panama City, Panama / Sergey Burunov of Donetsk, Ukraine.

2. The Domain Names and Registrars

The disputed domain names <schibste.com> and <schibsted.icu> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC and NameCheap, Inc. (the “Registrar”), respectively.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2019. On January 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On January 23, 2019, the Registrar GoDaddy.com, LLC transmitted by email to the Center its verification response for the Disputed Domain Name <schibste.com>, confirming that the Respondent is listed as the registrant and providing the contact details. On January 24, 2019, the Registrar NameCheap, Inc. transmitted by email to the Center its verification response for the Disputed Domain Name <schibsted.icu>, disclosing registrant and contact information which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 24, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 25, 2019.

The Center verified that the Complaint together with the amendment to 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 January 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2019.

The Center appointed Michael D. Cover as the sole panelist in this matter on February 25, 2019. The Panel finds that it was properly constituted. The Panel has submitted its 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 a limited liability company, headquartered in Oslo, Norway and listed on the Stock Exchange in the same place. It was founded in 1839. The Complainant is part of an international media group with many employees around the world. It provides leading online marketplaces and generally helps build companies in the media sector.

The Complainant is the owner of trademark registrations for SCHIBSTED in the European Union and elsewhere, including European Union registration no. 006476501 for SCHIBSTED, registered October 3, 2008.

The Disputed Domain Name <schibsted.icu> was registered on December 27, 2018 and the Disputed Domain Name <schibste.com> was registered on November 7, 2018. The Disputed Domain Names resolve to identical websites containing pornographic content, as set out in Annex 3 and Annexes 9-12 to the Complaint.

The Complainant sent a cease-and-desist letter to the Respondent on December 6, 2018 (Annex 13 to the Complaint) but no response was received.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant submits that the Disputed Domain Names are identical or confusingly similar to the Complainant’s registered trademark. The Complainant notes that the Disputed Domain Name <schibsted.icu> includes the entirety of the Complainant’s trademark SCHIBSTED, with the addition of the generic Top-Level Domain Name (gTLD) “.icu”. The Complainant submits that the TLD is viewed as a standard registration requirement and, as such, should be disregarded under the confusing similarity test and draws the Panel’s attention to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Disputed Domain Name <schibste.com>, the Complainant notes, includes the entirety of the Complainant’s SCHIBSTED trademark, except for the minor typo, involving the letter “d” being missing at the end.

The Complainant concludes that the Disputed Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights and that the Complainant has fulfilled the requirements in paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Names.

The Complainant states that it has not granted a license or authorization in favor of the Respondent in relation to the trademark SCHIBSTED and there is nothing that indicates that the Respondent has been commonly known under that trademark.

Noting that the Disputed Domain Names resolve to identical websites containing pornographic content, the Complainant submits that such use should not be seen as legitimate noncommercial use. The Complainant submits that the Respondent has registered the Disputed Domain Names with intent to commercially gain from Internet users looking for the Complainant and/or with the intent to tarnish the Complainant’s trademark. The Complainant also submits that there is no evidence of demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services.

The Complainant concludes that it has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names, referencing paragraph 4(a)(ii) of the Policy

Registered and Used in Bad Faith

The Complainant submits that the Respondent must have been well aware of the Complainant’s business and trademark SCHIBSTED when registering the Disputed Domain Names. It also submits that the Respondent is tarnishing the Complainant’s famous trademark by redirecting the Disputed Domain Names to websites with pornographic content and that this should be considered as bad faith.

The Complaint submits that there is no plausible reason for the registration of the Disputed Domain Names other than to take advantage of the goodwill associated with the Complainant’s SCHIBSTED trademark. It concludes that the non-response to the cease-and-desist letter sent by the Complainant and the use of a privacy service to shield the details of the Respondent are further indications of bad faith.

The Complainant suggests that the registration and use of the Disputed Domain Names have been done in bad faith and submits that the Complainant has thereby fulfilled the requirements of paragraph 4(a)(iii) of the Policy.

