WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caviar Petrossian S.A. v. Vitalya, ARBITRAJ TRAFFIK

Case No. D2016-1202

1. The Parties

The Complainant is Caviar Petrossian S.A. of Paris, France, represented by Nameshield SAS, France.

The Respondent is Vitalya, ARBITRAJ TRAFFIK of Volgograd, Vologodskaya Oblast, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <alverta.top> is registered with AlpNames Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2016. On June 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2016, 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 June 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2016. No Response was filed with the Center. On July 21, 2016 the Center transmitted the Notification of Respondent default. On the same day, the Respondent sent a short email to the Center, not copied to the Complainant, to which the Center reminded the Respondent of paragraph 2(h) of the Rules. No further communications were received from the Respondent.

The Center appointed Assen Alexiev as the sole panelist in this matter on August 2, 2016. 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, Caviar Petrossian S.A., was established in France in 1920 by the Petrossian brothers. It is a French luxury brand for caviar. In January 2012, the Complainant received the “Entreprise du Patrimoine Vivant” label for its expertise in developing caviar. The Complainant markets several types of caviar, including ALVERTA caviar, which originates from the white sturgeon living in the waters of northern California.

The Complainant is the owner of several ALVERTA trademark registrations (the “ALVERTA trademark”), including the following:

- The European Union trademark ALVERTA with registration number 010966737, registered on October 22, 2012, for goods and services in International Classes 29, 30 and 31; and

- The International trademark ALVERTA with registration number 1038284, registered on April 15, 2010, for goods and services in International Classes 29 and 31.

The ALVERTA trademark is also registered in the Trade Mark Clearinghouse as of October 22, 2012.

The Complainant registered the domain name <alverta.fr> on November 14, 2005, and the domain name <alverta.us> on October 8, 2008.

The disputed domain name was registered on May 26, 2016.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name is identical to the ALVERTA trademark. The disputed domain name includes the ALVERTA trademark in its entirety and without any adjunction of letter or word. The Complainant contends that the addition of the “.top” generic Top-Level Domain (“gTLD”) is not sufficient to escape the finding that the disputed domain name is identical to the ALVERTA trademark and does not change the overall impression of the disputed domain name as being connected to the same trademark.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant does not have any business with the Respondent and has not granted to it any license or authorization to use the ALVERTA trademark or to apply for registration of the disputed domain name. The Respondent is not commonly known by the disputed domain name and it has no direct link with the Respondent’s activity. The Respondent does not use the disputed domain name for a legitimate noncommercial purpose. The Complainant points out that the disputed domain name points to a website displaying sentences in Russian language: “CPA Tracker - analytics for sites - We trace the source of orders and sales on websites”,and clicking on the circular arrow button on the website redirects to a Russian language website located at “www.cpatracker.ru”. According to the Complainant, this shows that the Respondent has used the disputed domain name in order to create a likelihood of confusion with the Complainant’s ALVERTA trademark.

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent has registered the disputed domain name with full knowledge of the Complainant’s ALVERTA trademark, as the same trademark is registered in the Trademark Clearinghouse. The disputed domain name is associated to a showcase website that redirects visitors to the commercial website of the Respondent. According to the Complainant, this shows that the disputed domain name was registered to take unfair advantage of the reputation of the Complainant’s ALVERTA caviar products in the Russian Federation by diverting Internet traffic from the Complainant’s website. The Complainant also submits that the Respondent has registered the disputed domain name in order to deprive the Complainant of the opportunity to register its trademark as a domain name.

B. Respondent

The Respondent did not submit a Response in this proceeding. The only statement made by the Respondent to the Center was “I am ready to sell you a domain name”.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical 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; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name[…]”. In the event of a default, under the Rules, paragraph (14)(b): “[…] the Panel shall draw such inferences therefrom as it considers appropriate”.

As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent”. As stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

In this administrative proceeding, the Respondent’s default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to make its decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the ALVERTA trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the gTLD section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.top” part of the disputed domain name. Therefore, the relevant part of the disputed domain name that has to be analyzed is its “alverta” section, which is identical to the ALVERTA trademark. Taking the above into account, the Panel finds that the disputed domain name is identical to the ALVERTA trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not commonly known by the name “Alverta”, has not been authorized by the Complainant to use the ALVERTA trademark, and has not carried out a legitimate noncommercial activity with the disputed domain name. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

There is no evidence in the case file that the Respondent is commonly known by the disputed domain name, and the Respondent has not denied the contentions of the Complainant or made any allegations relevant to the issue of rights and legitimate interests.

The disputed domain name incorporates the distinctive ALVERTA trademark in its entirety. This makes it likely that Internet users may regard the disputed domain name as related to the Complainant. The ALVERTA trademark is registered in the Trademark Clearinghouse, and therefore the Respondent was made aware of it when it registered the disputed domain name, but nevertheless proceeded with its registration. The website associated to the disputed domain name diverts Internet users to another website of the Respondent where it offers Internet-related services that have no relation to the ALVERTA trademark.

The circumstances of this case lead the Panel to reach a conclusion that the Respondent is aware of the ALVERTA trademark and that it is more likely than not that the Respondent appreciates the opportunity that the registration and use of the disputed domain name gives to the Respondent to exploit the popularity of the ALVERTA trademark to attract the attention of Internet users to its website. In the Panel’s view, such conduct cannot be regarded as giving rise to rights and legitimate interests of the Respondent. Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(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 website or location or of a product or service on your website or location.”

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

The facts of this case show that the disputed domain name was registered with knowledge of the ALVERTA trademark. The disputed domain name is identical to the ALVERTA trademark, while the associated website redirects visitors to another website of the Respondent. In the absence of any plausible explanation by the Respondent of its conduct, the Panel is prepared to accept the Complainant’s contentions that, by using the disputed domain name, the Respondent has intentionally attempted to exploit the goodwill of the Complainant’s ALVERTA trademark to attract, for commercial gain, Internet users to the website at the disputed domain name. This conduct of the Respondent supports a finding that the disputed domain name has been registered and is being used in bad faith.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

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 <alverta.top> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: August 17, 2016