WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FlixMobility GmbH v. Aleksandar DimitrijeviÄ‡, Dijas Doo Jugbogdanovac Merosina
Case No. D2020-0485
1. The Parties
The Complainant is FlixMobility GmbH, Germany, represented by Andrej Prekajski Law Office, Serbia.
The Respondent is Aleksandar DimitrijeviÄ‡, Dijas Doo Jugbogdanovac Merosina, Serbia.
2. The Domain Name and Registrar
The disputed domain name <flixabus.com> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2020. On February 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 28, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 3, 2020, 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 amended Complaint on March 7, 2020.
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 Respondent of the Complaint, and the proceedings commenced on March 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2020. The Response was filed with the Center on March 24, 2020.
The Center appointed Nick J. Gardner, Stefan Abel and Taras Kyslyy as panelists in this matter on May 6, 2020. 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. On May 11, 2020, the Complainant sent an additional filing to the Center (the “Complainant’s Additional Filing”).
4. Factual Background
The Complainant is a German company which was founded in 2013 and which provides passenger transport services, primarily by bus. It operates across Europe including in Serbia where the Respondent is located. It trades as “flixbus”. Its principal website is linked to the domain name <flixbus.com> and it owns a number of other country specific “flixbus” domain names including <flixbus.rs> which it registered in respect of Serbia on April 29, 2015.
The Complainant owns a European Union Trade Mark No. 011310984 registered on February 20, 2013, for FLIXBUS (the “FLIXBUS trademark”).
The named respondent is a company called Dijas Doo Jugbogdanovac Merosina which is a company incorporated in Serbia. Filed evidence shows this company was incorporated on July 21, 2004.
This company is referred to as “Dijas Doo” in this decision.
The Disputed Domain Name was registered on January 8, 2019, by Dijas Doo.
Serbian business registry records show that a company called FLIXaBUS DOO Jugbogdanovac was formed on January 11, 2019. This company is referred to as “FlixaBUS DOO” in this decision.
The Complainant has brought proceedings in Serbia for trademark infringement against FlixaBUS DOO. The date those proceedings were commenced is not known to the Panel.
The filed evidence shows the Disputed Domain Name has been linked to a website (the “FlixaBUS Website”) providing details of bus services operated in Serbia by FlixaBUS DOO.
The Response (see below) is lodged by FlixaBUS DOO.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows.
The Disputed Domain Name is confusingly similar to the FLIXBUS trademark. The addition of the letter “a” does not serve to distinguish the Disputed Domain Name.
The Respondent has no rights or legitimate interests in the term “flixbus”. In consequence the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. It says the term “flixbus” has no meaning except in relation to itself and the Respondent obviously chose the Disputed Domain Name to seek to divert customers to the FlixaBUS Website and its business. It says the beneficial owner of the Disputed Domain Name is called FlixaBUS DOO but it was only formed on January 11, 2019, three days after the Disputed Domain Name was registered.
The Complainant wrote to FlixaBUS DOO demanding transfer of the Disputed Domain Name but that request was refused.
The Response has been filed by FlixaBUS DOO. It does not explain how it is related to Dijas DOO. It says that the term “flixabus” is “significantly different” to “flixbus” and that there is “no possibility of confusion with the consumer”. It relies on the way in which words are portrayed in Serbian and how it displays its name on its buses. It also says both “flixbus” and “flixabus” contain the common word “bus”.
It says that because the Complainant has commenced proceedings in Belgrade against it for trademark infringement, this Complaint should be suspended until those proceedings have been determined.
It is convenient to set out here extracts from the English translation of the response that FlixaBUS DOO sent to the Complainant’s letter of complaint, as that sets out more fully the relevant arguments, as follows:
“We are informing you hereby that your client’s mark “FLIXBUS” and our mark “FLIXABUS”, which we are using, are not confusingly similar, and that your other arguments are also groundless.
These two marks are significantly different, and therefore we do not see any connection between our two companies, and we find your letter a little bit surprising for us.
