WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alexander Babarika v. WhoisGuard Protected / Alexandr Tikhomirov / Alexandr Forov / Alexey Nikiforov
Case No. D2019-1698
1. The Parties
The Complainant is Alexander Babarika, Russian Federation, self-represented.
The Respondent is WhoisGuard Protected, Panama / Alexandr Tikhomirov, Russian Federation / Alexandr Forov, Russian Federation / Alexey Nikiforov, Russian Federation, represented by Alexandr Tikhomirov, Russian Federation.
2. The Domain Names and Registrars
The disputed domain names <d-koffer.com>, <doctor-koffer.com>, <dr-koffer.com> and <koffer-discount.com> (the Domain “Names”) are registered with NameCheap, Inc. and GoDaddy.com, LLC NameCheap, Inc. (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2019. On July 18, 2019, the Center transmitted by email to both Registrars a request for registrar verification in connection with the Domain Names. On July 18, 2019, both Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 23, 2019 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 26, 2019. A further amendment was received concerning the mutual jurisdiction on August 2, 2019.
The Center verified that the Complaint together with the amended Complaint and further amendment of 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 August 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2019. The Response was filed with the Center on August 30, 2019.
The Center appointed Olga Zalomiy as the sole panelist in this matter on September 16, 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.
On September 18, 2019, the Complainant submitted a supplemental filing to the Center.
4. Factual Background
Dr. Koffer New York, Inc., a Florida corporation, owns United States of America trademark registration No. 3411527 for the DR. KOFFER mark, registered on April 15, 2008, with the word “KOFFER” disclaimed.
The Complainant owns International trademark registration No. 954880 for the DR. KOFFER mark, registered on January 23, 2008, with the word “KOFFER” disclaimed, with effect in Armenia, Azerbaijan, Belarus, Kazakhstan and Ukraine pursuant to the Madrid Protocol designation filed on January 23, 2008. The International registration is based on the United States of America trademark registration for the DR. KOFFER mark.
Tufelka LLC, a Russian limited liability company allegedly related to the Complainant, owns a Russian trademark registration No. 538685 for the DR. KOFFER trademark, registered on April 2, 2015.
The Respondent registered the Domain Names on the following dates:
- <d-koffer.com> on August 28, 2018,
- <doctor-koffer.com> on October 16, 2018,
- <dr-koffer.com> on April 18, 2017, and
- ˂koffer-discount.com˃ on October 30, 2018.
The Domain Names <d-koffer.com>, <doctor-koffer.com>, <dr-koffer.com> direct to websites in the Russian language that offer for sale Dr. Koffer goods, and goods under other brands, in the Russian Federation. The Domain Name ˂koffer-discount.com˃ does not resolve to any active website.
The Complainant was originally submitted against a privacy service, WhoisGuard Protected. Upon receiving different underlying registrant details from the concerned Registrar, the Complainant submitted a request for consolidation of Alexandr Tikhomirov, Alexandr Forov, and Alexey Nikiforov in the same proceeding. As discussed in more detail under section 6.3 below, the Panel finds consolidation in these circumstances to be appropriate. All references hereafter will be to the “Respondent” in singular form.
5. Parties’ Contentions
The Complainant claims that the Domain Names are identical of confusingly similar to the Complainant’s trademarks. The Complainant claims to own an International trademark registration for the DR. KOFFER trademark. The Complainant claims that Tufelka LLC, of which he is the owner and the director, owns a trademark registration for the DR. KOFFER’s mark in the Russian Federation. The Complainant asserts that Dr. Koffer New York, Inc., which is a United States of America partner of the Complainant and Tufelka LLC, owns a United States of America trademark registration for the DR. KOFFER mark. The Complainant contends that the Domain Names are confusingly similar to the Dr. KOFFER trademark despite other terms in the Domain Names, because they fully incorporate it.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Names, because the Domain Names are identical to the Dr. KOFFER trademark, which exclusively belongs to the Complainant.
The Complainant claims that the Domain Names were registered and are being used in bad faith. The Complainant contends that he and his company Tufelka LLC have used the trademark for over 15 years in connection with handbags, gloves, and other leather goods.
The Complainant contends that Dr. Koffer products have been sold online through its official store for more than 14 years. The Complainant alleges that Tufelka LLC banned the Respondent from using the DR. KOFFER trademark with domain names incorporating the mark in three domain names under the country code Top-Level Domain (“ccTLD”) “.ru”. The Complainant contends that the online stores connected to those domain names now connect to the Domain Names. The Complainant submits that the Domain Names direct to online stores that sell counterfeit leather goods under well-known trademark. The Complainant contends that the use of the DR. KOFFER mark without the consent of the rights holder, violates his exclusive rights in the mark and results in a reduction of demand for the products sold in retail stores and the official online store selling Dr. Koffer goods.
In its Supplemental Filing, the Complainant claims that the Respondent has not been authorized to sell genuine DR. KOFFER goods and has not received any permission to use the DR. KOFFER mark. The Complainant contends that his company Tufelka LLC and the Respondent were parties to a Russian Arbitrazh (АРБИТРАЖНЫЙ СУД) (business court) proceeding regarding the Respondent’s use of the DR. KOFFER trademark in the domain name <dkoffer.ru>, which the Respondent lost.
