WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fond Razvitiya I Podderzhki Mezhdunarodnogo Diskussionnogo Kluba “VALDAY” v. Lucy Efrem
Case No. D2020-0966
1. The Parties
The Complainant is Fond Razvitiya I Podderzhki Mezhdunarodnogo Diskussionnogo Kluba "VALDAY", Russian Federation, represented by IPAKS Group, LLC, Russian Federation.
The Respondent is Lucy Efrem, United States of America.
2. The Domain Name and Registrar
The disputed domain name <valdaiclub.info> (the “Disputed Domain Name”) 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 April 20, 2020. On April 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 21, 2020, 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 April 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2020.
The Center appointed Mariya Koval as the sole panelist in this matter on June 10, 2020. 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 Valdai Discussion Club (the “Club”), being established in 2004, is named after Lake Valdai, which is located close to Veliky Novgorod city, where the Club’s first meeting took place. More than 1,000 representatives of the international scholarly community from 71 countries, including professors from major world universities and think tanks, have taken part in the Club’s activities.
The Complainant is a non-profit foundation, which was established in 2011 with a view to expanding its activities to new areas, including research and outreach work, regional and thematic programs. In 2014, the Complainant assumed all responsibility for management of the Club’s projects. Moreover, according to evidence presented by the Complainant (Annex 6 to the Complaint), the online publication Valdai Discussion Club (Valdai International Discussion Club) was registered on May 24, 2013 as a mass-media.
The Complainant is the owner of numerous VALDAI DISCUSSION CLUB and ВАЛДАЙСКИЙ КЛУБ (VALDAI CLUB in Russian) trademark registrations (the “VALDAI CLUB Trademark”) around the world, among which are:
- Russian Federation Trademark No. 384288, registered on July 22, 2009, in respect of goods and services in classes 16, 35, 38, and 41;
- Russian Federation Trademark No. 384289, registered on July 22, 2009, in respect of goods and services in classes 16, 35, 38, and 41;
- Russian Federation Trademark No. 607240, registered on March 1, 2017, in respect of goods and services in classes 16, 35, 38, and 41;
- Russian Federation Trademark No. 607242, registered on March 1, 2017, in respect of goods and services in classes 16, 35, 38, and 41;
- International Trademark No. 1491667, registered on July 15, 2019, in respect of goods and services in classes 16, 35, 38, and 41.
The Complainant carries out its activities including the use of its VALDAI CLUB Trademark and operates a website from its domain name <valdaiclub.com>, registered on March 5, 2009.
The Disputed Domain Name was registered on March 5, 2020. At the date of this Decision, the Disputed Domain Name does not resolve to any active website. At the time of filing of the Complaint, the Disputed Domain Name had been used as an email address.
5. Parties’ Contentions
The Complainant contends that the VALDAI CLUB Trademark is well known and exclusively associated with the Complainant due to the long-standing use and promotion. The VALDAI CLUB Trademark obtained significant goodwill, which the Complainant cannot allow to be undermined or reduced. In addition, the Complainant is the owner of all intellectual property rights related to its products and services. The Complainant has invested significant financial and professional resources in the maintenance and protection of its rights to the VALDAI CLUB Trademark.
The Complainant further contends that the Disputed Domain Name is confusingly similar to its VALDAI CLUB Trademark, as the Disputed Domain Name includes the main part of the Complainant’s trademark, thereby causing a likelihood of confusion as to the source of the Disputed Domain Name.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name in view of the following:
- the Respondent is not known by the Disputed Domain Name as an individual or legal entity and does not have any registered trademark rights in the United States of America in respect of any version of the word “Valdai”;
- the Respondent’s lack of intent or preparations to use the Disputed Domain Name for providing bona fide offering goods or services;
- the Respondent’s use of the Disputed Domain Name does not constitute a legitimate noncommercial or fair use.
The Complainant further asserts that the Respondent registered and used the Disputed Domain Name in bad faith since by using the Disputed Domain Name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website. Namely, the Complainant, having created a new project, sent by email invitations for the participation of many young scientists from different regions of the world. However, soon the Complainant noticed that some invitations were sent from the email address “[…]@valdaiclub.info”, which has no relation to the Complainant (Annex 10 to the Complaint).