Company FLIXABUS was founded on 11.01.2019. and its only business activity is providing transportation to the workers to their workplace and providing city transport and only in the territory of the Republic of Serbia. As far as we become familiar with your client’s business activities after we received your C&D letter, your client is providing international transportation, i.e. transportation of individuals from one country to another, and he is not providing transportation services to the workers nor he is providing city transport services. Your client is also providing his services through his business partners, transportation companies from Belgrade and Valjevo (for the territory of the Republic of Serbia). Based on this, we may say that your client’s trademark is not beeing used in Serbia, given that your business structure obviously represents so called umbrella organization.
Therefore, our business activity is not identical with your client’s business activity, because there is no possible chance that yours and our potential customers could be misled on the market regarding to the origin and the characteristics of the services.
Therefore we are rejecting your claims that we are using the mark confusingly similar to your client’s mark without any unauthorization and we consider them to be groundles. This also reffers to the claims that we caused any damage (loss profit or reputation damage) by our activities.
We particularly stress that the visual logo (figurative mark) of our company is completely different than the logo (figurative mark) of your client. This is also the reason why there is no possible chance for any potential customer to be misled regarding to the origin of services.
Regarding your request for transfer of the domain name flixabus.com to your client without any compensation, we consider it to be groundless as well. Free domain names are for selling and that is the usual practice, so the subject domain name was the subject of the sale. Our company payed all related fees for registration and activation of the domain and it is the property of our company. The business policy of our company is not to transfer any kind of our property without any compensation. Such transfer could be consider as a criminal act or commercial defence”.
In addition, FlixaBUS DOO submitted similar arguments to the ones reproduced above in its Response to the Complaint, and added that it incorporated a company named “FLIXaBUS DOO Jugbogdanovac” which is different to “FlixBus”; that the pronunciation of the terms “Flixbus” and “Flixabus” in Serbian is significantly different; that the colors used by the corresponding signs are different; that both signs contains the commonly known abbreviation for the word “bus”; and considering all the circumstances, that potential users would not be misled in the market, primarily as the Parties are not competing for the same service users. FlixaBUS DOO ends its Response arguing that since there is a court proceeding in Serbia, the present proceeding should stop until the Belgrade Commercial Court renders a final court ruling.
Dijas Doo has not submitted any response in this proceeding.
6. Discussion and Findings
6.1. Preliminary Matters
A. Respondent Identity
It is not clear to the Panel exactly what the relationship is between the Respondent (Dijas Doo) and the company FlixaBUS DOO which appears to be the operator of the FlixaBUS Website and the provider of the transport services it advertises. The Panel notes that the registrant on record of the Disputed Domain Name is Dijas Doo, FlixaBUS DOO was only formed after the Disputed Domain Name was registered and there is no evidence before the Panel of any transfer of the Disputed Domain Name from Dijas Doo to FlixaBUS DOO. In the circumstances the Panel will assume the two companies are connected and that the actions of FlixaBUS DOO are to be attributed to the Respondent. The term “Respondent” in this decision refers to both companies unless otherwise stated.
B. Additional Filing
The Panel does not find it necessary to admit the Complainant’s Additional Filing. There is no provision in the Rules for such a filing. The Panel has discretion to admit additional material but in the present case does not find it necessary as that material is mainly a rebuttal of the Response. The Panel notes that the Complainant’s Additional Filing does not alter its reasoning or its decision.
C. Pending litigation
There is a pending trademark infringement action in Serbia between the Complainant and FlixaBUS DOO. The Panel does not see any reason why that litigation prevents it from proceeding to determine this Complaint and it declines the Respondent’s request in this regard. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.14 as follows:
“4.14 What is the relationship between the UDRP and court proceedings?
By design, the UDRP system preserves parties’ court options before, during, and after a UDRP proceeding; as indicated by UDRP paragraph 4(k), the UDRP does not bar either party from seeking judicial recourse.
Paragraph 18(a) of the UDRP Rules gives the panel discretion to suspend, terminate, or continue a UDRP proceeding where the disputed domain name is also the subject of other pending legal proceedings.
Appointed panels are reluctant to suspend a UDRP case due to concurrent court proceedings, most notably because of the potential for indeterminate delay; the WIPO Center would similarly be reluctant to facilitate such suspension”.