Remedy Requested by the Complainant

The Complainant requests that the Panel decides that the Disputed Domain Names be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant must demonstrate on the balance of probabilities that the Disputed Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names and that the Disputed Domain Names have been registered and are being used in bad faith.

A. Consolidation of Respondents

The Panel notes that the Complaint is brought against two nominally different Respondents.
Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. (WIPO Overview 3.0, section 4.11.2).

In the present matter, the Complainant has requested consolidation on the basis that the Disputed Domain Names appear subject to common control as they were registered at approximately the same time and redirect to identical websites with pornographic content, with identical source codes, and both registrants appear to have a residence in Ukraine. The Complainant argues that such consolidation would be fair and equitable to all parties.

The Panel finds the Complainant’s request supported by the record, which leads the Panel to consider that it is more likely than not that the Disputed Domain Names are under common control. Further, there is nothing in the record to suggest that the consolidation of this matter into a single proceeding would be unfair or prejudicial to either Party.

Accordingly, the Panel accepts the Complainant’s request for consolidation and will proceed with its substantive assessment below.

B. Identical or Confusingly Similar

The Panel accepts that the Complainant has established registered rights in its trademark SCHIBSTED. It is also a reasonable inference that the Complainant has built up common law rights in its trademark.

The Panel accepts that the Disputed Domain Names are identical or confusingly similar to the trademark SCHIBSTED in which the Complainant has rights. It is well established that the addition of the gTLD “.com” or “.icu” does not avoid a finding that the Disputed Domain Names are confusingly similar to the trademark SCHIBSTED.

The Disputed Domain Name <schibsted.icu> reproduces the Complainant’s trademark SCHIBSTED in its entirety and is identical to the Complainant’s trademark SCHIBSTED; the Disputed Domain Name <schibste.com> is identical to the Complainant’s trademark, with the exception of the missing letter “d”. This constitutes typosquatting, whereby the Respondent targets Internet users who incorrectly type into their browser <schibste.com>, rather than <schibsted.com>.

The Panel finds that the Disputed Domain Names are identical or confusingly similar to the Complainant’s trademark SCHIBSTED in which it has rights and that paragraph 4(a)(i) of the Policy has been met.

C. Rights or Legitimate Interests

The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Names. There is no evidence that the Complainant has licensed or authorized the Respondent to use its trademark and, in fact, the Complainant specifically states that it has not done so. The Complainant is a well-known business, with its trademark SCHIBSTED having been registered since 2008, and it is a reasonable inference that the Respondent was aware of the Complainant’s SCHIBSTED trademark when it registered the Disputed Domain Names.

The Respondent has not demonstrated use or demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services, that is has been commonly-known by the Disputed Domain Names, or that it has been making legitimate noncommercial use of the Disputed Domain Names, without intent for commercial gain or to misleadingly divert consumers or to tarnish the trademark of the Complainant. In fact, as the Disputed Domain Names resolve to pornographic websites, the facts are that the use has not been bona fide and was calculated to misleadingly divert consumers and tarnish the SCHIBSTED trademark of the Complainant.

The Panel accordingly finds that paragraph 4(a)(ii) of the Policy has been met.

D. Registered and Used in Bad Faith

The Panel accepts that the Disputed Domain Names have been registered and are being used in bad faith.

The Panel finds, on the balance of probabilities, that the Respondent has registered the Disputed Domain Names and is using them primarily to disrupt the business of the Complainant and intentionally to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademark. This finding is reinforced by the Panel’s reasonable inference that the Respondent was aware of the Complainant’s trademark SCHIBSTED when it registered the Disputed Domain Names, the Respondent’s use of privacy service, and the typosquatting in relation to the Disputed Domain Name <schibste.com>.

The Panel therefore finds that the Disputed Domain Names have been registered and are being used in bad faith and that paragraph 4(a)(iii) of the Policy has been met.

7. Decision

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 <schibste.com> and <schibsted.icu> be transferred to the Complainant.

Michael D. Cover
Sole Panelist
Date: March 14, 2019