The Complainant also contends that registration of an identical domain name, which differs only in the generic Top-Level Domain (“gTLD”), “.info”, as well as sending out invitation letters on behalf of the Complainant, indicates that the Respondent knew about the Complainant and intentionally performed the indicated actions.B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy establishes the following three elements each of which must be proved by the complainant:
(i) the disputed 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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence demonstrating that it possesses rights in several VALDAI CLUB formative trademarks in different jurisdictions.
The Disputed Domain Name reproduces the dominant features of the Complainant’s English language trademarks (namely “Valday” and “club”) as well as the translation of the Complainant’s Russian language trademark in its entirety, with the gTLD suffix “.info”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, while each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
The gTLD “.info” is typically not taken into account for purposes of considering the first element under the Policy.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s VALDAI CLUB Trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the Complainant, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.
Noting the facts and arguments set out above, the Panel finds that the Complainant has made a prima facie case. The Respondent registered the Disputed Domain Name more than 10 years after the VALDAI CLUB Trademark had been registered. Moreover, the Panel finds that the Respondent, being a natural person, is not commonly known by the Disputed Domain Name and has not received a license, authorization or consent from the Complainant to register or to make use of the VALDAI CLUB Trademark.
Also, there is no evidence that the Respondent is using the Disputed Domain Name to offer bona fide goods and services or making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, having considered the evidence provided by the Complainant, the Panel finds that the Disputed Domain Name was used for the purpose of misleading Internet users, namely for creating the email address “[…]@valdaiclub.info”, from which the Respondent was sending fraudulent emails with invitations to the participants of the Complainant’s new project on behalf of the Complainant. Such use of the Disputed Domain Name cannot be considered as bona fide offering of goods or services or fair use. Moreover, there is no other evidence that the Respondent has used or made demonstrable preparations to use the Disputed Domain Name in connection with a legitimate noncommercial use.
Moreover, the nature of these emails is such that the Respondent must have been well aware of the Complainant’s business and rights at the time it registered the Disputed Domain Name. The Panel considers it is clear that the Respondent is not using the Disputed Domain Name to host a website, but is instead using it for the creation of email addresses designed to confuse the Complainant’s clients and/or third parties (only the owner of a domain name can create email addresses featuring the same domain).
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a list of circumstances that are not exhaustive that indicate bad faith conduct on the part of the respondent, namely:
(i) circumstances indicating that the respondent has registered or has acquired the disputed 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 disputed domain name; or
(ii) the respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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.
In the Panel’s view, the fact that the Respondent knew about the Complainant’s trademark at the time of the registration of the Disputed Domain Name is indisputable in view of the fact that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and the Respondent was using the Disputed Domain Name for creating an email address, e.g., “[…]@valdaiclub.info”, from which the Respondent was sending fraudulent emails on behalf of the Complainant. Accordingly, the Panel concludes that the Respondent registered and has been using the Disputed Domain Name in bad faith in order to create a likelihood of confusion with the Complainant’s VALDAI CLUB Trademark and to disrupt the Complainant’s business and brand.
Moreover, as the VALDAI CLUB Trademark has been in use for more than 15 years prior to the registration of the Disputed Domain Name, it is highly unlikely that the Respondent was unaware of the Complainant’s trademark when it registered the Disputed Domain Name.
The Respondent’s failure to respond to the Complainant’s contentions and to provide any explanation of good faith use of the Disputed Domain Name may also be considered an indication of bad faith; see e.g., News Group Newspapers Limited and News Network Limited v. Momm Amed la, WIPO Case No. D2000-1623.
Finally, the nature of the Disputed Domain Name, being identical to the Complainant’s domain name but for the gTLD, is a further indication of bad faith.
In view of the foregoing, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied by the Complainant and accordingly, the Disputed Domain Name has been registered and is being used 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, <valdaiclub.info>, be transferred to the Complainant.
Date: June 24, 2020