6.2. Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has rights in the FLIXBUS trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark. The word “flixbus” is on the evidence a coined term with no meaning except in relation to the Complainant. The Disputed Domain Name involves the insertion of an additional “a” and is visually similar to the Complainant’s trademark. It seems extremely unlikely that the Respondent chose this name independently for use in relation to services similar to those the Complainant provides, and the Respondent has provided no explanation at all as to how or why it chose this name. The Panel thinks it is more likely than not that it was chosen as an obvious misspelling or variation of the Complainant’s trademark.
The Panel notes the Respondent’s argument that the terms “flixbus” and “flixabus” are pronounced significantly different in the Serbian language, but does not think this matters even if correct. In written form and as used on the Internet the terms are clearly confusingly similar. It also does not matter that the Respondent portrays its name in a visually different style on its buses to how the Complainant uses the term on its buses. Ultimately the two terms in written form are confusingly similar, the Panel agrees in this regard with the approach set out in WIPO Overview 3.0, section 1.9, namely:
“1.9 Is a domain name consisting of a misspelling of the complainant’s trademark (i.e.,typosquatting) confusingly similar to the complainant’s mark?
A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”.
The Panel does not consider it matters that both “flixbus” and “flixabus” contain the common word “bus”, clearly the FLIXBUS trademark is recognizable in the Disputed Domain Name which satisfies the test for the first element of the Policy.
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar to the Complainant’s trademark. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Panel finds the FLIXBUS trademark is, on the evidence before the Panel, a term in which the Complainant has a significant reputation.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the FLIXBUS trademark. The Complainant has prior rights in the FLIXBUS trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel notes that FlixaBUS DOO has adopted as its name a term in substance the same as the Disputed Domain Name. However, it was only formed after the Disputed Domain Name was registered and no evidence has been filed to explain how or why it chose its name. The Panel does not consider that the fact that a connected entity has been formed after the Disputed Domain Name has been registered, and has adopted the same name, is in itself sufficient to establish rights or legitimate interests in the Disputed Domain Name, at least without a much more detailed explanation of the connection between the entities and an explanation of how and why the name in question was chosen. The Panel does not consider that a respondent who deliberately adopts a name which corresponds to, or is similar to, that of a complainant, with a view to taking advantage of that complainant’s fame and reputation, can then take advantage of an “own name” provision to justify its actions. The right to use one’s own name is not unlimited and cannot be used to circumvent prior rights in a similar name – see for example Peter Frampton vs. Frampton Enterprises, Inc., WIPO Case No. D2002-0141: “While the Panel recognizes that any individual has a right to use his(her) name in connection with a business, that right is not unfettered; instead, it is circumscribed by the prior trademark rights of others who use that name in connection with specific goods and services, as is certainly the case here”.
The Panel agrees with that approach in the circumstances of the present case. More fundamentally it should be noted that what paragraph 4(c)(ii) of the Policy requires that the Respondent demonstrate that it is commonly known as the Disputed Domain Name. It is not sufficient for the Respondent to say its name is “FlixaBUS DOO” – it has to show that it is commonly known as “flixabus”. No evidence at all to this effect has been produced by the Respondent. The Panel therefore does not consider that the fact that a company called FlixaBUS DOO is using the Disputed Domain Name entitles the Respondent to claim rights or legitimate interests in the Disputed Domain Name.
Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances the evidence as to the Complainant’s business in providing bus services across Europe, the fact that “flixbus” is a coined term with no other meaning apart from in relation to the Complainant, and the fact that the Disputed Domain Name was linked to the Flixabus Website which also offers passenger transport services leads the Panel to conclude the Disputed Domain Name was registered and used in bad faith.
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In the present circumstances the Panel agrees with the Complainant that factor (iv) applies as the Respondent was seeking to attract customers to the FlixaBUS DOO Website by adopting a name which was confusingly similar to the Complainant’s trademark. The Respondent has provided no explanation of how or why it chose the name “flixabus” and the Panel concludes that it was because of its similarity to the Complainant’s own trademark.
Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <flixabus.com> be transferred to the Complainant.
Nick J. Gardner
Date: May 13, 2020