WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boris Lozhkin v. Mozu

Case No. D2021-0620

1. The Parties

The Complainant is Boris Lozhkin, Monaco, represented by Mariya Shverk, Israel.

The Respondent is Mozu, Ukraine.

2. The Domain Names and Registrar

The disputed domain names <boris-lozhkin.xyz> and <lozhkin-boris.com> (the “Disputed Domain Names”) are registered with Eranet International Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2021. On March 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 2, 2021, 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 March 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2021.

The Center appointed Nick J. Gardner as the sole panelist in this matter on April 14, 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

The relevant facts can be summarized as follows.

The Complainant is a prominent Ukrainian businessman. Between 2014 and 2016 the Complainant was acting as the Head of Presidential Administration of the then-elected president of Ukraine. In 2019 the Complainant established a new digital media business using his name as a trademark and filed various trademarks for his name (see below).

The Complainant owns several registered trademarks for the words “Boris Lozhkin” including for example United States of America (“U.S.”) trademark registration No. 6121391 registered on August 11, 2020. The earliest application for any of these trademarks was filed in April 2019 (registered in May 2019). These trademarks are referred to below as “The BORIS LOZHKIN trademark”.

The Respondent registered the Disputed Domain Name <lozhkin-boris.com> on August 13, 2018 and the Disputed Domain Name <boris-lozhkin.xyz> on August 15, 2018.

The Respondent has linked the Disputed Domain Names to websites (the “Respondent’s Websites”), which contain material critical of the Complainant. The material concerned in essence accuses the Complainant of corruption. The Respondent’s Websites are anonymous in that no contact details or other information is provided on the websites to show who is responsible for publishing them.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows.

The Complainant says that each of the Disputed Domain Names is either identical or confusingly similar to the BORIS LOZHKIN trademark.

The Complainant says the Respondent has no rights or legitimate interests in the term “Boris Lozhkin”.

It also says that the Disputed Domain Names were registered and are being used in bad faith. In this respect the Complainant says that the unknown person who registered the Disputed Doman Names did so primarily for the purpose of spreading false and defamatory information about the Complainant.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Matters

The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).

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 Names are 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 Names; and

(iii) the Disputed Domain Name have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the BORIS LOZHKIN trademark.

The Disputed Domain Names are each confusingly similar to this trademark. They manifestly comprise the same two words as the trademark and it is well established that the generic Top-Level Domain (“gTLD”), in this case “.com” and “.xyz”, is not generally taken into account for the purpose of determining whether a domain name is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

It does not matter for the purposes of this element that the Disputed Domain Names were registered before the BORIS LOZHKIN trademarks existed – the Panel agrees with the consensus approach as explained in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.1.3:

“1.1.3 While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed.

The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element.

Where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith.” See below as to bad faith issues.

Accordingly the Panel finds that each of the Disputed Domain Names is confusingly similar to the Complainant’s trademark. Therefore, the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Names:

(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 Disputed Domain Names in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the Disputed Domain Names, 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 Disputed Domain Names, 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 Names or to use the BORIS LOZHKIN trademark. Whilst the Complainant’s registered trademark rights post-date the date of registration of the Disputed Domain Names, it is clear the Disputed Domain Names were registered because in substance they comprised the Complainant’s name and manifestly the Respondent did not independently derive the Disputed Domain Names. The Panel considers in these circumstances that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (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).

Conceivably, had a response been filed, the Respondent might have suggested that the Respondent’s Websites were a bona fide criticism site and/or was an exercise of some form of free speech right. That seems to the Panel the only conceivable argument that could be advanced in support of a legitimate interest. The Panel has considered this and had regard to the position set out in WIPO Overview 3.0 section 2.6, as follows:

“2.6 Does a criticism site support respondent rights or legitimate interests?

As noted above, UDRP jurisprudence recognizes that the use of a domain name for fair use such as non-commercial free speech would in principle support a respondent’s claim to a legitimate interest under the Policy.

2.6.1 To support fair use under UDRP paragraph 4(c)(iii), the respondent’s criticism must be genuine and noncommercial; in a number of UDRP decisions where a respondent argues that its domain name is being used for free speech purposes the panel has found this to be primarily a pretext for cybersquatting, commercial activity, or tarnishment.

2.6.2 Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e. <trademark.tld> (including typos)); even where such a domain name is used in relation to genuine noncommercial free speech, panels tend to find that this creates an impermissible risk of user confusion through impersonation. In certain cases involving parties exclusively from the United States, some panels applying US First Amendment principles have found that even a domain name identical to a trademark used for a bona fide noncommercial criticism site may support a legitimate interest.

2.6.3 Where the domain name is not identical to the complainant’s trademark, but it comprises the mark plus a derogatory term (e.g., <trademarksucks.tld>), panels tend to find that the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is prima facie noncommercial, genuinely fair, and not misleading or false. Some panels have found in such cases that a limited degree of incidental commercial activity may be permissible in certain circumstances (e.g., as ‘fundraising’ to offset registration or hosting costs associated with the domain name and website).”

In the present case the Panel notes that the Disputed Domain Names essentially correspond to the Complainant’s name. Accordingly the Panel considers that section 2.6.3 does not apply and there exists an “impermissible risk of user confusion” similar to that described in section 2.6.2 of WIPO Overview 3.0 (above). Accordingly, the Panel does not consider that any legitimate interest arises in this respect.

The Panel notes that had the Disputed Domain Names combined the BORIS LOZHKIN trademark with a manifestly derogatory term different considerations would have arisen (see section 2.6.3 of WIPO Overview 3.0, above) and the result would not necessarily have been the same.

The Panel therefore finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Names. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

In the present case, it was manifestly a deliberate decision by the Respondent to include the Complainant’s name in the Disputed Domain Names. This was clearly part of a deliberate plan to publish material that was critical of the Complainant. The Panel has no means of assessing whether or not any of the allegations contained in the content of the Respondent’s Websites are true. The Panel does not consider that this matters. Whether or not the Respondent is entitled to criticize Mr. Lozhkin by publicizing material such as that which is found on the Respondent’s Websites is not a matter for the Policy. What however the Policy is directed at is using, as part of this activity, a domain name which is confusingly similar to the Complainant’s trademark and which would be likely to be taken to be that of the Complainant. That is misleading and likely to attract visitors who are searching for the Complainant or his business. That, in the opinion of the Panel, amounts to bad faith registration and use.

Again the Panel notes that the Complainant’s registered trademark rights post-date the date of registration of the Disputed Domain Names but it is clear those names were registered because in substance they comprised the Complainant’s name and were intended to be used to target the Complainant and assist in publishing material critical of the Complainant. In these circumstances the Panel does not consider that the timing avoids a finding of bad faith.

The Panel again notes that had the Disputed Domain Names combined the BORIS LOZHKIN trademark with a manifestly derogatory term different considerations would have arisen and the result would not necessarily have been the same.

Finally, the Panel notes the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of legitimate use that it might have. The Panel infers that none exists.

As a result, the Panel finds that the Disputed Domain Names have each been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

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 Names <boris-lozhkin.xyz> and <lozhkin-boris.com> be transferred to the Complainant.

Nick J. Gardner
Sole Panelist
Date: April 28, 2021