The Respondent contends that there was a partnership between the Respondent and Tufelka LLC, which was recently terminated by Tufelka LLC. The Respondent contends that the Respondent advertised the DR. KOFFER brand in the Russian Federation and sold DR. Koffer goods in the Russian Federation pursuant to terms of a supply agreement. The Respondent claims that it spent a considerable amount of money on advertising and marketing of the brand, which made it recognizable in the Russian Federation. The Respondent contends that the agreement between the Respondent and Tufelka LLC, was terminated by Mr. Sapozhnikov, the second owner of Tufelka LLC, unilaterally without any explanation. The Respondent claims that the dispute is a result of a mistake.
6. Discussion and Findings
6.1. Supplemental Filing
The Complainant submitted a Supplemental Filing on September 18, 2019 as a “Rebuttal” to the Response along with supporting documents. Under paragraph 10 of the Rules, the Panel has the authority to determine admissibility of supplemental filings.
The position as to the admissibility of unsolicited supplemental submissions is addressed in section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) as follows:
“The party submitting or requesting to submit 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).”
Here, the Supplemental Filing deals with arguments of the Respondent raised in its Response and is relevant to this case1 . Its acceptance would not delay the proceeding. Therefore, the Panel has decided to admit and take into account the Supplemental Filing of the Complainant.
6.2. Language of the proceeding
Under paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement, unless the parties agree to use a different language, or the registration agreement provides otherwise. The Panel has the right to determine language of the administrative proceeding based on the circumstances of the case.
Because the language of the Registration Agreement for the Domain Name is English, the default language of the administrative proceeding would be English. The Respondent requested that Russian be the language of the administrative proceeding because the Respondent did not understand English well and both of the parties to the proceeding were Russian.
Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. “Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, …(vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint.” 2.
The Panel finds that it is likely that the Respondent understands English. First, the Respondent registered the Domain Name in Latin characters. Second, names of some products that are offered for sale on the Respondent’s website, are also in English. Third, the Respondent submitted a response in English, which showed that the Respondent understood the nature of the Complaint.
The Complaint, supporting documents and the Respondent’s response, are submitted in English. It will be unfair to request the Complainant to translate the Complaint and accompanying documents into Russian because it will put an undue financial burden on the Complainant and delay resolution of the dispute. At the same time, it will not be unfair to the Respondent if the proceeding is conducted in English because the Respondent appears to understand English.
Considering the above, the Panel denies the Respondent’s request that Russian be the language of this proceeding.
6.3. Preliminary Issue: Consolidation of the Parties
“Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”3
The Complainant was originally submitted against a privacy service, WhoisGuard Protected. Upon receiving different underlying registrant details from the concerned Registrar, the Complainant submitted a request for consolidation of Alexandr Tikhomirov, Alexandr Forov, and Alexey Nikiforov in the same proceeding. The Respondent did not object to the consolidation.
It is well-established that a single consolidated complaint may be brought against multiple respondents where “(i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario 4”. The following factors, which have been found to warrant consolidation are: “similarities in or relevant aspects of […] (ii) the registrants’ contact information including email address(es)[…] (iii) relevant Internet Protocol (‘IP’) addresses […] (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>) […] (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s).” 5
Here, the evidence shows that all Domain Names have the same generic Top-Level Domain (“gTLD”) “.com”.
All of the three registrants provided the same contact phone number and the same email address. The Domain Names ˂doctor-koffer.com> and <dr-koffer.com˃ point to websites with identical design and layout, which display the same contact phone number. The websites at the Domain Names, ˂d-koffer.com> and <dr-koffer.com˃, display the same office address.
The Panel finds that taken together, the circumstances of this case clearly indicate that the Domain Names are subject to common control. Absent any objection from the Respondent, the consolidation is fair and equitable to all of the parties.
6.4. General discussion
Under paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of these elements regarding each of the Domain Names:
(i) the 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 respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Complainant contends that he and his company Tufelka LLC have used the trademark for over 15 years in connection with handbags, gloves, and other leather goods. The Complainant submits that the Domain Names direct to online stores that sell counterfeit leather goods under the Complainant’s well-known trademark.
The Respondent contends that there was a partnership between the Respondent and Tufelka LLC, which was recently terminated by Tufelka LLC. The Respondent contends that it advertised the DR. KOFFER brand in the Russia Federation and sold Dr. Koffer goods in the Russia Federation pursuant to the terms of a supply agreement. The Respondent claims to have spend a considerable amount of money on advertising and marketing of the brand and made it recognizable in the Russian Federation. The Respondent contends that the agreement was terminated by Mr. Sapozhnikov, the second owner of Tufelka LLC. The Respondent claims that the dispute is a result of a mistake.
The Panel finds 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 evidence on file shows that there are three trademark owners that own trademark rights to the DR. KOFFER mark in different countries. The court proceeding in the Russian Federation appears to involve the Respondent and Tufelka LLC but not the Complainant directly. It appears that the present dispute is a part of a bigger contractual dispute between the Parties, which this Panel is not equipped to decide.
For the foregoing reasons, the Complaint is denied.
Date: September 30, 2019