WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Marlink SA v. Obabko Nikolay Vladimirovich
Case No. D2019-2371
1. The Parties
The Complainant is Marlink SA, Belgium, represented by Inlex IP Expertise, France.
The Respondent is Obabko Nikolay Vladimirovich, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <wmarlink.top> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2019. On September 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 2019, 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 October 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2019.
The Center appointed Knud Wallberg as the sole panelist in this matter on November 15, 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 is a global satellite communication provider primarily focused on offering satellite connectivity and cybersecurity solutions in the maritime industry.
The Complainant is the owner of a large number of trademark registrations for the MARLINK word and device marks across multiple jurisdictions, including, inter alia European Union Trade Mark MARLINK, registration No. 015333487, registered on October 4, 2016 in class 38, claiming seniority from the German trade mark No. 39628128 filed on June 26, 1996, Benelux trade mark No. 0607403 filed on June 24, 1996, Danish trade mark No. VR 1996 04789 filed on June 27, 1996 and Greek trade mark No. F129809 filed on June 24, 1996; and International trademark MARLINK, registration No. 1309586, registered on July 13, 2016, in class 38.
The Complainant is the holder of the domain name <marlink.com>, which was registered on May 10, 1996, and which resolves to the Complainant’s official website.
The disputed domain name was registered by the Respondent on July 26, 2019, and does not currently resolve to an active website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered trademark MARLINK, since the disputed domain name only differs from the Complainant’s MARLINK mark by the initial letter “w”.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized or licensed the Respondent to use its MARLINK mark in any way, nor is the Respondent commonly known by the disputed domain name.
The Complainant finally contends that due to the reputation and distinctiveness of the Complainant’s trademark, and the Respondent’s activation of the MX records attached to the disputed domain name, the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <wmarlink.top> is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark MARLINK. The disputed domain name incorporates this mark in its entirety with the addition of the letter “w”. The generic Top-Level Domain (“gTLD”) “.top” is a standard registration requirement and as such is disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not produced, and there is no evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings.
Consequently, the Panel finds that the condition in paragraph 4(a)(ii) of the Policy is also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or has 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case, including the provided information of the use and reputation of the Complainant’s trademark MARLINK and the distinctive nature of this mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The disputed domain name does not currently resolve to an active website. In this case the Complainant has however evidenced that there are several active MX records connected to the disputed domain name, which enables the Respondent to send emails using an email address that contains the disputed domain name.
Albeit that there are no concrete examples of such use, it seems inconceivable that the Respondent will be able to make any good faith use of the disputed domain name as part of an email address. The Panel notes in this connection that passive holding of a domain name does not prevent a finding of bad faith use under paragraph 4(a)(iii) of the Policy. See section 3.3 of WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Noting that the disputed domain name incorporates the Complainant’s distinctive and reputed trademark MARLINK and the gTLD “.top”, that no Response has been filed and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence of the case, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <wmarlink.top> be transferred to the Complainant.
Date: November 28, 2019