WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Blocket AB v. Yakov Esipov

Case No. D2021-0506

1. The Parties

The Complainant is Blocket AB, Sweden, represented by SILKA AB, Sweden.

The Respondent is Yakov Esipov, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <blocket.site> (the “Domain Name”) is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2021. On February 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 19, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 25, 2021, 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 February 26, 2021.

On February 25, 2021, the Center transmitted an email in English and Russian regarding the language of the proceeding to the parties. On February 26, 2021, the Center received the Complainant’s response in which it confirmed its request for English to be the language of the proceedings. The Respondent did not comment on the language of the proceeding.

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 March 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 30, 2021.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on April 15, 2021. 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

Blocket AB, the Complainant in the present proceedings, is a leading online buy-sell marketplace in Sweden. Eight out of 10 Swedes has bought or sold something at the Complainant’s marketplace in Sweden. Moreover, different versions of the Complainant’s marketplace are now available in several other countries. The Complainant has also a significant presence on various social media platforms, such as LinkedIn, Facebook, YouTube, Instagram, and Twitter.

The Complainant owns several BLOCKET trademark registrations in Sweden, including:

- BLOCKET.SE No. 363715 registered on October 31, 2003;

- BLOCKET.SE No. 370066 registered on January 14, 2005;

- logo No. 538528 registered on March 17, 2017;

- BLOCKET No. 375226 registered on September 30, 2005.

The Complainant’s official domain names are <blocket.com> and <blocket.se>.

The Domain Name was registered on December 20, 2020.

The Complainant attached to the Complaint a screenshot showing that the Domain Name previously resolved to a website that purported to offer services identical to those offered by the Complainant. As of the date of the present decision, the Domain Name resolves to an error webpage.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the Domain Name be transferred to the Complainant.

First, the Complainant submits that the Domain Name is identical or confusingly similar to the BLOCKET mark in which the Complainant has rights. In this regard, the Complainant notes that the Domain Name directly incorporates the BLOCKET mark.

Second, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. In this regard, the Complainant alleges that the Domain Name was registered in an attempt to exploit the goodwill of the Complainant’s BLOCKET trademark by giving misleading impression that the Domain Name resolves to the Complainant’s official website. Moreover, the Complainant notes that it has not authorized the Respondent to make use of the BLOCKET trademark or to register the Domain Name incorporating this trademark.

Third, the Complainant contends that the Domain Name was registered and is being used in bad faith. In this regard, the Complainant argues that the Respondent knew of the BLOCKET trademark and the services the trademark identifies, as it used the Domain Name in connection with a website that purported to be the Complainant’s website. Moreover, the Complainant notes that it was recently exposed to a phishing scam, which involved the Domain Name. Furthermore, the Complainant states that the Respondent has a record of registering domain names, which incorporate well-known trademarks owned by third parties.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Issue: Language of Proceedings

The Registrar confirmed that the language of the Registration Agreement for the Disputed Domain Name is Russian.

The Complainant has filed the Complaint in English and requests that English be the language of this proceeding due to the following reasons:

(i) the Respondent operated the website in Swedish prior to having it taken it offline, not in Russian;

(ii) being a Swedish entity, the Complainant will incur a great deal of additional expense and delay due to the need for translation of the Complaint and the supporting Annexes;

(iii) the Domain Name incorporates an English word “site” as its Top-Level Domain (“TLD”).

The Respondent did not comment on the language of the proceeding.

In accordance with paragraph 11(a) of the Rules unless otherwise agreed by the Parties, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Paragraph 10(c) of the Rules sets out that the Panel shall ensure that the administrative proceeding takes place with due expedition.

Having considered all circumstances of this case, the Panel concludes under paragraph 11(a) of the Rules that English shall be the language of the proceeding.

6.2 Substantive Issues

Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows:

(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.

The requested remedy may only be granted if the above criteria are met.

At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the Domain Name is identical or confusingly similar to the Complainant’s trademark rights.

The Complainant holds valid BLOCKET trademark registrations, which predate the registration of the Domain Name.

The Domain Name incorporates the Complainant’s BLOCKET trademark in its entirety. As numerous UDRP panels have held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696).

The TLD in the Domain Name “.site” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1.

Given the above, the Panel finds that the Domain Name is identical to the Complainant’s trademark. Thus, the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name.

The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that it has made 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 prior to the dispute; or

(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or

(c) that it intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case.

On the contrary, as mentioned above, it results from the evidence in the record that there are the Complainant’s BLOCKET trademark registrations, which predate the Respondent’s registration of the Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to register the Domain Name incorporating this trademark. The Panel accepts that the Domain Name suggests an affiliation with the Complainant and its BLOCKET trademark, as the Domain Name wholly reproduces the BLOCKET trademark with no additional elements. Fundamentally, the Respondent’s use of the Domain Name will not be considered “fair” if it falsely suggests affiliation with the Complainant as a trademark owner. See WIPO Overview 3.0, section 2.5.

Moreover, it results from the evidence in the record that the Respondent does not make use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services, as well as it does not make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain.

On the contrary, the Respondent’s use of the Domain Name is evidence of bad faith. The Panel notes that the Domain Name previously resolved to a website that purported to offer services to those offered by the Complainant. This website contained the information that the “delivery is made through blocket.se” without further information as to the owner of the Domain Name. This perpetuates the false impression that the Domain Name resolves to the Complainant’s official website or at least that there is an official commercial relationship between the Respondent and the Complainant.

Given the above, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Name. Thus, there is no evidence in the case that refutes the Complainant’s submissions. The Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The third requirement the Complainant must prove is that the Domain Name has been registered and is being used in bad faith.

Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See WIPO Overview 3.0, section 3.1.

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

As previously mentioned, the Complainant’s rights in the BLOCKET trademarks predate the registration of the Domain Name. This Panel finds that the Respondent was or should have been aware of the Complainant’s trademark at the time of registration of the Domain Name. It has been proven to the Panel’s satisfaction that the Complainant’s trademark is well-known. Thus, the Respondent could not likely reasonably ignore the reputation of the services the trademark identifies.

The Panel finds that by reproducing the Complainant’s registered trademark in the Domain Name with no additional elements, the Respondent has intentionally attempted to attract, for commercial gain, Internet users, by creating a likelihood of confusion with the Complainant’s mark. The Panel also acknowledges that the Complainant was recently exposed to a phishing scam where, among other, the Domain Name was involved. Before the Complainant was able to disable the content on the website, which the Domain Name resolved to, the Respondent used the Domain Name to impersonate the Complainant by mimicking a website that had the look and feel of the Complainant’s official website. The fact that the Domain Name currently resolves to an error website does not prevent a finding of bad faith.

Thus, for the reasons discussed above, the Panel finds that the Domain Name was registered and is being used in bad faith, according to paragraphs 4(b)(iv) and 4(a)(iii) under the Policy.

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 name <blocket.site> be transferred to the Complainant.

Piotr Nowaczyk
Sole Panelist
Date: April 21, 2021